part 1 - internationalmanuals.ipaustralia.gov.au/patents/adaptive...1.1.7.1.1 pct guideline...

1. International

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 01 May 2019

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Part 1 - International

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Table of Contents 1. International ...................................................................................................................... 1

1.1 International Searching ................................................................................................ 1

1.1.1 Procedural Outline - PCT International Search ............................................................. 1

1.1.2 Introduction ........................................................................................................... 2

1.1.2.1 Background ............................................................................................................... 2

1.1.2.2 International Examination .......................................................................................... 2

1.1.2.3 General Procedures .................................................................................................. 3

1.1.2.4 Extent of Search ........................................................................................................ 3

See also: ........................................................................................................................ 6

1.1.2.5 Minimum Documentation ........................................................................................... 6

1.1.2.6 Examination Section Procedures............................................................................... 7

1.1.2.7 Searching Examiner .................................................................................................. 7

1.1.2.8 Other Considerations ................................................................................................ 8

1.1.2.9 Copending Applications ............................................................................................. 8

Copending Applications, Including Those Filed on the Same Date .................................... 8

1.1.3 Search Allocation and Preliminary Classification ................................................... 9

1.1.3.1 Allocation .................................................................................................................. 9

1.1.3.2 Preliminary Classification ........................................................................................ 10

1.1.4 Unity of Invention ................................................................................................ 10

1.1.4.1 Unity of Invention Background ................................................................................. 10

1.1.4.2 Determining Lack of Unity ....................................................................................... 11

1.1.4.3 Combinations of Different Categories of Claims ...................................................... 13

1.1.4.4 Markush Practice .................................................................................................... 13

1.1.4.5 Intermediate and Final Products in Chemical Applications ...................................... 14

1.1.4.6 Biotechnological Inventions ..................................................................................... 15

1.1.4.7 Single General Inventive Concept ........................................................................... 15

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1.1.4.8 A Priori and A Posteriori Lack of Unity ..................................................................... 16

1.1.4.9 Issuing the Invitation to Pay Additional Search Fees ............................................... 18

1.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity 21

General Approach ........................................................................................................... 21

1.1.4.11 Payment of Additional Search Fees Under Protest ................................................ 23

1.1.4.12 Completing the Search Report .............................................................................. 24

1.1.4.13 Time for Completing the Search Report ................................................................ 24

1.1.4.14 Reported Decisions ............................................................................................... 24

Glossary .......................................................................................................................... 27

1.1.4.15 Other Decisions from the EPO .............................................................................. 28

1.1.5 Abstract and Title ................................................................................................ 28

1.1.5.1 Abstract ................................................................................................................... 28

1.1.5.2 Title ......................................................................................................................... 31

1.1.6 Subjects to be Excluded from the Search ................................................................... 31

PCT Article 17(2)(a) ......................................................................................................... 31

PCT Rule 39.1 Definition ................................................................................................. 32

Agreement with WIPO (IB) .............................................................................................. 32

Annex B Subject Matter Not Excluded from Search or Examination ................................ 33

Effect of Annex B of the Agreement with WIPO (IB) ........................................................ 33

Discussion and confirmation ............................................................................................ 33

Where a declaration Article 17(2)(a)(i) is issued … .......................................................... 33

Where a declaration under PCT Article 17(2)(a)(i) is not issued … .................................. 34

1.1.7 Claim Interpretation, Broad Claims, PCT Article 5 and 6 ..................................... 34

1.1.7.1.1 PCT Guideline References and Flow Chart .......................................................... 34

Claims Interpretation Flowchart ....................................................................................... 35

1.1.7.1.2 Overview of the Hierarchy .................................................................................... 37

1.1.7.1.3 Special Meaning, Ordinary Meaning, Everyday Meaning...................................... 37

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Special Meaning .............................................................................................................. 37

Ordinary Meaning ............................................................................................................ 38

Everyday Meaning ........................................................................................................... 38

Examples ........................................................................................................................ 38

1.1.7.1.4 Closed and Open Definitions and Implications for Interpretation........................... 40

1.1.7.1.5 Implications of the Hierarchy on Searching........................................................... 40

1.1.7.1.6 PCT GL Appendix Paragraphs 5.20[1] and 5.20[2] ............................................... 41

1.1.7.1.7 Interpretation of Citations - Inherency ................................................................... 42

1.1.7.2.1 Introduction .......................................................................................................... 43

1.1.7.2.2 Types of Broad Claims ......................................................................................... 44

Examples of search strategies for each of the claim types ............................................... 45

Type I Claim: Many claims in the one application ........................................................ 45

Type II claim: Many Possibilities ................................................................................. 47

Type III claim: Desideratum......................................................................................... 48

Type IV claim: Parametric. .......................................................................................... 51

1.1.7.3 PCT Articles 5 and 6 ............................................................................................... 54

PCT Article 5 ................................................................................................................... 54

PCT Article 6 ................................................................................................................... 55

1.1.7.4 Claims Lacking Clarity and Multitudinous Claims .................................................... 56

1.1.7.5 Procedure for Informal Communication with the Applicant....................................... 57

1.1.8 Search Strategy .................................................................................................. 58

1.1.8.1 Introduction ............................................................................................................. 58

Initial Considerations ....................................................................................................... 58

Recording Search Details ................................................................................................ 60

1.1.8.2 The Three Person Team (3PT)................................................................................ 60

1.1.8.3 Area of Search ........................................................................................................ 60

1.1.8.4 Search Considerations ............................................................................................ 61

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Claim Interpretation ......................................................................................................... 61

Searching Broad Claims .................................................................................................. 62

Determining Whether Claimed Features are Substantial, Common General Knowledge or Well Known in the Art ...................................................................................................... 62

Inventive Step Searching ................................................................................................. 63

Searching Dependent Claims .......................................................................................... 64

1.1.9 (reserved) ................................................................................................................... 64

1.1.10. Non-Patent Literature .............................................................................................. 65

1.1.11 Search Procedure ............................................................................................. 66

1.1.11.1 Overview - Novelty / Inventive Step ....................................................................... 66

1.1.11.2 Inventive Step ....................................................................................................... 67

1.1.11.3 Searching Product by Process Claims................................................................... 68

1.1.11.4 Dates Searched .................................................................................................... 68

1.1.11.5 Conducting the Search .......................................................................................... 69

1.1.11.6 Useful Techniques ("piggy back/forward" searching) ............................................. 70

1.1.11.7 Obtaining Full Copies ............................................................................................ 70

1.1.11.8 (reserved) .............................................................................................................. 70

1.1.11.9 Considering and Culling the Documents ................................................................ 70

1.1.11.10 Ending the Search ............................................................................................... 71

1.1.11.11 Categorising the Citations ................................................................................... 71

1.1.11.12 Grouping the Claims ............................................................................................ 72

Multiple dependent claims ............................................................................................... 72

1.1.12 Search Report and Notification Form Completion.............................................. 73

1.1.12.1 Background Search Report and Notification Form Completion .............................. 73

1.1.12.2 Applicant Details ................................................................................................... 73

Address for correspondence [Ad. Inst. 108] ..................................................................... 74

Date of mailing ................................................................................................................ 74

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Applicant's or agent's file reference [Ad. Inst. 109]........................................................... 74

International application number ...................................................................................... 74

International filing date .................................................................................................... 75

Applicant [Ad. Inst. 105] ................................................................................................... 75

1.1.12.3 General Details ..................................................................................................... 75

Notification of Transmittal of ISR and ISO ....................................................................... 75

First sheet of the ISR ....................................................................................................... 76

Box No. I of the ISR ......................................................................................................... 78

Box No. II of the ISR ........................................................................................................ 78

Box No. III of the ISR ....................................................................................................... 79

Box No. IV of the ISR ...................................................................................................... 79

Second Sheet of ISR, Box A ............................................................................................ 79

1.1.12.4 Fields Searched .................................................................................................... 79

Second Sheet of the ISR, Box B ...................................................................................... 79

1.1.12.5.1 Selection of Documents Considered to be Relevant ........................................... 81

Second Sheet of ISR, Box C ........................................................................................... 81

1.1.12.5.2 Citation Category................................................................................................ 83

1.1.12.5.3 Citation of Prior Art Documents .......................................................................... 84

General ........................................................................................................................... 84

Patent Literature .............................................................................................................. 85

WO Documents............................................................................................................ 86

Additional ‘descriptors’ ................................................................................................. 87

Kind Codes .................................................................................................................. 87

US Documents ............................................................................................................. 88

Other Patent Documents .............................................................................................. 88

Publication Date (INID Codes) ..................................................................................... 89

Non-Patent Literature ...................................................................................................... 90

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Citing Chemical Abstracts (CAS) Registry Numbers ........................................................ 90

1.1.12.5.4 Citation of URLs ................................................................................................. 91

1.1.12.5.5 Citation Examples .............................................................................................. 91

1.1.12.5.6 Citing patent Documents Retrieved from EPOQUE ............................................ 99

1. EPODOC Abstracts ..................................................................................................... 99

2. Derwent (WPI) Abstracts ........................................................................................... 103

3. BNS Full Documents ................................................................................................. 104

1.1.12.5.7 Relevant Claim Numbers .................................................................................. 105

Further documents listed in continuation box ................................................................. 105

1.1.12.6 Family Member Identification ............................................................................... 106

1.1.12.7 Date of Actual Completion of the Search ............................................................. 106

1.1.12.8 Refund Due ......................................................................................................... 107

1.1.12.9 Contents of Case File at Completion ................................................................... 107

Actions by the PCT Unit................................................................................................. 107

1.1.13 Reissued, Amended or Corrected ISRs and ISOs .................................................. 108

1.1.14 Priority Document ................................................................................................... 110

1.1.15 Foreign Patent Search Aids and Documentation ............................................. 110

1.1.15.1 Background Patent Search Aids and Documentation .......................................... 111

1.1.15.2 Hard Copy Documentation .................................................................................. 111

1.1.16 Assistance with Foreign Languages ....................................................................... 111

1.1.17 Rule 91 Obvious Mistakes in Documents ............................................................... 112

Obvious Mistake ............................................................................................................ 113

1.1.18. Nucleotide and/or Amino Acid Sequence Listings .......................................... 113

1.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings ........................... 113

1.1.18.2 Office Practice ..................................................................................................... 115

1.1.18.3 Summary ............................................................................................................. 116

1.1.19 Annexes .......................................................................................................... 116

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Annex H - Searching Broad Claims ................................................................................... 117

Annex S - Refund of Search Fees ..................................................................................... 117

Guidelines for PCT International Search Refunds.......................................................... 117

Annex U - ISR Quality Checklist ........................................................................................ 122

Internet searching 1 .......................................................................................................... 123

Internet Patent Searching Guidelines ............................................................................ 123

Introduction ................................................................................................................ 123

Usefulness of the Internet .......................................................................................... 124

Security ...................................................................................................................... 124

Guidelines ..................................................................................................................... 125

Will a quick Internet patent search assist in refining or validating the search strategy? .................................................................................................................................. 125

Choose Internet site/database. .................................................................................. 125

Continue Internet search? .......................................................................................... 127

Piggy backing? .......................................................................................................... 127

Annex W - Obtaining full text from internet ........................................................................ 130

‘Obtaining’ full text patent documents for ISR’s from the Internet ................................... 130

Background................................................................................................................ 130

Definitions .................................................................................................................. 130

Practice ...................................................................................................................... 130

Paper copies on file ................................................................................................... 130

Ordering from ES&S .................................................................................................. 131

Culling on line ............................................................................................................ 131

Printing on line ........................................................................................................... 131

Flow Chart ................................................................................................................. 131

Observations .............................................................................................................. 131

Annex Z - USPTO kind codes ........................................................................................... 134

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"Kind Codes" Included on USPTO Patent Documents ................................................... 134

Annex AA - Markush Claims ............................................................................................. 135

Annex BB - Article 5/6 Comparisons ................................................................................. 136

1.2 International Type Searching ................................................................................... 141

1.2.1 Procedural Outline - International Type Search ........................................................ 141

1.2.2 Introduction - International Type Searching .............................................................. 142

1.2.3 Classification and Search Indication ......................................................................... 143

Basis of Search ............................................................................................................. 144

Product by Process Claims ............................................................................................ 145

Recording Search Details .............................................................................................. 145

1.2.4 Unity of Invention ..................................................................................................... 145

1.2.5 Subjects to be Excluded from the Search ................................................................. 146

1.2.6 Obscurities, Inconsistencies or Contradictions ......................................................... 148

1.2.7 Abstract and Title ..................................................................................................... 148

1.2.8 Search Report .......................................................................................................... 148

1.2.9 Completing Search Report and Opinion Form .......................................................... 149

Front Sheet.................................................................................................................... 149

Bibliographic Information ............................................................................................ 149

Total number of sheets .............................................................................................. 149

Items 1a. .................................................................................................................... 149

Items 1b., 2-4 ............................................................................................................. 150

Box No. I Nucleotide and/or amino acid sequence........................................................ 150

Box No. II Claims found unsearchable .......................................................................... 150

Box No. III Lack of Unity ............................................................................................... 150

Second Sheet of the Search Report .............................................................................. 150

Box A Classification of Subject Matter ....................................................................... 150

Box B Fields Searched............................................................................................. 151

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Box C Documents Considered to be Relevant ........................................................... 151

Written Opinion .............................................................................................................. 151

Supplemental Box ......................................................................................................... 151

Search statement ....................................................................................................... 151

Continuation of Box III ................................................................................................ 151

Other Observations .................................................................................................... 152

Electronic data base consulted during the international-type search (continuation) .... 152

1.3 International Examination ........................................................................................ 152

Procedural Outline - Written Opinion of the ISA and International Preliminary Examination ......................................................................................................................................... 152

1.3.2 Introduction International Examination ..................................................................... 153

1.3.3 The Demand and IPRPII ................................................................................... 154

1.3.3.1 The Demand and IPRPII ....................................................................................... 154

1.3.3.2 Timeframe for Demand and IPRPII ....................................................................... 157

1.3.4 Top-up Search .................................................................................................. 159

1.3.4.1 Demand and Top-up Search ................................................................................. 159

Objective of a top-up search .......................................................................................... 160

Decision to conduct a top-up search .............................................................................. 160

Method for a top-up search ............................................................................................ 160

Completing SIS, Written Opinion-IPEO and IPRPII........................................................ 161

Data Collection .............................................................................................................. 162

1.3.4.2 Determining Cost of a Top-up Search on EPOQUE .............................................. 162

1.3.5 First IPE action .................................................................................................. 163

1.3.5.1 First IPE Action ..................................................................................................... 163

1.3.5.2 Supplementary International Search Report .......................................................... 166

1.3.5.3 PCT Third Party Observations ............................................................................... 166

General ......................................................................................................................... 167

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Dealing with PCT Third Party Observations ................................................................... 167

During the international search stage ......................................................................... 167

During the IPE stage .................................................................................................. 168

1.3.6 Response to Opinion ......................................................................................... 168

1.3.6.1 Response to Opinion ............................................................................................. 168

1.3.6.2 Extensions of Time to Respond to Opinions .......................................................... 170

1.3.7 IPRPII and Notification ............................................................................................. 170

1.3.8 Completing ISO, IPEO and IPRPII Forms ......................................................... 172

1.3.8.1 Front Page and Notification Application Details ..................................................... 172

Address for correspondence [Ad. Inst. 108] ................................................................... 172

Date of mailing .............................................................................................................. 172

Applicant's or agent's file reference ............................................................................... 173

Reply due date .............................................................................................................. 173

International application number .................................................................................... 173

International filing date .................................................................................................. 173

Priority date ................................................................................................................... 174

IPC symbols .................................................................................................................. 174

Applicant [Ad. Inst. 105] ................................................................................................. 174

Annexes [Rule 46.5, Rule 66.8, Rule 70.16, Rule 91.2, Ad Inst 607] ............................. 175

INTESS Case File ......................................................................................................... 175

Sequence Listing ........................................................................................................... 176

1.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs.................................... 176

A) Basis of Opinion for an ISO - Box I............................................................................ 176

Item 1: ........................................................................................................................ 177

Item 2: ........................................................................................................................ 177

Item 3: ........................................................................................................................ 177

Item 4: ........................................................................................................................ 177

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Item 5: ........................................................................................................................ 178

B) Basis of Opinion for IPEOs and IPRPs - Box 1.......................................................... 178

Item 1: ........................................................................................................................ 178

Item 2: ........................................................................................................................ 178

Item 3: ........................................................................................................................ 179

Item 4: ........................................................................................................................ 179

Item 5: ........................................................................................................................ 179

Item 6 of IPEO (Item 7 of IPRPII): .............................................................................. 180

Item 6 of IPRPII.......................................................................................................... 180

1.3.8.3 Box II Priority ......................................................................................................... 180

Example – PCT Application based on AU Complete / AU Provisional............................ 182

1.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability........................................................................................................ 183

1.3.8.5 Box IV Unity of Invention ....................................................................................... 184

1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability ....................................................................................................................... 187

NOVELTY & INVENTIVE STEP .................................................................................... 188

Choosing citations ...................................................................................................... 188

INDUSTRIAL APPLICABILITY ...................................................................................... 188

OPINION RESTRICTION .............................................................................................. 188

NOVELTY AND INVENTIVE STEP ............................................................................... 188

CHOOSING CITATIONS ........................................................................................... 188

REQUIRED LEVEL OF CONSIDERATION AND DISCUSSION ................................ 189

INDUSTRIAL APPLICABILITY ...................................................................................... 192

OPINION RESTRICTION .............................................................................................. 192

1.3.8.6.1 Novelty ............................................................................................................... 192

1.3.8.6.2 Inventive Step .................................................................................................... 194

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Document Plus Common General Knowledge - No Documentary Evidence Required (single source of information) ........................................................................................ 195

Document Plus Common General Knowledge – Documentary Evidence Required (the document/s used to support an assertion of CGK are categorised as “A”) ..................... 195

Combining Documents (Mosaicing multiple documents where all documents are categorised as “Y”) ........................................................................................................ 196

Problem-Solution Approach According to PCT Guidelines ............................................. 197

1.3.8.6.3 Industrial Applicability ......................................................................................... 198

1.3.8.7 Box VI Certain Documents Cited ........................................................................... 200

1.3.8.8 Box VII Certain Defects ......................................................................................... 201

1.3.8.9 Box VIII Certain Observations ............................................................................... 203

1.3.9 General Considerations..................................................................................... 203

1.3.9.1 Article 19 or Article 34(2)(b) Amendments ............................................................. 203

New Subject Matter ....................................................................................................... 205

1.3.9.2 Formalities ............................................................................................................ 206

1.3.9.3 General Notes on Form Completion ...................................................................... 207

1.3.9.4 Rule 91 Obvious Mistakes in Documents .............................................................. 208

1.3.10 Annexes .......................................................................................................... 209

Annex H - IPE Quality Checklist ........................................................................................ 209

Annex I - Examples of Inventive Step Objections .............................................................. 210

X Category Document Plus Common General Knowledge - No Documentary Evidence Required (single source of information) ......................................................................... 210

X Category Document Plus Common General Knowledge – Documentary Evidence Required (the document/s used to support an assertion of CGK are categorised as “A”) ...................................................................................................................................... 211

Y Category Documents (Mosaicing multiple documents where all documents are categorised as “Y”) ........................................................................................................ 212

Annex J - Examples of Objections under PCT Articles 5 and 6 ......................................... 213

Example 1 (objections under Articles 5 & 6) .................................................................. 213

Example 2 (objection under Article 5) ............................................................................ 216

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1.4 Fiji Applications........................................................................................................ 219

1.4.1 Introduction .............................................................................................................. 219

1.4.2 Completion Time and Priority ................................................................................... 220

1.4.3 Initial Processing ...................................................................................................... 220

1.4.4 Search Procedure .................................................................................................... 221


1.4.5 Search Report and Advisory Opinion ....................................................................... 222

1.4.6 Further Advisory Opinion .......................................................................................... 223

1.4.7 Final Processing ....................................................................................................... 224

1.5 Thai Applications ..................................................................................................... 225

1.5.1 Introduction .............................................................................................................. 225


1.5.3. Initial Processing ..................................................................................................... 225



1.5.5 Search Report .......................................................................................................... 227


1.6 WIPO Searches ....................................................................................................... 228

1.6.1 Introduction .............................................................................................................. 228


1.6.3 Initial Processing ...................................................................................................... 229


1.6.5 Search Report .......................................................................................................... 230


1.6.7 Annexes ............................................................................................................ 231

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WIPO search request guidelines ....................................................................................... 231

WIPO search request ........................................................................................................ 233

SEARCH REQUEST ..................................................................................................... 233

SEARCH REPORT........................................................................................................ 234

WIPO search request ........................................................................................................ 235

SEARCH REQUEST ..................................................................................................... 235

SEARCH REPORT........................................................................................................ 235

1.7 Other Countries ........................................................................................................... 237

1.8 (reserved).................................................................................................................... 238

1.9 PCT Articles, Regs and Guidelines et al ...................................................................... 238

1.10 Miscellaneous ........................................................................................................ 238

1.10.1 Current Allocation of PCT Related Duties ............................................................... 238

1.10.2 International Online Specialists .............................................................................. 239

1.10.3 Authorised Officer .................................................................................................. 240

1.10.4 Minimum Levels of Responsibility........................................................................... 240

1.10.5 Examiners with Foreign Language Capabilities ...................................................... 241

1.10.6 Current Status of APO as an RO ISA and IPEA ..................................................... 243

part 1 printable version ...................................................................................................... 245

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1. International

1.1 International Searching

Modified Date: 03 September 2018

1.1.1 Procedural Outline - PCT International Search 1. Initial processing by PCT Unit

• creation of INTESS record

• referral to the relevant Section

2. Allocate to search examiner and determine preliminary classification

3. Consider unity of invention

4. Consider excluded subject matter

5. Check abstract & figure

• draft an abstract if required

6. Examine specification and check for formality issues

7. Earlier search (including PCT third party observations – see 1.3.5.3)?

8. Formulate a search strategy and determine a consolidated search strategy in consultation with a three person team.

9. Conduct search using EPOQUE (and/or other search tools as required)

10. Search non-patent literature (NPL) as required and order relevant non patent literature from library if not already available from the internet

11. Search AU documents as required

12. Download and store all citations relating to a PCT application in the respective International application folder on the V:\ Drive

13. Prepare Written Opinion of the International Searching Authority (ISO)

14. Prepare search report and notification

• assign citation relevance category using discussion in ISO to categorise citations against groups of claims

15. Prepare a Search Information Statement (SIS) (the SIS, ISO and ISR are prepared by using the PCT/ISA/210-237-SIS template)

16. Refunds for earlier search

1.1.2.1 Background


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17. Final Processing by PCT Unit

1.1.2 Introduction

International - International Searching Patent Manual of Practice & Procedure Modified Date: 01September 2017

1.1.2.1 Background

The following procedures are supplementary to the PCT International Search and Preliminary Examination Guidelines and are intended to facilitate an understanding and application of the Guidelines by highlighting the essential steps to be taken by examiners and by directing their attention to the relevant passages of the Guidelines, PCT Articles, Rules and Administrative Instructions. See Annex P for a timeline of typical international application process from first filing to National Phase Entry.

Note that the expanded numbering system PCT/AU/20xx/123456 and WO 20xx/123456 took effect from 1 January 2004, and in the case of Australia applies to all official communications, publications and other official documents in respect of all PCT application numbers and publication numbers whether the PCT application was filed before or after that date. The citing of pre 2004 documents in the new format extends to the citing of such documents in reports and opinions, even if the document has been cited in an earlier opinion or report according to the old format. However, the old numbering system will be retained for data held in the mainframe computer (PATADMIN, etc). This applies even for applications filed from 1 January 2004.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 01 September 2017 Modified Date: 02 May 2011

1.1.2.2 International Examination

The examiner will prepare the written opinion (International Search Opinion/ISO) of the International Search Authority following 1.3.1 Procedural Outline. The ISO is carried out according to the same criteria which are used in international preliminary examination by the International Preliminary Examination Authority (IPEA). If the applicant does not demand international preliminary examination, the International Bureau (IB) will convert the ISO to an International Preliminary Report on Patentability (Chapter I) (IPRPI). For many PCT contracting States who do not have an examining capability this examination report serves as the only examination report in relation to the particular application. The ISO therefore serves an important role and the examination must be of a high standard.

1.1.2.3 General Procedures


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Modified Date: 25 February 2019

1.1.2.3 General Procedures

The following procedures are to be used both where Australia (AU) is the receiving Office (RO) for the international application to be searched or where the RO is another Office such as New Zealand (NZ), Singapore (SG) and AU is the specified International Searching Authority (ISA).

Also, IP Australia acts as an ISA for international applications filed with the USPTO. These applications are to be treated in the same way as any other international application for which AU is the ISA.

The objective of an international search by an ISA is to discover relevant prior art. It is very important that ISR's be of high integrity because they are made available to the applicant before encountering the expense of entering the national phase in the designated states, and because the various designated states will be relying to a varying extent on the ISR before deciding on any grant. See general guidance on searching. [Art 15(2) Rule 33.1(a) PCT/GL/ISPE/8 at para 15.01]

The PCT International Search and Preliminary Examination Guidelines describe the nature of the international search in these terms [Art 15(4) Rule 33 PCT/GL/ISPE/8 at para 2.02]:

“The objective of the international search is to discover the prior art which is relevant for the purpose of determining whether, and if so to what extent, the claimed invention to which the international application relates is or is not novel and does or does not involve an inventive step."

“In principle, and in so far as possible and reasonable, the international search should cover the entire subject matter to which the claims are directed or to which they might reasonably be directed after they have been amended." [PCT/GL/ISPE/8 at para 15.25]

"No special search effort need be made for searching unduly wide or speculative claims, beyond the extent to which they are supported by the description." [PCT/GL/ISPE/8 at para 15.26]

Where a claim or claims clearly do not comply with PCT Art 6 or Rule 6 and in particular are not supported by the description it is appropriate to limit or truncate the search as provided in 1.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6.

Modified Date: 14 June 2016

1.1.2.4 Extent of Search

An ISA must endeavour to discover as much of the relevant prior art as its facilities permit, and must, in any case, have regard to what is known as minimum documentation. The



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process of “having regard to” particular search material should have as its first phase an assessment by the three person team [including the search examiner] of the probability of finding highly relevant citations. Where the three person team concludes that this probability is low, it is open to the three person team to decide not to search that material.

The PCT International Search and Preliminary Examination Guidelines state:

“The international search is essentially a thorough, high quality, search of the most relevant resources, and the report serves to provide information on the relevant prior art to the applicant, to the public .....and to the designated Offices and the International Preliminary Examining Authorities." [PCT/GL/ISPE/1 at para 15.14]

"Nevertheless, it must be realized that, even though completeness should be the ultimate goal of the international search, this goal may not be necessarily obtained because of such factors as the inevitable imperfections of any classification system and its implementation, and may not be economically justified if the cost is to be kept within reasonable bounds. The examiner therefore considers the most relevant search resources for the technology, including databases listed in the Search Guidance Intellectual Property Digital Library (available through the WIPO web site at www.wipo.int), and organises the search effort and utilizes the search time in such a manner as to reduce to a minimum the possibility of failing to discover existing highly relevant prior art, such as complete anticipations for any claims. For less relevant prior art a lower retrieval ratio can be accepted.” [PCT/GL/ISPE/1 at para 15.16]

“Often various search strategies are possible that are relevant to the subject matter of the application. The examiner should exercise judgement based on experience and knowledge of the search resources, to select the search strategies most appropriate to the case in hand, and establish the order in which various strategies (i.e., classification places, databases, and other resources) are to be consulted accordingly. This process should give precedence to the main technical field of the invention, and to the search resources and strategies in which the probability of finding relevant documents is highest.” [PCT/GL/ISPE/1 at para 15.43]

For an example Examiner’s should consider the independent claim(s) and the inventive concept first when determining a search strategy. The search strategy should also cover significant features defined in dependent claims or features that the application might be reasonably expected to be directed towards after amendment, taking into account the inventive concept of the application read as a whole, and the relevant common general knowledge in the art. This could result in searching other classification areas or using alternative keywords.

If a significant feature is not forthcoming from the search, examiners should use their judgement as a person skilled in the art to determine if continuing the search is warranted. If it is, specific targeted keywords related to the missing feature should be used.



5

Some examples of when additional searching is not necessary are set out in Paragraph A13.13 of the PCT ISPE Guidelines. Namely:

i. where a technical feature known in a technical field is applied from its original field to another field and its application therein would have been obvious to a person skilled in the art;

ii. where a difference between the document’s content and the claimed matter is so well known that documentary evidence is unnecessary;

iii. where the claimed subject matter relates to the use of a known product, and the use would have been obvious from the known properties of the product;

iv. where the claimed invention differs from the known art merely in the use of equivalents that are so well known that the citation of documentary evidence is unnecessary.

No special search should be made for features that are so well known that documentary evidence seems to be unnecessary, however, if a handbook or other document showing that feature is generally known can be found rapidly, it should be cited. See Paragraph 15.24 of the PCT IPSE Guidelines.

Paragraph 15.27 of the PCT ISPE Guidelines states:

“For claims characterized by a combination of elements (for example, A, B and C), the international search should be directed towards the combination; however, when searching classification units (see chapter 7) for this purpose, sub-combinations, including the elements individually (for example, AB, AC, BC and also A, B and C separately), should be searched in those units at the same time. A search in additional classification units either for subcombinations or for individual elements of the combination should only be performed if this is still necessary for establishing the novelty of the element in order to assess the inventive step of the combination.”

The PCT International Search and Preliminary Examination Guidelines at paragraph 15.48 state as follows:

"The examiner carries out the international search, directing attention to any prior art likely to have bearing on novelty or inventive step. In addition, the examiner is encouraged to cite any prior art likely to be of assistance in determining sufficiency of description through the whole of the field claimed, see paragraphs 5.52 and 5.53 and the requirement that the claimed invention be fully supported by the description, see paragraphs 5.54 to 5.58. The examiner should also note any documents that may be of importance for other reasons, such as documents putting doubt upon the validity of any priority claimed, contributing to a better or more correct understanding of the claimed invention, or illustrating the technological background; but the examiner should not spend time in searching for these documents, nor in the consideration of such matters unless there is a special reason for doing so in a particular case. Documents which do not qualify as prior art because they post date the claimed

1.1.2.5 Minimum Documentation


6

invention may nevertheless be cited to show a universal fact, such as characteristics or properties of a material, or a specific scientific fact, or to show the level of ordinary skill in the art."

The examiner may truncate a search, where appropriate:

“Reasons of economy dictate that the examiner use appropriate judgement to end the search when the probability of discovering further relevant prior art becomes very low in relation to the effort needed. The international search may also be stopped when documents have been found clearly demonstrating lack of novelty in the entire subject matter to which the claims are directed, apart from features the application of which would not involve an inventive step and which are instantly and unquestionably demonstrable as being well known in the field under consideration such that documentary evidence seems to be unnecessary.” [PCT/GL/ISPE/1 at para 15.57].

See also:

• 1.1.8 Search Strategy

• 4.1 Searching

Modified Date: 01 August 2018

1.1.2.5 Minimum Documentation

The "Minimum Documentation" is set out in full in the WIPO Handbook on Industrial Property Information and Documentation under “PCT Minimum Documentation” and can be summarised according to [Rule 34] of the Regulations under the PCT as follows:

• the national patent documents issued in and after 1920 by:

• the United States of America (US)

• the United Kingdom (GB)

• France (including utility certificates) (FR)

• the former Reichspatentamt of Germany and the Federal Republic Of Germany (DE)

• Switzerland (in French and German) (CH)

• Japan (JP) where English language abstracts are available

• the former Soviet Union (SU) where English language abstracts are available

• the People’s Republic of China (CN)

• the Republic of Korea (KR)

1.1.2.6 Examination Section Procedures


7

• the Russian Federation (RU)

• non-Convention patent documents from any other country which are in the English, French, German or Spanish language and where these documents have been sorted and placed at the disposal of the ISA. (Any such Spanish language documents are only required to be searched to the extent that an English language abstract is generally available.) The only non-Convention patent documents which have so far been placed at the disposal of the Australian Patent Office are those of Canada (CA) and Austria (AT). The first Canadian document was issued on 26 October 1976; and a search is required to be made only back to that document.

• the published international (WO) applications and regional patent documents (eg. EP)

• published items of agreed non-patent literature

• Australian patent documents

Modified Date: 02 May 2011

1.1.2.6 Examination Section Procedures

Upon receipt in the section a supervising examiner (or a nominated section officer) will allocate the case to a suitable search examiner

Allocation to a search examiner must be in accordance with:

• the examiner's technical expertise, examination experience, foreign language capability and overall competence.

• previous section or other section experience. Records of previous searches, whether records kept within a section or INTESS may show: an appropriate examiner; reveal an earlier search omitted from the request form; locate previous relevant searches in the same or a similar IPC mark; or locate applications for the same applicant in the same field.


1.1.2.7 Searching Examiner

It is not appropriate to specify a rigid sequence for the procedural steps of the search. In general the searching examiner is responsible for the conduct of the search in the most efficient manner that the circumstances of each case allows. If the searching examiner is under supervision, their supervisor is responsible for the efficient conduct of the search. See also 4.1 Searching.

1.1.2.8 Other Considerations


8

The searching examiner must consider unity of invention at the earliest possible opportunity in order to meet the time limits imposed by the PCT. Early determination will also assist search strategy consideration. [Rule 42.1]. See also 1.1.4 Unity of Invention.

PCT applications should be given a priority sufficient to enable our obligations under the Customer Service Charter to be met, or, failing that, our obligations under the PCT as an ISA.

The "Date of the actual completion of the international search" will be the day on which the searching examiner completes, or as the case may be, the day on which the responsible examiner concurs with the search report competed by a searching examiner under supervision. Under normal circumstances this should be within 9 weeks of receipt of the search copy by the ISA and, in all cases within 3 months of this receipt. (Refer to Customer Service Charter Timeliness Guidelines for apology time limits.)


1.1.2.8 Other Considerations

Under Rule 40.2(b) any fees payable for additional searches are to be paid directly to the ISA and not through, or to, the RO. Consequently eg. for NZ searches payment is directly to IP Australia. Any contact with eg. NZ about the payment of additional fees (or any other matter relating to a search) will be via the PCT Unit. [Rule 40.2(b)]

So far as Australia is concerned, while it is in the international phase a PCT application effectively proceeds as both an application for a patent and for a patent of addition. An indication of the form or form(s) of protection in respect of which a PCT application is made is only effective when the indication is given to a designated Office when performing the acts required for national phase entry (although reference to a parent application can be made in the patent request). Our systems do not recognise an application as being for one or another form of protection until entry into the national phase has occurred. [Rule 49bis].


1.1.2.9 Copending Applications

Copending Applications, Including Those Filed on the Same Date

According to PCT International Search and Preliminary Examination Guidelines (Chapter 11,Paragraph 11.10), the PCT does not deal explicitly with the case of co-pending international applications of the same date. However, it is an accepted principle in most patent granting systems that two patents shall not be granted to the same applicant for one invention. It is permissible to allow an applicant to proceed with two international applications having the same description where the claims are quite distinct in scope and directed to different subject matter. However, in the rare case in which there are two or more

1.1.3.1 Allocation


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international applications from the same applicant designating the same State or States and the claims of those applications have the same priority date and relate to the same invention (even though they may not necessarily claim that invention in identical terms), each conflicting application should (as long as it has already been published) be cited in the international search report and identified with a “L” category symbol as raising possible double patenting issues.

In case the conflicting application has not been already published, the examiner should make a note of the situation on the file. Subsequently, if the conflicting application is published before or during International Preliminary Examination, it should be cited in the written opinion and /or the report. A notification, to the applicant alone, is given in the case where their international application designates a State in which they proceed with a national application having the same priority date and relating to the same invention as the said international application, if the examiner is aware of this situation. However, no such notification should be given where two applications (international or otherwise) of the same priority date and relating to the same invention are received from two different applicants

1.1.3 Search Allocation and Preliminary Classification

International - International Searching Patent Manual of Practice & Procedure Modified Date: 14 June 2016

1.1.3.1 Allocation

An international search must be allocated as quickly as possible to a search examiner who is capable of completing the search within, or as near as possible to within, the target time (See Customer Service Charter Timeliness Guidelines for apology time limits) Provided that the quality of the search is not compromised, the overriding consideration in allocating the search is achieving the target time, rather than allocating the search to someone who it might be said to “belong to” on the basis of its classification. The preliminary classification must also be determined as quickly as possible, in accordance with the latest IPC edition. Allocation and preliminary classification should ordinarily have been accomplished within one or two days of the search file having been processed by the International Sort Examiner(s).

If at any point it appears that this time frame is not going to be met, the situation must be brought to the attention of a Sort Examiner whose role it will be to facilitate the allocation of the case to a search examiner. If despite the intervention of a sort examiner the one or two days deadline will still not be achieved, the matter should be referred to an IPC Classification Arbiter. The Arbiter will investigate the cause(s) of any hold-up and determine how best to proceed, having particular regard to paragraph 15.21 and 15.22 of the PCT International Search and Preliminary Examination Guidelines.

1.1.3.2 Preliminary Classification


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Even if the search examiner is competent to carry out the search and/or classification in relation to a search area (whether first or secondary IPC) that is the responsibility of another section, they should consider including an examiner from the other section in the 3 person search strategy team for guidance, and should certainly do so if they have serious doubts. The aim is to carry out a search so as to produce the best result for the applicant in a way which is the most efficient for IP Australia. When seeking guidance, the search examiner should, in the interests of efficiency, at least make suggestions as to any possible classification marks.

The same principle applies where the claims of an application span multiple technologies (perhaps involving multiple inventions), some of which are the responsibility of one or more other sections. From the outset the other section(s) should be consulted in the classification and searching of the international application, and examiners from the other section(s) should be considered for inclusion in the 3-person search strategy team (see 4.1.4.1 Three Person Team (3PT)).

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 14 June 2016 Modified Date: 02 May 2011

1.1.3.2 Preliminary Classification

The search examiner should give a high priority to the task of preliminarily classifying a case so that the determination of the search strategy by the search strategy team is not delayed. If another section is involved in the classification, it should accord the case a similar priority. A final determination of the classification can be made at a later stage, but must at the latest be made at the time of preparing the international search report.

When acting as an ISA this Office assigns obligatory "invention information" IPC classification symbols in accordance with the rules as set forth in the Guide to the IPC and in the IPC itself (Edition of the IPC in force at the time of the assignment). Non-obligatory IPC classifications (such as the optional IPC indexing codes) are not applied.

Note: The international application number and IPC marks may be stored on the computer via INTESS.

1.1.4 Unity of Invention


1.1.4.1 Unity of Invention Background

1.1.4.2 Determining Lack of Unity


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Where the ISA considers that the international application does not comply with the requirement of unity of invention, it may invite the applicant to pay additional search fees in order that inventions other than the first mentioned invention in the claims may be searched. [Article 17(3)(a) PCT/GL/ISPE/1 Chapter 10]

Unity of invention must be considered at the earliest possible opportunity. The consequences of this step are considerable due to the large cost and time associated with PCT searching as well as the time limit imposed by the PCT for completion of the search report. If it is not clear that the claims lack unity after considering the issue for a minimal period of time, such as 15 minutes, then it will generally be more efficient for the search to proceed on the basis that there is no lack of unity. Further time spent conclusively determining whether or not there is lack of unity is likely to be counter-productive. However, if lack of unity is not raised in appropriate circumstances, an unnecessary cost is imposed on the Office if significant additional searching effort results. Also, if lack of unity is raised when it should not have been, there may be insufficient time later to complete the required search; and if the issue is raised incorrectly the Office may not be able to abide by the original finding of lack of unity and be required to refund any extra fees paid.

Lack of unity must be determined solely from the language of the claims (as properly construed) and, where appropriate, by having regard to relevant prior art. In particular, the size of the search required or the number or nature of classification areas that need to be searched is not relevant to the determination of lack of unity; this is only relevant to whether an invitation to pay extra fees should be issued once lack of unity has been established. If a large search is required, careful attention should be given to the search strategy adopted (see 4.1 Searching).

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 14 June 2016 Modified Date: 01 February 2019

1.1.4.2 Determining Lack of Unity

The international application must relate to one invention only, or to a group of inventions so linked as to form a single general inventive concept. [Rule 13.1]

The basic test to be applied in determining whether or not there is unity of invention is set out in PCT Rules 13.2 to 13.3. In applying these rules, the guidelines and examples in Chapter 10 of the PCT International Search and Preliminary Examination Guidelines are to be followed.

Unity of invention is present between a group of claimed inventions only when there is a technical relationship among those inventions involving one, or more of the same or corresponding special technical features. The expression "special technical features" means

1.1.4.3 Combinations of Different Categories of Claims


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those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. [Rule13.2]

The determination of unity of invention is made on the contents of the claims as interpreted in light of the description and drawings (if any).

Examples 9 and 14 paragraph 10.29 and 10.34 of the PCT International Search and Preliminary Examination Guidelines, respectively, illustrate some instances of corresponding special technical features.

A useful starting point to assess unity of invention is to consider what the problem is that the application addresses. This leads on to what is the way that the application solves that problem. The general solution is probably the general inventive concept. If that concept is reflected by the technical features in all the claims then, prima facie, unity of invention may exist. If the technical features also define a contribution which each claimed invention makes over the prior art, then they are the "special technical features" in the terms of Rule13.2 and unity of invention is present. Note that the general concept can be evident indirectly, i.e. the form of the invention claimed takes advantage of, or relies on, the general concept.

The determination of unity of invention is made regardless of whether the inventions are claimed in separate claims or as alternatives within a single claim. [Rule 13.3]

Where a claim contains distinct embodiments which are not linked by a single general inventive concept, the objection as to lack of unity of invention should be raised. [PCT/GL/ISPE/8 at para 10.09]

Unity is considered in the first instance, only in relation to the independent claims. If the independent claims satisfy the requirements of unity of invention and overcome the prior art then no unity problem will arise in relation to any of the dependent claims. Where an independent claim does not overcome the prior art then the inventive link between all the dependent claims must be considered carefully. There is often a residual a posteriori lack of unity in dependent claims arising from a novelty objection. Where there are different significant embodiments in the dependent claims, an objection of lack of unity a posteriori (that is, arising only after assessment of the prior art) may be applicable. [PCT/GL/ISPE/8 at para 10.08]

Where the special technical feature is known, then that feature cannot make a contribution over the art. It is then necessary to attempt to reformulate the problem and reassess the special technical feature. If the special technical feature clearly lacks an inventive step compared to the prior art, then the same conclusion follows.

Lack of unity of invention should be based on sound reasons and be raised in clear cases. Care should be exercised in not raising it based on a narrow, literal or academic approach. [PCT/GL/ISPE/8 at para 10.04]

Modified Date: 03 July 2017



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Paragraph 10.12 of the PCT International Search and Preliminary Examination Guidelines sets out certain combinations of claims of different categories that are permissible in the same international application as having unity of invention. For example, independent claims to a product, a process specially adapted for the manufacture of the product and a use of the product are allowed.

A process is specially adapted for the manufacture of a product if it inherently results in the product. An apparatus or means is specifically designed for carrying out a process if its contribution over the prior art corresponds to that of the process.

Examples 1 to 7 in paragraph 10.21 to 10.27 of the PCT International Search and Preliminary Examination Guidelines relate to claims of different categories while examples 8 to 17 in paragraph 10.28 to 10.37 deal with claims of the same category.

In applying the guidelines specially adapted and specifically designed are not to be interpreted as requiring that the scope of the subject matter of claims of different categories be coextensive. For example, for claims directed to a process and an apparatus "specifically designed" to carry out that process, it is permissible for the apparatus to be also capable of being used for carrying out another process and that the process could also be carried out using an alternative apparatus.


1.1.4.4 Markush Practice

A Markush claim is a claim that defines alternatives. Markush claims can be either chemical or non-chemical, provided they amount to a claim to alternatives. Thus a claim to a list of compounds identified by name or a generic formula are equally regarded as Markush claims.

Paragraph 10.38 to 10.51 of the PCT International Search and Preliminary Examination Guidelines considers unity of invention and Markush claims and the practice described is illustrated in examples 18 to 31.

For Markush claims, the requirement of a technical interrelationship and the same or corresponding special technical features, as defined in Rule 13.2, are to be considered to be met when the alternatives are of a similar nature.

When considering a Markush claim for chemical compounds, it is necessary for all alternatives to have a common activity or property. In addition, it is only necessary for there to be a "significant structural element shared by all of the alternatives", to establish unity of invention. (The important thing to note is that it is not necessary for this "significant structural element" to be novel).

1.1.4.5 Intermediate and Final Products in Chemical Applications


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When determining whether there is a common property shared by the alternatives, the property should be defined sufficiently broadly that all of the claimed members possess the property. If the property is defined too narrowly, then the claim will inevitably lack unity.

Examples 18 to 31 in paragraph 10.38 to 10.51 of the PCT International Search and Preliminary Examination Guidelines provide some assistance in determining if a common "significant structural element" exists for a chemical structure containing alternatives.

In determining unity of invention for a Markush claim directed to chemical compounds in an international application, there is an alternative to the "significant structural element shared by all of the alternatives" for establishing unity. This is that all the alternatives belong to a recognised class of chemical compounds in the art to which the invention pertains, but of course it is still necessary for all the alternatives to have a common activity or property.

When determining whether a group of chemical substances belong to a recognized class, the class must be one in which there is a reasonable expectation that the members will behave in the same way, in the context of the invention. However, the nature of the class should be consistent with scientific logic, and not merely a restatement of the common property. For instance, a group of enzymes that were isolated from a single organism would not be properly regarded as a class based on the organism of origin. However, if all of the enzymes also had a common or related activity, that could be the basis of a class.

The Markush concept can also be applied to a claim involving mixtures of chemicals where the components of these mixtures are selected from particular groups. In example 23 the mixtures of herbicidal agents A and B failed this "recognised class of chemical compounds" test because the "B" group herbicides represented a plurality of classes of compounds.

Modified Date: 01 November 2012

1.1.4.5 Intermediate and Final Products in Chemical Applications

The term "intermediate" includes both intermediate and starting products that are used to produce the final products.

Paragraphs 10.46 - 10.51 of the PCT International Search and Preliminary Examination Guidelines refers to the case of intermediates and final products. See examples 26 to 31.

When considering claims to intermediate and final products two conditions need to be fulfilled for unity of invention to exist:

i.the intermediate and final products have the same essential structural element, in that either:

• the basic chemical structures of the intermediate and the final products are the same, or

1.1.4.6 Biotechnological Inventions


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• the chemical structures of the two products are technically closely interrelated, the intermediate incorporating an essential structural element into the final product.

ii.the intermediate and final products are technically interrelated, this meaning that the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element.


1.1.4.6 Biotechnological Inventions

The same principles and guidelines should be applied to biotechnological inventions relating to multiple nucleic acid or peptide sequences. In particular, paragraphs 10.52 to 10.59 of the PCT International Search and Preliminary Examination Guidelines provide examples of practice where applications claim multiple nucleic acid or peptide sequences.

Examiners should note that the mere presence of multiple sequences is not sufficient to establish that unity of invention is lacking.

Applications claiming multiple nucleic acid or peptide sequences must be assessed to determine whether or not a special technical feature exists, which some, or all of the claimed sequences share. While there will be circumstances in which unity of invention will be lacking, equally there will be circumstances in which multiple sequences will be a single invention.

Examiners should also be aware of the potential applicability of Markush practice to applications claiming sequences and should ensure that this approach is taken into account when assessing unity in such cases.


1.1.4.7 Single General Inventive Concept

For there to be unity of invention, claimed inventions need to be linked by a single general inventive concept. This requirement means that more than simply some link is needed between a group of inventions claimed. There must be either a common technical problem or at least, if there is more than one technical problem, there must be one single technical concept behind the solutions of these different problems (see eg. EPO decision case W0009/93). [Rule 13.1]

Thus in considering whether unity exists, the technical features of the inventions need to be assessed as to the contribution they provide. The possible effects of the various inventions need to be considered to determine whether they are technically connected and thus form a single general inventive concept. Reference to the description in the application will assist in determining the problem to be solved or the effect to be achieved and thus aid in the

1.1.4.8 A Priori and A Posteriori Lack of Unity


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determination of the inventive concept and whether each invention is directed thereto. Any acknowledged prior art in the description may aid in determining the problem. (See eg. Fibre Fleece OJ EPO 4/1993, 225; [1993] EPOR 515 and Cervical Punch/WISAP OJ EPO 4/1994, 239; IIC Vol 25 No.6/1994, 906).

A single inventive concept may be revealed in features common to different teachings expounded individually in the same application. A teaching may encompass not only the immediate subject-matter representing the solution to the problem as defined in the relevant claim, but also its technical consequences which are expressed as effects. Any subject-matter is defined by structural features and the relationship between them. The relevant effects, i.e. the outcome or results achieved by the invention as claimed, will usually be apparent from the problem as stated.

A single general concept may therefore be said to be present only if, at least, a partial identity exists among the teachings in an application deriving from the structural features of the subject-matters claimed and/or the outcome or results associated with those subject-matters.

The subject matters referred to in 1.1.4.3 Combinations of Different Categories of Claims, are examples embodying a single general inventive concept. In one respect the partial identity between the product and its use derives from the structural features of the product, and in another respect the partial identity shared by the product and the process specially adapted for its manufacture derives also from the product which is to be considered as the effect or result of this process.

(See Artificial Hip Joint/DRAENERT OJ EPO 8/1991, 438; [1991] EPOR 516 at point 3.2).

A group of features common to claimed inventions may form a single general concept, but if this group is known from the prior art then on its own it does not form a single general inventive concept as required by Rule 13.1. (See eg. Cervical Punch/WISAP (supra)). [PCT/GL/ISPE/5 at para 10.04]



The determination of lack of unity of invention may arise from two situations. In one situation lack of unity may be directly evident “a priori,” that is, before considering the claims in relation to any prior art. Alternatively, lack of unity may only become apparent “a posteriori,” that is, after taking (at least some) prior art into consideration. [PCT/GL/ISPE/7 at para 10.03]

The determination of a priori lack of unity is independent of any knowledge of the relevant prior art. Thus respective inventions claimed need to be assessed to determine whether they each involve one or more of the same or corresponding special technical features. If



17

they include one or a group of such features then prima facie the inventions will possess unity a priori.

For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art.

The example given at Annex E.2 illustrates an a priori lack of unity situation. So too does para 10.03 of the PCT International Search and Preliminary Examination Guidelines.

Where, as in the example above, two inventions under consideration are of the form A + X and A + Y, in considering lack of unity a priori, either the description in the specification or the manner of claiming (such as a two-part claim) may indicate that the common feature A does not on its own make any technical contribution to the inventions. For example, if A represents a feature that the specification indicates as being prior art or known, or would otherwise be understood by a skilled person to be well known in the art, then it would not possess the characteristic of a "special technical feature" per PCT Rule 13.2.

As an illustrative example of the last alternative in the previous paragraph, the feature A may represent a single feature (such as 'an adjustable chair') or a group of features (such as 'an adjustable chair having a movable back rest'). In considering lack of unity a priori, either form of feature A would (today) be recognised as well known, or at least be seen as generic in the art, and thus not on its own qualify as a special technical feature. Thus lack of unity a priori could be taken in this situation with reasons given for considering the feature as well known or generic. If there is any reasonable doubt that feature A is known or generic, then material showing that it is should be identified and lack of unity a posteriori taken based on that material. (See EPO decision case W0038/90 for an example).

The above example assumes that features X and Y are not closely technically related whereby the respective inventions do not otherwise embody the same general inventive concept.

A determination of lack of unity a posteriori can arise where relevant independent claims have features in common but those features appear not to be novel given the prior art, thus leaving the claims without a single general inventive concept. [PCT/GL/ISPE/7 at para 10.08]

A determination of lack of unity a posteriori can also arise with dependent claims in an application where the prior art shows a presumption of lack of novelty or inventive step in an independent claim to which they relate. This can follow from the finding for the independent claim if there is no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, thus leaving two or more dependent claims without a single general inventive concept.

1.1.4.9 Issuing the Invitation to Pay Additional Search Fees


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In order to raise an objection of lack of unity a posteriori the examiner needs to prove that the common feature(s) or claim is not novel or does not clearly involve an inventive step; for example, by citing relevant patent specifications, journals or textbooks. The invitation to pay additional fees needs to clearly indicate the basis for concluding why the common feature lacks novelty or an inventive step.

The example given at Annex E.4 illustrates an a posteriori lack of unity situation as do paras 10.08 and 10.57 of the PCT International Search and Preliminary Examination Guidelines.

In considering the prior art for lack of unity a posteriori, no account should be taken of subject matter disclosed in any E or P category documents.



An invitation to pay additional search fees is not automatically issued when lack of unity is found. If it is possible to complete the search and produce an ISO for both or all inventions with minimal additional search effort (i.e. “negligible additional work” – see [PCT/GL/ISPE/6 at para 10.65]) then an invitation should not be issued.

As a guide, if the extra work entailed in searching for and examining an additional invention is estimated to entail “significant additional effort”, then an invitation should be issued.

Common circumstances in which a search / examination is likely to require “significant additional effort” include:

• the different inventions require a search in different IPC sub-groups (or search areas) which are of significant size.

• the different inventions, while requiring the search to be carried out in the same search area, are not sufficiently close in subject matter to avoid significant additional effort in searching them.

• the claiming structure (that is, the number of independent claims and the manner of appendancy) is such as to require the expenditure of significant additional effort in examining them.

It may not always be necessary to request additional search fees when lack of unity is found a posteriori, such as when most of the search has already been done. However, where documentary evidence can be quickly located (eg. in the Australian search material) which establishes the lack of novelty, and it is otherwise justified in light of the above, an invitation to pay additional fees may be considered.

In some cases, it may require a modest or insignificant amount of additional effort to search one or more additional inventions in an application (i.e. “negligible additional work” – see



19

[PCT/GL/ISPE/6 at para 10.65]), but a search of all inventions in the application would place an undue burden upon the Office. In such cases it may be possible to group inventions together and request a separate fee for the search and examination of each group. However, lack of unity will be reported on in the ISR and ISO with respect to each invention, rather than each group of inventions.

Where it is considered that an invitation to pay additional search fees should issue, the examiner will complete form PCT/ISA/206, gain approval from their Supervising Examiner and upload the finalized invitation to pay to the eCase following the procedures listed in 4.9.6.2 Invitation to Pay Additional Search /Exam fees. The Supervising Examiner is the authorised officer for an invitation to pay and the time limit for a response to an invitation is one month. [Rule 40.1]

The invitation to pay additional search fees must be accompanied by a logically presented, technically reasoned statement of the basic considerations behind the finding of lack of unity. Other than in the circumstances referred to in 1.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity it is not sufficient to merely list the inventions contained in the application if the applicant cannot infer from this list alone that the inventions do not relate to a single inventive concept (see Heat Exchanger/SCHICK OJ EPO 2/1987, 63, and other subsequent decisions in the EPO). The applicant must be fully informed of the considerations that have led to the decision that there is lack of unity - see 1.1.4.14 Reported Decisions. [PCT/GL/ISPE/6 at para 10.74]

The explanation should also include the basis for the number of additional search fees invited and, where applicable, indicate which inventions can be searched with another without requiring a separate search fee. Examiners should note that the correct number of additional search fees is one less than the number of inventions, provided work entailed in searching for and examining each extra invention is estimated to be “significant additional effort”, as discussed above. The amount of search fees is as given in Schedule 7 part 3 of the Patents Regulations.

As a guide to the level of explanation required, the reason for lack of unity should be clear solely by reference to the relevant claims and the explanation. If lack of unity is raised a posteriori, the explanation must include reference to the relevant citation(s). It should be noted that the space provided on form PCT/ISA/206 for the explanation will generally be inadequate and a supplementary sheet will be necessary.

If the application contains claims that are directed to matter that the Australian Patent Office is not required to search, or that fail to comply with the prescribed requirements to the extent that a meaningful search cannot be carried out (see Article 17(2) and 1.1.6 Subjects to be Excluded from the Search), box 3 of the invitation to pay additional fees should be checked and the unsearchable claims noted.



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If the examiner expects that search and examination of any of the inventions would be significantly restricted due to issues pertaining to Articles 5 and 6 (see 1.1.7.3 PCT Articles 5 and 6), such matters may briefly be explained in the invitation to pay additional fees.

All claims relying on references to the description or drawings (in particular, omnibus claims), except in those cases where it is absolutely necessary, will fail to meet the requirements of Rule 6.2(a). Hence, no search or opinion is to be established for these claims. This circumstance is required to be mentioned on the form PCT/ISA/206 by (i) checking Box 3 and indicating which claims have been found to be unsearchable, and (ii) inserting the text “The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.” directly below.

Annex E illustrates the level of detail required.

Paragraphs 10.21 - 10.59 of the PCT International Search and Preliminary Examination Guidelines shows examples concerning unity of invention.

Generally, having issued the invitation to pay additional search fees, the search is to be conducted (or continued) in respect of the invention first mentioned in the claims.[Article 17(3)(a)]

However, where under the procedure of 1.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity, the applicant has asked that an invention other than the first mentioned invention be searched, the search may proceed on that basis. Searches of any other identified inventions should not proceed until an additional fee or fees have been paid.

In all cases the search report must clearly indicate the parts of the application that were and were not searched.

Note: The guidelines in para 10.61 of the PCT International Search and Preliminary Examination Guidelines suggest that the invitation to pay additional search fees be accompanied by a partial search report in relation to the invention first mentioned in the claims. This is not current Office practice.

If additional fees are paid in respect of one or more of the further inventions the additional searches and examinations are to be arranged and completed as soon as possible. Where the additional fee or fees are paid outside the time provided for in the invitation, the case is to be referred to the supervising examiner for consideration of the applicability of Article 48 of the PCT or the appropriateness of resetting the time allowed in the invitation, before any additional searches and examinations are commenced. Subject to this, an additional search and examination is to be conducted only if the fees are paid within the time allowed; fees paid outside this time are refunded ( Fuel Products/LUBRIZOL OJ EPO 5/1988, 182).

If additional search fees are paid, the PCT Unit will update the CSC Due Date to reflect 10 weeks from the date of payment. However, if the updated date goes beyond the Final Date

1.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity


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for Action Type, then the CSC date will be updated to reflect 5 days before the Final Date for Action Type. If the updated date does not go beyond the Final Date for Action Type, then the 10 weeks date will be used. This will allow the PCT Unit enough time to dispatch the ISR/ISO (see 1.2 PCT Application Fee Processing > Response to the Invitation to Pay Additional Fees in the COG Manual).

If the situation arises where an application includes more than one invention and at least one of the inventions is covered by an earlier search a refund may be applicable as per the processes in Annex S.. However an additional search fee for the invention(s) not covered by the earlier search may be required. If it is determined that additional searching is required for the other invention(s), examiners are required to issue the ITP as per the normal circumstances to cover the additional search effort required. Once the ITP process has been followed and the search report and opinion have been completed, a refund should be considered as per the normal process for the invention(s) covered by the earlier search.



Where it is apparent that only one general inventive concept is described and lack of unity arises merely because of claims that are not supported by the description and/or are not clear and concise, the procedures in 1.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6 are to be followed. In these circumstances it will generally not be necessary to issue an invitation to pay additional search fees but the technical lack of unity may be noted in the search report as in 1.1.4.12 Completing the Search Report. [PCT/GL/ISPE/7 at Chapter 9, para 9.34]

In other cases in which the claims are large in number, complex, or their nature encompasses a range of separate inventions, it will be necessary to directly address lack of unity. In many such cases, however, due to the nature and complexity of the claims, there is a risk that the applicant will not want the first mentioned invention to be searched and/or they will disagree as to the number and identity of the inventions. Frequently, therefore the task of preparing the invitation will be very time consuming and ultimately wasted if the applicant does not wish to pursue additional inventions identified.

General Approach

As the specifics of each case vary, examiners should adopt a flexible approach when developing a strategy to progress these cases. Examiners should therefore consult with their supervising examiner and develop together an approach tailored to the specific circumstances of the case.



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In general, however, preliminary consultation with the attorney of the issues surrounding the finding of lack of unity will usually result in a more efficient process and effective search strategy.

Thus, the following steps should be included in the strategy adopted.

1. Preliminary contact with the attorney by phone to discuss how best to progress the search. This discussion should include:

• Explaining the basis of the finding of lack of unity and discussing the justification for the additional search fees.

• Inviting the applicant to nominate what they consider to be the main invention, i.e. the invention they would prefer to be searched for the fee already paid.

2. Where, following discussion with the attorney (or if such discussion cannot take place), a finding of lack of unity still applies and a search encompassing the whole of the claims cannot be carried out for the single search fee already paid, the examiner should issue an invitation to pay additional search fees (ITP) using form PCT/ISR/206 including a level of detailed explanation appropriate in the light of the discussion with the attorney. This may either be:

• an *abbreviated ITP (see below), where there is negotiated between the examiner and the attorney, a fully agreed position on the finding of lack of unity and the invention groups identified; or

• a comprehensive ITP as discussed at 1.1.4.9 Issuing the Invitation to Pay Additional Search Fees, fully addressing any issues raised by the applicant or their attorney, in all other cases. For example, a comprehensive ITP could be required if the attorney:

i. indicates disagreement with the finding on unity,

ii. indicates additional fees will be paid under protest, or

iii. provides no comments.

*Note: An abbreviated invitation to pay additional fees need only briefly discuss the inventive concepts, list the inventions identified in the claims and address any specific applicant’s comments, rather than providing the detailed discussion of lack of unity required in a comprehensive ITP.

In all cases, examiners should record on the file, as part of the invitation or as a record of the conversation with the attorney, sufficient information to clearly explain the basis for the finding of lack of unity and the justification for the additional search fees.

1.1.4.11 Payment of Additional Search Fees Under Protest


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Note: In all cases Box III of the search report should clearly identify the invention(s) searched and, if excluding the first mentioned invention, that this was at the request of the applicant. For example: • No required additional search fees were timely paid by the applicant. Consequently, this international search report is restricted to the invention covered by claims Nos.: 10-20, at the request of the applicant.


1.1.4.11 Payment of Additional Search Fees Under Protest

An option available to the applicant is to pay the additional search and examination fees under protest. The additional fee is paid and should be accompanied by a reasoned statement explaining why the applicant believes that the requirements of unity of invention are fulfilled and addressing the reasons set out in the invitation to pay additional fees. [Rule 40.2]

Where a fee is paid under protest, the case should be searched and reported on in respect of the additional inventions. When completing the ISR, the examiner should ensure that Box 3 on the first page of the Notification of Transmittal Form (PCT/ISA/220) is completed and the box "no decision has been made yet on the protest; the applicant will be notified as soon as a decision is made" is checked. After completing the report, the documents should be uploaded to the eCasefile. Examiners should also include a file note on the eCasefile about how much work was involved in the additional search and provide a paragraph explaining whether or not they agreed with the protest and why.

The PCT unit will then forward an alias of the eCasefile to the Assistant General Manager (AGM) with responsibility for the section where the protest occurred. The AGM will arrange for the protest to be reviewed by an independent supervising examiner. Based on this review and the examiner’s comments, the AGM will decide whether the applicant’s protest should be upheld.

A protest may be upheld and the fees refunded (fully or in part), for several reasons including:

• that, having regard to the facts of the case and the PCT Rules, there is no lack of unity,

• the invitation fails to give either sufficient or substantially correct reasons for the finding of lack of unity and the lack of unity is not manifestly obvious from the claims themselves,

• that the amount of the additional fees, in the circumstances, is excessive.

1.1.4.12 Completing the Search Report


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It is not currently Office practice to charge a fee for examination of the protest. Rule 40.2(e)


1.1.4.12 Completing the Search Report

The international search report is completed so as to clearly establish the extent of the search actually performed. Where lack of unity has been found, item 3 of the first sheet and Box III of the search report is to be completed, irrespective of whether an invitation to pay additional search fees has issued. Also, where lack of unity is found and certain claims are found unsearchable then item 2 and item 3 of the first sheet and Box II and III of the search report is to be completed, irrespective of whether an invitation to pay additional search fee has issued. See 1.3.8.5 Box IV Unity of Invention, in regard to the completion of the ISO in respect of lack of unity. [Rule 43.7]

The search report must indicate the separate inventions present in the claims, whether additional search fees were requested and paid, and which claims were searched. It should also indicate whether any additional search fees were accompanied by a protest.

See Annex F for examples of search reports for the situation where unity of invention is lacking.


1.1.4.13 Time for Completing the Search Report

The international search report should, under normal circumstances, be established within 10 weeks (see Customer Service Charter Timeliness Guidelines for apology time limits) of receipt of the search copy by the ISA but in all cases within 3 months from the receipt of the search copy or 9 months from the priority date, whichever time limit expires later.

If additional search fees are paid, the PCT Unit will update the CSC Due Date to reflect 10 weeks from the date of payment. However, if the updated date goes beyond the Final Date for Action Type, then the CSC date will be updated to reflect 5 days before the Final Date for Action Type. If the updated date does not go beyond the Final Date for Action Type, then the 10 weeks date will be used. This will allow the PCT Unit enough time to dispatch the ISR/ISO (see 1.2 PCT Application Fee Processing > Response to the Invitation to Pay Additional Fees in the COG Manual). The final date for establishing the report should be strictly adhered to regardless of the need to conduct additional searches pursuant to the applicant paying additional search fees. [Rule 42.1]


1.1.4.14 Reported Decisions



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The following reported decisions from the European Patent Office (EPO) may offer some guidance when considering issues of unity of invention or in explanations needed in an invitation to pay additional search fees:

Copolycarbonates/BAYER OJ EPO 8/1982, 306

No lack of unity where new chemical end products, processes for their preparation, and new intermediates for these end products are technically interconnected and are integrated into a single overall inventive concept by being oriented toward the end products.

Benzyl Esters/BAYER OJ EPO 7/1983, 274

No lack of unity between new low-molecular end products and new low-molecular intermediates if the groups of intermediates prepared and orientated toward the end products are technically closely inter-connected with the end products by the incorporation of an essential structural element into the end products.

Insulating Powder/MINNESOTA OJ EPO 6/1988, 211; [1988] 5 EPOR 329

Unity between a claim to a mixture, and a claim to one essential component of that mixture or a narrowly defined version thereof.

Caterpillar Tractor Co v Comm Pats 231 USPQ 591

Interpretation of (former) PCT Rule 13.2(ii) and "specifically designed". Relevant now to paragraph 10.12 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/1) at 1.9 PCT Articles, Regs and Guidelines et al.

Heat Exchanger/SCHICK OJ EPO 2/1987, 63; [1994] EPOR 437

Not sufficient for the invitation to list the inventions contained in the claims if the applicant cannot infer from the list alone that the application does not relate to a single inventive concept.

Lithium Salts/MUCKTER OJ EPO 2/1987, 67; [1987] EPOR 176

Invitation is not legally effective unless reasons are given to substantiate lack of unity.

Thromboxane Antagonists/NRDC OJ EPO 10/1987, 459; [1988] 1 EPOR 34

Reasons must be communicated to the applicant in the invitation. It is not sufficient if reasons could be found in official files only.

Fuel Products/LUBRIZOL OJ EPO 5/1988, 182; [1988] 5 EPOR 327

Procedure where protest not filed at the ISA and additional fee not paid within time limits.

Fibre Fleece OJ EPO 4/1993, 225; [1993] EPOR 515



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Listing a plurality of subject matters will be sufficient substantiation only in those exceptional cases where it is immediately clear from the list that the application does not relate to a single inventive concept. Where this is not the case, in order to be legally effective, an invitation must contain clear reasoning, based on the problem-solution approach, behind the finding that a technical connection or interaction does not exist. The problem set out in the description at issue was to improve a washing process in a simple way, and this was solved by adding a fibre fleece which acts as a dirt trap and/or as a means for measuring out detergent. The requirement of a single inventive concept was fulfilled.

Cervical Punch/WISAP OJ EPO 4/1994, 239; IIC Vol 25 No.6/1994, 906

Lack of unity a posteriori if the subject-matters of independent claims including their effects have no inventive common feature in the parts of the claims that differ from the closest prior art.

Teeth Whitening/UNILEVER OJ EPO 12/1997, 552; [1997] EPOR 502

The claims define a Markush grouping of organic peroxy acids. The unifying features between the alternatives in the compounds claimed are that they contain an organic peroxy acid functional group and have teeth whitening activity. A search revealed documents describing teeth whitening compositions comprising an organic peroxy acid belonging to the first group of compounds claimed. Hence, there are no special technical features linking the alternatives in the Markush claim and lack of unity was found a posteriori.

Artificial Hip Joint/DRAENERT OJ EPO 8/1991, 438; [1991] EPOR 516

In order to issue an invitation to pay an additional search fee on the basis of lack of unity, the search examiner must demonstrate that, given the general knowledge of the person skilled in the art (a priori) or the state of the art - as revealed by the search - relating to the subject-matter first defined in the claims (a posteriori), the substance of the single general inventive concept can evidently contribute nothing to the inventive step.

Where the inventive step is based chiefly on the discovery of an unrecognised problem, if the common problem, that is the effects to be achieved, was itself already known or could be recognised as generally desirable (a mere desideratum) or obvious, there would be no inventive merit in formulating the problem.

Also, if the common structural features are to be found only in the prior art portions of the claim (eg. as in two part form claims), and if these known features do not help to solve the problem of the combined whole, this may also indicate lack of unity.

Lack of unity was found in the application viewed either from the position of 'desired effects' or alternatively from considering the structural features of the independent claims.

Herbicides/HOECHST OJ EPO 8/1993, 514; [1994] EPOR 226



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Lack of unity a posteriori found. Claim 1 included at least 13 completely independent groups or classes of compounds. The common aspects of these compounds, a compound A with other herbicides, was not new. The compounds did not possess a single general inventive concept. Also, the Protest Board had no reason to doubt the judgement of the ISA with regard to the further searches required and the number of additional fees needed.

Zeolite suspensions/HENKEL OJ EPO 12/1994, 939; [1995] EPOR 251. (At IPE stage)

From the description the problem of stabilising aqueous suspensions using non-ionic surfactants was already known and had been solved many times. The asserted unifying link of a common inventive concept was thereby nullified. The claims proposed four further solutions to the problem which, because of the differences in structure between the proposed surfactant groups, are not based on a common principle. They were not based on the same general inventive concept. The Protest Board believed that in view of the technical link between three of the methods, which were connected by the close structural relation between the surfactants, these could be examined together for one fee.

Pigments/MERCK OJ EPO 2/1996, 73; [1996] EPOR 499 (At IPE stage)

From the disclosure in the application the term "matrix" in claim 1 is to be considered in the sense of a functional feature when compared to the prior art. Held that none of the documents cited described a matrix in the sense of the invention so clearly that the objection of lack of novelty could be raised without further explanation. An objection of lack of unity a posteriori required further explanation on the basis of a problem to be defined against the cited prior art and including the claimed solutions.

Percarbonate/NN OJ EPO 4/2000, 186; [2000] EPOR 515 (At IPE stage)

There were 4 independent claims to either a process for manufacturing sodium percarbonate (PCS) or to PCS characterised by certain properties. The Protest Board noted that a manufacturing process and its product may not be regarded as lacking unity simply by virtue of the fact that the process is not restricted to the manufacture of the claimed product. In referring to a previous decision, the Board also said that when comparing features in claims which may possibly lack unity or which are suspected of lacking unity, reference should be made to the description when investigating the effects to be attributed to the individual features of a claim. Only then can a decision be taken as to whether, on the basis of "corresponding" technical features, there is a technical relationship among the inventions. The Board was not convinced, given the explanation by the IPEA, that the claims lacked unity a posteriori.

Glossary

OJ EPO - Official Journal of the European Patent Office

EPOR - European Patent Office Reports

1.1.4.15 Other Decisions from the EPO


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IIC - International Review of Industrial Property and Copyright Law


1.1.4.15 Other Decisions from the EPO

Viewing Assembly - Case W0038/90

The Protest Board found that three independent claims represented three concepts to overcome three distinct problems with the prior art given in the specification. The concepts had nothing in common and so the claims referred to different specific technical features without any relationship with respect to each other - there was no single general concept linking the different inventions.

The Board noted that a sole common link between the claims was that the respective features all contribute to the realisation of the same device, namely a viewing assembly for a door. However they said this "common pre-characterising feature is confined to indicate the designation of the invention, as part of the prior art; it is not, however, a specific feature interacting with the remaining characterising features and thereby contributing to the various inventions and their effects." They thus rejected this sole link as irrelevant for possible inventive contribution over the prior art, and concluded lack of unity a priori.

Chlorination process - Case W0009/93

The problem to be solved by the processes of Claims 1 to 18 was to improve a known chlorination process. Claim 19 was to compounds intended to solve the different technical problem of providing monomers or intermediates therefor. The intermediate compounds produced according to claims 1 to 9 were known from a US Patent as was the second reaction step in claims 10 to 18. The Protest Board noted that the fact the reaction step was part of the prior art destroyed the link between the contributions over the prior art made by the process of claims 1 to 9 and the compounds of claim 19. The Board also noted the group of inventions did not relate to a common technical problem or to one single technical concept behind solutions to different problems. There was lack of unity a posteriori.

Further guidance on unity of invention issues may be gained by reference to the "Case Law of the Boards of Appeal" of the EPO which can be found at their website, which can be accessed through the Examiners workbench.

1.1.5 Abstract and Title

International - International Searching Patent Manual of Practice & Procedure Modified Date: 01 May 2019

1.1.5.1 Abstract

1.1.5.1 Abstract


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Where the international application lacks a title and/or abstract, the PCT Unit, or the relevant RO (e.g. NZ), should find this in their routine check and notify the applicant accordingly, allowing one month from the mailing date of the notification for a reply. The RO should also notify the ISA that an invitation has been sent. [Rule 37.1, Rule 38.1, PCT/GL/ISPE/8 at para 15.34]

WIPO guidelines for the preparation of abstracts are available at the WIPO internet site.

The adequacy of applicant's abstract and selected figure needs to be considered. [PCT/GL/ISPE/8 at para 15.38, para 16.33 et seq, Rule 8, Rule 8.1(a), Rule 8.3]

Because of practical difficulties experienced by the IB with publication, examiners when assessing or drafting abstracts, should have particular regard to the following:

• it is important that the abstract be as concise as the disclosure permits and that it preferably should not exceed 150 words.

Note: The abstract must provide a summary of the technical information about the disclosure as contained in the description, claims and drawings. It should be drafted so as to serve as an efficient scanning tool for searching purposes in the art.

• phrases should not be used which can be implied, such as, "This disclosure concerns", "The invention defined by this disclosure" and "This invention relates to".

• only one figure should be selected unless this would lead to inadequate disclosure. The inclusion of more than two figures should not be considered except in extreme circumstances where necessary information cannot be otherwise conveyed. Where none of the figures is considered useful for the understanding of the invention (even where the applicant has suggested a figure), then no figure should be selected. [Rule 8.2(b)]

• abstracts may be incomprehensible if the numerals on the selected figure(s) do not correspond with those in the text.

• an absence of reference numerals of the figures must be accepted as the search examiner has no mechanism to initiate their provision.

Where an abstract has not been filed with the international application the examiner is not required to draft the abstract, except as in the next paragraph. This prevents time being wasted on preparation of an abstract for an international application that may ultimately be withdrawn.

The examiner is required to draft the abstract where:

• PCT unit has notified the applicant to rectify the deficiency but the applicant failed to respond within the time limit.

1.1.5.1 Abstract


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• no abstract has been filed and PCT Unit or relevant RO has omitted to invite the applicant to rectify the deficiency. The examiner should report the oversight to the PCT Unit which shall either immediately notify the applicant and allow one month for a reply or notify the relevant RO who will notify the applicant. If this one month time limit falls outside the period allowed for the search report to be established, the examiner does not notify PCT Unit but instead drafts the abstract themself. [Rule 26.1, Rule 28.1]

• the abstract filed either with the international application or within the time limit under Rule 26.2 does not comply with Rule 8.1(a)-(c) [Rule 8, Rule 26.2]. It is office practice that the examiner is not required to draft a new abstract when reference signs (or parentheses around reference signs) have been omitted from the filed abstract. [Rule 8.1(d)]

It is the office practice that the examiner drafts the abstract although Article 14(1)(b) and the PCT Guideline 16.39 appear to be contradictory in this matter.

The review of the abstract should be conducted in a way that does not increase the elapsed time for completion of the search. This review should be completed in parallel with other steps in the process.

The applicant can only comment on the abstract prepared by the examiner after it has been established in the ISR (see search report form PCT/ISA/210, first sheet, item 5, second option at Annex B ). This is the only invitation to comment issued to the applicant. It occurs when the originally filed abstract does not comply with Rule 8, and the examiner must prepare a more appropriate abstract. In this event the examiner establishes an appropriate abstract and where appropriate submits it for supervision. [PCT/GL/ISPE/8 at para 16.36]

After completing the ISR using form PCT/ISA/210 (Annexes B and C show completed examples) and the ISO (see Completing ISO, IPEO and IPRPII Forms), the search examiner, where appropriate, will submit the report to the person responsible for supervision. See Search Report and Notification Form Completion for final examiner and PCT Unit processing.

The applicant is allowed one month from the date of mailing of the report to respond to the examiner's abstract in the report. [Rule 38.3 PCT/GL/ISPE/8 at para 16.37]

Once the one month (and five days extra time to permit forwarding in case filing is at a sub-office) allowed for comment by the applicant has expired without the applicant commenting, the report including the abstract prepared by this Authority shall be deemed to be established.

If the applicant does comment, the PCT Unit will refer the eCase file, including comment, to the originating section for search examiner consideration. [PCT/GL/ISPE/8 at para 16.38]

The search examiner should consider the comments received from the applicant and, in consultation with a senior examiner, decide whether the abstract requires amendment. If this

1.1.5.2 Title


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Authority does amend the abstract previously established it will notify the IB and the applicant using form PCT/ISA/205. Annex I shows an example of how the search examiner will complete form 205. The PCT unit will despatch copies to both parties on the same date. [Rule 38.3, Ad. Inst. 515, PCT/GL/ISPE/8 at para 16.39]

It is not necessary for the examiner to reply to the applicant's comment even if adverse.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 01 May 2019 Modified Date: 03 July 2017

1.1.5.2 Title

The search examiner considers the adequacy of the title. An inadequate title may be too vague eg. "Process" or include redundant phrases such as "Improvements in ..". [Rule 4.3, Rule 37.2, Rule 44.2, PCT/GL/ISPE/5 at para 16.44 et seq]

The search examiner is required to draft a title where [PCT/GL/ISPE/5 at para 16.46]:

• the applicant has not responded to the invitation from PCT Unit or relevant RO to provide a title within the time allowed

• no title was filed and PCT Unit or relevant RO omitted to invite the applicant to rectify the deficiency

• the title filed is deficient.

The search examiner is not required to gain the approval of the applicant for the title and the establishment of the title by the examiner is by suitable completion of the search report form (see check box 4 of the first sheet of Annex C) [PCT/GL/ISPE/5 at para 16.47]

International - International Searching Patent Manual of Practice & Procedure Modified Date: 04 October 2016

1.1.6 Subjects to be Excluded from the Search

PCT Article 17(2)(a)

If the International Searching Authority considers

i. that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or



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ii. that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out,

the said Authority shall so declare and shall notify the applicant and the International Bureau that no international search report will be established.

The regulation referred to in PCT Art 17(2)(a)(i) is PCT Rule 39.1. Therefore the first requirement for a declaration to be issued is that the subject matter must be as defined in PCT Rule 39.1.

PCT Rule 39.1 Definition

No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:

i. scientific and mathematical theories,

ii. plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,

iii. schemes, rules or methods of doing business, performing purely mental acts or playing games,

iv. methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,

v. mere presentations of information,

vi. computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.

Even though PCT Rule 39.1 defines the subject matter an ISA is not required to search, ISA/AU will nevertheless search such subject matter if it is searched under the Australian national grant procedures—see Annex B of the Agreement below.

In such cases, there may instances where the substance of the claimed invention is such that there is a high likelihood of patentability issues arising in national prosecution. In these instances, a comment should be provided in Box VIII of the ISO (for example, see PERPs T60-T61). It is noted however that such comments are only appropriate when neither the claims nor the entire description, from which an amendment to the claims is possible, contain material that is considered patent eligible under Australian law.

Agreement with WIPO (IB)



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Agreement between the Government of Australia and the International Bureau of the World Intellectual Property Organization in relation to the functioning of the Australian Patent Office as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty (as in force from September 1, 2008)* can be accessed at:

http://www.wipo.int/export/sites/www/pct/en/texts/agreements/ag_au.pdf

Annex B Subject Matter Not Excluded from Search or Examination

The subject matter set forth in Rule 39.1 or 67.1 which, under Article 4 of the Agreement, is not excluded from search or examination, is the subject matter which is searched or examined under Australian national grant procedure.

Effect of Annex B of the Agreement with WIPO (IB)

As far as ISA/AU is concerned, the "excluded subject matter" must be defined under PCT Rule 39.1 and must be such that it will not be searched or examined under Australian national grant procedures. Further information about PCT Rule 39.1 is provided in Chapter 9 of the International Search and Preliminary Examination (ISPE) Guidelines issued by WIPO. Further information about the subject matter not searched or examined under the Australian national grant procedures is provided in Part 2.9 Patentable Subject Matter.

Discussion and confirmation

Where the examiner considers that any of the claims of an international application are directed to the matter defined in PCT Rule 39.1 and would not be searched under national grant procedures (Part 2.9 of the MPP), then this must be discussed with a senior examiner and be confirmed by the supervising examiner. The procedure then differs depending upon whether the subject matter of the entire international application is "excluded subject matter" (and therefore no search will be carried out) or whether a search report will be established in relation to the international application.

Where a declaration Article 17(2)(a)(i) is issued …

1.1.7.1.1 PCT Guideline References and Flow Chart


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If it is decided the international application is directed to "excluded subject matter" and that no search is to be carried out,

• The examiner will complete form PCT/ISA/203 (Declaration of Non-Establishment of International Search Report, see Annex D).

• The examiner will submit the completed form and case file for supervision by the supervising examiner.

• The supervising examiner is the "Authorised Officer" for this declaration.

• The relevant Assistant General Manager must be notified by the supervising examiner before the declaration is despatched.

• A partial refund of $1500 of the search fee in accordance with the guidelines in Annex S must also be actioned. The form used for this is PCT/ISA/213 (Notification for Refund of Search Fee) even though this form does not refer to the situation where a declaration under PCT Art 17(2)(a)(i) has been issued. The wording “the international application ……search.” in Item 2 of the above form may be amended to read “all of the claims relate to excluded subject matter and so no international search can be conducted.”

• An ISO must also always be completed and despatched with the declaration.

Where a declaration under PCT Article 17(2)(a)(i) is not issued …

If it is decided that it is not appropriate to issue a declaration under PCT Art 17(2)(a)(i), a search must be performed in relation to the subject matter that is not "excluded subject matter". The usual procedures for the ISR and ISO are followed in this case.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 04 October 2016

1.1.7 Claim Interpretation, Broad Claims, PCT Article 5 and 6

1.1.7.1 Claim Interpretation According to the PCT Guidelines





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The PCT guidelines contain 3 aspects of claim interpretation which need to be considered when construing the claims:

1. Interpretation of terms and phrases in a claim which is addressed in paragraphs 5.20 and in the annex at paragraphs A5.20[1] and A5.20[2]

2. Form and Content of Claims (independent, dependent, method claims, product claims) which is addressed in paragraphs 5.04-5.19

3. Interpretation of particular types of claims (use, open and closed, means-plus function, product by process) which is addressed in paragraphs 5.21-5.28

Aspects 2 and 3 are self explanatory as detailed in the PCT GL. A synopsis of the various forms and types of claims along with the catch phrases of the paragraphs are shown in the flow chart below. Examiners should consider their construction of claims keeping in view the relevant paragraphs in Chapter 5 of the PCT GL.

Claims Interpretation Flowchart



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1.1.7.1.2 Overview of the Hierarchy


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1.1.7.1.2 Overview of the Hierarchy

The PCT GL stipulates a hierarchy by which terms or phrases are to be interpreted (paragraph 5.20):

i. If there is a special meaning (by explicit definition or otherwise, which equates to “dictionary definition”) use that meaning.

ii. If there is no special meaning, use the ordinary meaning (as understood in the technology by the person skilled in the art).

iii. If there is no ordinary meaning, use the everyday meaning (non-technical meaning).

Where there is a special meaning, then that meaning is given to the term or phrase. Where there is no special meaning, the ordinary meaning is used to understand the term or phrase. Where there is no special meaning and no ordinary meaning, the everyday meaning is used to interpret the term or phrase.

An underlying principle in claim interpretation relates to the person skilled in the art; terms and phrases in a claim are read by the person skilled in the relevant art, taking into account the priority date (see PCT GL 5.32 2nd sentence).

The PCT GL hierarchy is similar to claim construction in national examination where the plain meaning (everyday meaning) is used to construe terms, except where there is a well-recognised meaning in the art (ordinary meaning) or the meaning has a dictionary or explicit meaning in the application (special meaning). The principal difference between the PCT GL and construction in national examination is that the PCT GL does not permit any discretion as to the interpretation of the words with respect to the intent of the invention. See 2.11.2.2 Rules of Construction for further information about construction of claims in national examination.


1.1.7.1.3 Special Meaning, Ordinary Meaning, Everyday Meaning

Special Meaning

The special meaning of a particular term or phrase is that which the specification defines explicitly (or otherwise). The special meaning is similar to the Dictionary Principle in national examination. Explicit definition of a term is that provided in a dictionary portion of the specification. However, there may be instances where a term is defined outside of the dictionary portion of the specification which would also be considered as the special meaning. It should be noted that non-limiting definitions (open definitions) do not constitute a special meaning and in such cases the ordinary meaning would be invoked.

1.1.7.1.3 Special Meaning, Ordinary Meaning, Everyday Meaning


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Examiners, in consultation with the 3 person search strategy team, should use their professional judgement in determining whether the special meaning places any limitations upon the claims.

Ordinary Meaning

The ordinary meaning of a particular term or phrase is that meaning which the person skilled in the art, when reading a claim, would attribute to the terms and phrases of that claim in the context of the particular art. Therefore, for any terms or phrases which have well recognised meanings within the particular art, those recognized meanings are used to understand the scope of the claim. However, where there is a special meaning different to the ordinary meaning, the special meaning is used to interpret the claim.

Everyday Meaning

Terms not explicitly defined by a special meaning, and that have no ordinary meaning, are interpreted by using their everyday meaning. The everyday meaning is the non-technical meaning of the term or phrase. It should be noted that not all terms have an everyday meaning because there are technical terms that have no corollary in English. However, because of the hierarchical approach, where there is an ordinary meaning to a term it would not be necessary to consider the everyday meaning.

Examples

The following examples demonstrate the differences between special, ordinary and everyday meaning for particular words or phrases.

Example 1

Term: ‘hook’

Technology: Fishing

Special Meaning: Fish hook for catching fish

Ordinary Meaning : Fish hook, not restricted to fish but encompassing any hook used for fishing purposes

Everyday Meaning: fastening hook, crane hook, warehouse hook, fish hook

1.1.7.1.4 Closed and Open Definitions and Implications for Interpretation


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Example 2

Term: ‘milk’

Technology: dairy processing

Special Meaning: milk in which there is between 0-5% fat content

Ordinary Meaning: Cows milk, including full cream, light, skim

Everyday Meaning: Cows milk, including full cream, light, skim, UHT milk, soy milk, rice milk, coconut milk, plant milk, evaporated milk, dried milk, goat’s milk, sheep’s milk, whale milk

Example 3

Term: ‘alkyl substituent’

Technology: organic chemistry

Special Meaning: substituent which is comprised of carbon and hydrogen, being saturated; being straight chain or branched, containing up to 6 carbon atoms and being substituted by halogen, hydroxy and amino groups

Ordinary Meaning: substituent which is comprised of carbon and hydrogen, being saturated and straight chain, potentially substituted, containing up to 12 carbon atoms

Everyday Meaning: a group obtained by removing a hydrogen atom from an alkane (a saturated hydrocarbon with the general formula CnH(2n+2). [This was the meaning taken from the dictionary and while the term has no non-technical meaning it was considered that for this example a definition from a dictionary is an appropriate everyday meaning].

Example 4

Term: ‘blue’

Technology: dyes/photo printer

Special Meaning: as defined by specific RBG ranges within the description

Ordinary Meaning: the colour that outside of the technology is purple (technology specific)

Everyday Meaning: the colour blue of varying shades (‘cyan’ corresponds to blue shades in the technology)




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The situation may arise where a specification includes a definition for a particular term/phrase but that definition is not limiting. For example, the claim is to a fish hook and the definition of fish hook is “a hook especially designed to catch trout” - this is a closed definition. In contrast, if the definition of fish hook is “a hook especially designed to catch underwater creatures including but not limited to trout”, then this is an open definition. Where a special meaning has an open definition and is therefore non-limiting, the ordinary meaning in the art is also invoked according to the hierarchy. In this situation, an explanation should be included to indicate why the ordinary meaning was also invoked.

The situation may arise where the specification includes a special meaning for a particular term/phrase which is closed but the examples or figures include matter outside the scope of that definition. The special meaning is still to be used to interpret the scope of the claim, as it would otherwise be regarded as importing gloss from the examples if a different interpretation was given.


1.1.7.1.5 Implications of the Hierarchy on Searching

For further information about searching broad claims and inventive step searching see 1.1.8.4 Search Considerations and 4.1.4.2 Search Strategy Considerations..

When the hierarchy system is used, the interpretation of terms/phrases can indicate to the searcher how to formulate a search in order to find a novelty citation. If a novelty citation is not found, then the next step in the hierarchy can be pursued to obtain a citation with a lesser relevance.

For example, where there is a special meaning for a particular term/phrase, the search could be restricted to that special meaning. Where a citation is found which falls within the scope of the special meaning further searching may not be necessary as the citation would be regarded as a novelty citation. However, where a citation is not found, further searching beyond the special meaning could be considered. This would be an inventive step search and would usually incorporate the ordinary meaning or everyday meaning of particular terms or phrases. The same approach to locating a novelty citation will be applied if the specification and claims do not have special meanings for particular terms or phrases, i.e. the initial search uses the ordinary meaning, or if that is not present, then the everyday meaning.

However, it is recognized that the search strategy could take into account more than the special meaning of a particular term. For example, where the ordinary meaning is broader than the special meaning, the search strategy may also employ the broader meaning.

1.1.7.1.6 PCT GL Appendix Paragraphs 5.20[1] and 5.20[2]


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The search strategy, as determined by the 3 person team, will often incorporate two or three of the Meanings depending on the art and the number of citations identified in preliminary informal searches. However, when considering the citations for novelty and inventive step, the interpretation as derived under the PCT GL must be used.

Where a particular interpretation has been made which has influenced the search in a particular direction, this interpretation needs to be explained and justified in relation to the PCT GL. For example, where the special meaning is different to or contradicts the ordinary meaning in the art, and the search strategy has taken both the special meaning and the ordinary meaning into account for searching purposes, this needs to be explained in Box V of the ISO/IPEO/IPRPII when explaining the relevance or otherwise of citations. In this situation a clarity observation may also be appropriate in Box VIII of the ISO/IPEO/IPRPII.

Example 1:

The special meaning is different to that commonly understood in the technology.

An observation should be made similar to “The special meaning given by definition at page X of the specification for ‘term/phrase’ differs to what is commonly understood in the art. In the art, this term is understood to mean […].In accordance with the PCT Guidelines, the claims have been interpreted using the special meaning. This discrepancy potentially generates ambiguity in the specification and consequently, the meaning in the art has also been considered for the purposes of searching and in formulating this opinion.”

Example 2:

The special meaning contradicts that commonly understood in the technology.

An observation should be made similar to “The special meaning given by definition at page X of the specification for ‘term/phrase’ contradicts that which is commonly understood in the art. In the art, this term is understood to mean […].In accordance with the PCT Guidelines, the claims have been interpreted using the special meaning. However, this discrepancy generates ambiguity in the specification and consequently, the meaning in the art has also been considered for the purposes of searching and in formulating this opinion.”


1.1.7.1.6 PCT GL Appendix Paragraphs 5.20[1] and 5.20[2]

The practice outlined in Paragraph A5.20[1] stipulates that the special meaning within the description can be used to interpret terms/phrases within the claim. This paragraph also emphasizes that importing gloss from the description to change the claim from the special meaning is not permitted. Where interpretation is required, for example, if there is no special meaning or the special meaning is non-limiting, then the description and the drawings and the ordinary meaning is used to interpret the claims.

1.1.7.1.7 Interpretation of Citations - Inherency


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The practice outlined in Paragraph A5.20[2] requires that the claims, where there is a special meaning for terms/phrases and that meaning is not found within the claims, be brought into alignment by amendment via inserting the special meaning into the claim. Furthermore, this practice does allow some non-literal interpretation of the claims in the sense that the interpretation of the claim should attempt to make technical sense of the claim, which, where required, may involve a departure from a strict literal sense.

The practice to be followed is found in A5.20[1] as this more closely aligns with national examination and the reports issued by the major ISAs, with the exception of the US which appears to follow PCT GL A5.20[2].


1.1.7.1.7 Interpretation of Citations - Inherency

For further information regarding Novelty see Ch 12 of the PCT GL, for Inventive Step see Ch 13 of the PCT GL and in particular for inherency see 12.04 of the PCT GL.

For a citation to anticipate the claims it must disclose every element or step of the invention, explicitly or inherently to the person skilled in the art. Where a feature is not explicitly disclosed, the citation must be interpreted to ascertain if the feature is implicitly or inherently disclosed.

An inherent or implicit disclosure can occur because the missing feature is something that is readily apparent to the person skilled in the art and they would read that information as being implicit. In this case, no documentary evidence would be required to support the feature being inherent because there is no question as to it being otherwise. Alternatively, the missing feature can also be implicit in the sense that when the teaching of the prior art is carried out, the inevitable result of that teaching falls within the scope of the claims. This can occur when the missing feature is a property of a particular substance, the property existing due to the nature or structure of the substance and cannot be removed from the substance (see example 2 below).

In establishing a lack of novelty involving inherency, the inherent or implicit feature may not be established by probabilities or possibilities. The feature must inevitably result from the teaching of the document. Where the result is uncertain, or requires justification, the citation should be considered for inventive step rather than novelty. Similarly, well-known equivalents not disclosed in the prior art are not implicit or inherent but should be considered in relation to inventive step.

Example 1:

Where the elastic properties of rubber are relied upon in a document that does not explicitly state that rubber is an “elastic material,” a claim to an “elastic material” is anticipated because the rubber taught in the prior art inherently is an “elastic material”.

1.1.7.2.1 Introduction


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Example 2:

The claim is to “An anti-cancer aspirin.”, while the citation discloses aspirin that may be used for pain relief but does not disclose aspirin’s anti-cancer activity.

The claim is interpreted as being to the compound aspirin per se, wherein the compound has a particular property (anti-cancer). The new property does not change the chemical compound, rather, the new property is inherent in the compound because of the compound’s physiochemical attributes. The compound, with this property, existed prior to the discovery of the property and therefore the property is inherent to the compound. Claims to the compound per se would not be novel because any person in preparing aspirin from the citation would inevitably produce the compound with the new (but unknown) property. However, claims to a method for treating cancer using aspirin would be novel.

1.1.7.2 Broad Claims


1.1.7.2.1 Introduction

In addition to excluded subject matter, an ISA is not required to conduct a search where the description, claims or drawings fail to comply with the prescribed requirements of the PCT, such as clarity or descriptive support, to the extent that a meaningful search cannot be carried out. The term “meaningful search” means a search that within reason is complete enough to determine whether the claimed invention complies with the substantive requirements, that is, the novelty, inventive step, and industrial applicability requirements, and/or the sufficiency, support and clarity requirements of Articles 5 and 6.

In most cases the description, claims and drawings will be understood sufficiently for at least a limited search to be conducted.

A finding of “no meaningful search” should be limited to exceptional situations in which no search at all is possible for a particular claim, for example, where the description, the claims, or the drawings are totally unclear.

These examples relate to exceptional situations where, due to non-compliance of the application with the prescribed requirements, all or some of the claims cannot be meaningfully searched at all. The following is an example.

Claim 1: “My invention is worth a million dollars.”

Claim 1 is the only claim in the application. The description does not provide sufficient information about the invention to determine the subject matter to which the claim might reasonably be expected to be directed after it had been amended.

Since no claim can be meaningfully searched at all, since no likely amendment can be determined to overcome the non-compliance, the International Searching Authority makes a

1.1.7.2.2 Types of Broad Claims


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declaration in accordance with Article 17(2)(a)(ii) (Box II of the International Search Report, Box III of the Opinion). When only some of the claims cannot be meaningfully searched at all, however, an indication is made in the international search report in accordance with Article 17(2)(b) to this effect whereas the other claims will be searched as usual.

For cases where a meaningful search of all or some of the claims is possible, for example by taking into account a likely amendment to overcome the non-compliance, then such a search must be carried out along the procedural lines set out at 1.1.8.4 Search Considerations (see also 4.1.4.2.3 Broad Claims, 1.1.7.2.2 Types of Broad Claims, and 1.1.19 Annex H). This is the case for broad claims which may or may not be considered to be fully supported by the description.

The search should be performed recognizing that the non-compliance may have to be taken into account for determining the extent of the search. In other words, it is appropriate to limit the search to matter that is supported by the description and is directed to the inventive concept and to which the claims would be reasonably expected to be directed after amendment, taking into account the description and drawings and the relevant common general knowledge. [Article 6, Article 15(3), Rule 33.3, PCT/GL/ISPE/7 at Chapter 9; see also 1.1.8.4 Search Considerations.]

In practice this may mean that only supported claims are searched or that the claims are searched to the extent to which they are supported, with additional limitations drawn from the description of the inventive concept and embodiments as appropriate. Examiners should however be cautious of unduly limiting the scope of the search by focussing only on particular preferred embodiments. Reference should be made to the examples in Chapter 9 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/7).

The extent of the search should be clearly indicated by specifying the keywords, sequences or sub-structures used in the ISR under “B. FIELDS SEARCHED” (see 1.1.12.4 Fields Searched). Additional comment under Box VIII in the ISO as to the extent of the search is unnecessary, unless such comment is made in the context of comments on Articles 5/6 (sufficiency, clarity, descriptive support).



Broad claims can be classified into four types:

Type I – Many claims in one application

Most patents typically have 10 to 20 claims, but sometimes applications are filed that have many hundreds, or even thousands, of claims. A large number of claims mean that the search and examination is inevitably compromised.

Type II – Many possibilities in one claim



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Examples of this include Markush claims and some cases in the biotechnology field.

Mainly used in chemistry, a Markush claim or structure is a claim with multiple functionally equivalent chemical entities allowed in one or more parts of the compound.

It is not possible to fully search these types of claims. If the examiner concentrates on the worked examples or even generalized structures based upon the examples, large tracts of claimed matter will go unsearched. These problems are only partially alleviated by electronic structure searching tools because in many cases the, the search engine will be unable to cope with the generality of the structure the examiner wishes to search.

Further information on Markush claims is provided in 1.1.19 Annex AA.

Type III – Desideratum claims

These are claims which set out a desired result without explaining in the claim how the result is achieved. Such claims are often speculative and not commensurate with the contribution the inventor has made to the art.

Type IV – Some parametric claims

Where a parameter is used to define a product, it can be a problem comparing the product with the prior art either because the parameter used is unusual or unusual in the context of the characteristic being measured. Occasionally an applicant will devise an entirely new parameter and use it to define the invention. The product may be known but not described in the prior art in terms of the new parameter. It makes comparisons with the prior art difficult.

Also a claim may define many parameters and/or large ranges for the parameters defined. Claims of this type are not unlike Markush claims in the large numbers of possibilities included in the scope of the claim.

It is not possible to properly search or examine claims of these four types, and with claims of types II to IV searching inevitably only covers a small proportion of the huge scope claimed.

See also 1.1.7.2.1 Introduction, 1.1.19 Annex H, 1.1.8.4 Search Considerations and 4.1.4.2.3 Broad Claims.

Examples of search strategies for each of the claim types

Type I Claim: Many claims in the one application

Example a) An application contains 480 claims, of which 38 are independent. There is no clear distinction between the independent claims because of overlapping scope. There are so many claims, and they are drafted in such a way that they are not in compliance with



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Article 6 and Rule 6. However, there is a reasonable basis in the description, for example from a particular passage, that clearly indicates which subject matter might be expected to be claimed.

The search should be based on the subject matter that would be expected to be claimed. In the written opinion, the claims should be objected to on the non-prior art grounds of lack of compliance with Article 6 and Rule 6. The International Searching Authority should also include in the objection on non-compliance with Article 6 and Rule 6 an indication to what degree these objections have been taken into account for the purposes of determining the extent of the search, and this extent should be indicated as precisely as possible, for example by a brief written description of the searched subject matter, where possible citing a particular passage.

Example b) An application contains 160 claims, of which 10 claims are independent.

The scope of various independent claims is clear and they can be grouped into 4 separate inventions.

1. Compounds of formula Ia or pharmaceutically acceptable derivative thereof, pharmaceutical compositions comprising these compounds, methods of treating or preventing disorders characterised by impaired protein trafficking comprising the administration of these compounds and method of producing a protein comprising culturing a cell in the presence of these compounds.

2. Compounds of formula IIa or pharmaceutically acceptable derivative thereof, pharmaceutical compositions comprising these compounds, methods of treating or preventing disorders characterised by impaired protein trafficking comprising the administration of these compounds and method of producing a protein comprising culturing a cell in the presence of these compounds.

3. A method of treating or preventing disorders characterised by impaired protein trafficking comprising the administration of doxorubicin, cycloheximide, hygromycin, novobiocin, aureobasidin or tunicamycin.

4. Methods of identifying compounds that rescue or increase impaired endoplasmic reticulum-mediated transport, enhance protein secretion, rescue impaired protein trafficking, rescue impaired Rab-mediated protein trafficking, inhibit the expression of protein defined therein or inhibit the activity of proteins defined therein.

Search Strategy

A unity objection is taken, and the search based on the invention(s) for which fees have been paid. If no additional fees are paid, the first invention should be searched.

A search of the inventive concept is carried out by performing a structure search for formula Ia, and combining the search results with keywords like protein trafficking, endoplasmic reticulum, lysosomal storage disorder, Huntington’s disease, Ta-Sachs, Hypercholesterolemia, cystic-fibrosis, diabetes etc. If this search provides no citations, results of the broader search for the compounds of formula Ia per se should be considered.



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Type II claim: Many Possibilities

Example a) Markush Claims

Claim 1:

Compounds of Formula (VII), defined as follows:

Background:

The variables in the formula are defined such that a conservative estimate of the number of compounds falling within the scope of this Markush claim was calculated as approximately 27 x 1025. However, the description contains only six examples of compounds of formula (VII). A search covering the entire scope of claim 1 produces hundreds of citations (too many to cite).

Search Strategy:

The initial search should focus on the six exemplary compounds of formula (VII) disclosed in the description. If any of these example compounds are disclosed in the prior art, then the strongest argument for lack of novelty of the claim will be based on the citations pertaining to these compounds, since they comprise the core of the alleged invention. The broader aspect of the search should attempt to cover the entire scope of the Markush claim. In the event that this produces such a large number of citations that it is not practicable to cite them all, the examiner should exercise professional judgement in selecting citations upon which to base novelty objections, with a view to restricting the scope of the claimed subject matter as much as possible, whilst placing the applicant on notice (in Box VIII as described below) that the list of citations provided is not an exhaustive one.

In the event that it is not possible to search the entire scope of the Markush claim (due to technical constraints associated with substructure searching), the broader aspect of the



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search should at least attempt to cover all the general compound classes represented by the examples.

Example b) Reach through claims

Claim 1

An isolated TKO receptor.

Claim 2

An isolated compound which modulates the expression or activity of the TKO receptor.

Background

Claim 1 is directed to a receptor the inventors have identified and isolated and ascribed a function to. Claim 2 is a reach through claim, so called because it is attempting to reach through and claim future developments such as drugs which modulate the receptor. It might be the receptor is involved in pain perception or associated with a particular disease and the potential market for the drugs is speculated as being quite lucrative. Claim 2 is also very broad as it is not just limited to anything which interacts with the receptor or its gene but also includes compounds that interact with something else to trigger a cascade of events causing the activity or expression of the receptor to be modulated.

Search Strategy

The search should be limited to the activity of the compound and a comment made about full description under Article 5 (see below). On some occasions the specification will give a list of known compounds which will modulate the activity or expression of the receptor, which become the citations. No broader search is possible in this case, and this should be indicated at Box VIII.

Type III claim: Desideratum.

Example a)

Claim 1:

An optical fibre adapted in a manner such that it guides an optical signal substantially only in one non-degenerate mode, wherein an electro-magnetic field carrying the optical signal is symmetric with respect to rotation about the fibre axis.

Background:

This claim defines a solution to a well known problem in the art – to have an optical fibre that guides an optical signal substantially only in one non-degenerate mode. The existing optical



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fibres all have a common disadvantage – they guide light substantially in one degenerate mode.

Search Strategy:

Claim 1 is speculative in nature as it defines the desired result without explaining how the result is achieved. However, it is not unusual that a speculatively claimed result may be genuinely novel and inventive, and the ‘claiming by result’ is an attempt to acquire the broadest possible monopoly in a potentially important new field.

The search strategy should be designed to include multiple ‘sub-strategies’ in order to address drafting deficiencies related to the speculative nature of claim 1. The key objective should be to retrieve the closest prior art to the inventive concept focusing on the disclosed embodiments. Multiple sub-strategies should cover different technical aspects of how the relevant possible modes for light propagation in optical fibres can be described:

• the technical names of modes (single-mode, non-degenerate mode, TE01, TEM01, etc.);

• the spatial/geometric characteristics of the corresponding electro-magnetic field (symmetric, annular, ring, etc.);

• the relevant physical parameters of the optical fibre (refractive index, materials for core/cladding, structure of core/cladding, etc.).

If many highly relevant documents are found (indicating that the right technical area has been comprehensively covered), however, none of them discloses the features of claim 1, and the examiner is confident that, in light of the prior art retrieved, claim 1 is most likely to be novel and inventive, then no additional search effort is required. The speculative nature of claim 1 should be then addressed in the Written Opinion using Articles 5 and/or 6.

It should be noted that, when dealing with speculative claims in general, the examiner should also exercise professional judgement in assessing whether a different (broader) interpretation of the defined features is possible (this is not the case in the above example as all features of claim 1 have a well defined meaning in the art).

Example b)

Claim 1:

A cloned non-human mammal.

Claim 2:

A method of cloning a non-human mammal comprising:

i. fusing a non-human mammalian differentiated cell with an unactivated, enucleated metaphase II arrested oocyte to reconstruct an embryo;



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ii. maintaining the reconstructed embryo without activation for sufficient time to reprogram the nucleus;

iii. activating the reconstructed embryo;

iv. transferring said reconstructed embryo to a non-human host mammal such that the reconstructed embryo develops to term.

Claim 1 is directed to a desired result without defining how the result is achieved. It is claiming the result of a cloned non-human mammal when achieved by any possible method. Such claims may be speculative, particularly when it is a result desirable in the art that others have been attempting to achieve. The contribution the invention makes to the art usually lies in the method by which the result is achieved, claim 2, rather than the result itself.

Search Strategy

The initial search strategy should focus on the methods by which the result is achieved. If any relevant citations are found against the methods, the result will also be rendered not novel. If no relevant citations are found, the search should be extended to methods of achieving the result known to the 3 person team or another technical expert, or to the result itself.

Example c)

Claim 1

An isolated protein that catalyzes the biosynthesis of piperitol and/or sesamin.

Claim 2

The protein of claim 1 comprising the amino acid sequence of SEQ ID NO: 3.

Background

Biosynthesis of chemical compounds can involve a number of steps between a precursor compound and the final compound with different enzymes catalysing the various steps. Claim 1 includes any enzyme in the sesamin biosynthetic pathway, and given its broadest possible scope could include enzymes involved in the biosynthesis of the precursor for the seasmin biosynthetic pathway. What the inventors have identified and isolated is the final enzyme in the pathway which has SEQ ID NO: 3, and which catalyses two reactions: the conversion of pinoresinol to piperitol and the conversion of piperitol to sesamin.

Search Strategy

The initial search would focus on the specific enzyme. As there is a sequence a sequence search would be performed, but a keyword search could also be performed to determine if the enzyme had previously been isolated but not sequenced. If nothing was found an expanded search would focus on the whole biosynthetic pathway.



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Example d)

Claim 1

An air intake for a vehicle being constructed of at least two pieces of metallic material, each of which is formed so as to have a pair of matching edge shapes, the two pieces having such a shape as to define an air passageway there between when joined along their matching edges.

Background:

The claim in its broadest form defines a piece of metallic pipe (made of two pieces) or two pipes joined together providing the desired result of defining an air passageway.

However the invention as described is directed to an air intake made of top and bottom metallic parts where their edges are fused, the intake having specific shape, so it can be fitted over the car’s radiator.

Search Strategy:

Claim 1 is speculative in nature as it is unduly wide.

In cases of broad claims as above it can be expected that prior art could be found quickly that undermines the novelty of the claim, therefore the search for the inventive concept should concentrate on the preferred embodiment (within the scope of the claim) including specific shape of the air intake (ie. the subject matter that the claims might reasonably be directed after they have been amended [PCT/GL/ISPE/7 at para 15.21]). If citations are not found, the search strategy could be designed to quickly locate a document undermining the novelty of the claim by consulting internet web pages of Espace, USPTO or Google Patent Search (the search should not be restricted to specific examples).

Type IV claim: Parametric.

Example a)

Claim 1

A solid detergent composition comprising from 8 to 60 wt % of a surfactant system and having a Grand Compatibility Index of at least 0.5.

Background:

The Grand Compatibility Index parameter is unknown in the prior art. It turns out to be a function of a large number of other parameters, many of which are not quoted in the prior art. Several pages of the application are taken up with an explanation of an elaborate testing procedure, using highly specialised laboratory equipment, which will, when followed,



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compute the grand compatibility Index of a given detergent. There are five worked examples of detergent compositions satisfying the parameter in the description.

Search Strategy:

Since it is impossible to search the Grand Compatibility Index parameter as it is unknown in the prior art, the initial search should focus on the disclosed example compositions. If any of the example compositions are disclosed in the prior art, it can be argued that these would inherently possess the feature of the Grand Compatibility Index parameter. In the absence of any prior art pertaining to the examples themselves, the broader aspect of the search should attempt to cover anything that would prima facie possess the feature of the Grand Compatibility Index parameter, such as a search of compounds falling within the same class as those of the examples. To illustrate; if the examples contain compounds that are aryl sulphonates and tetra-alkyl ammonium salts, then the search should at least cover these compound classes in an attempt to uncover compositions that at least satisfy the other identifiable limitations imposed by the claim (such as comprising from 8 to 60 wt % of the composition). In an effort to render the claim more readily searchable, an objection may also be raised under Article 5 of the PCT, as discussed below.

Example b)

Claim 1

An interferometer for writing Bragg gratings comprising:

• means for splitting a light beam into two coherent beams, and

• an optical circuit for bringing the coherent beams to interference for writing the Bragg grating in a photosensitive material through induced refractive index changes in the material,

wherein an angle between the coherent beams after the means for splitting is less than 10o.

Background:

All features of claim 1, except for an angle being less than 10o, represent routine technical arrangements in the art. All existing interferometers for writing Bragg gratings include means for splitting a light beam into coherent beams and means for bringing the coherent beams to interference. There is always some angle between the coherent beams after splitting, but its value is not usually specified in technical disclosures in the art (at least, not in the abstract), though the drawings may provide a qualitative indication on how small or large the angle is.

Search Strategy:

Since it is highly unlikely that a specific value of the angle will be disclosed in any abstract of prior art documents, a broad search strategy should be adopted with a set of standard keywords in the field of writing Bragg gratings [like (grating)(s)(write, fabricate, produce,



53

form, manufacture); interfere; etc.], followed with angle, split in an attempt to retrieve abstracts where the angle/splitting is mentioned. Then the most relevant documents should be identified by viewing a drawing included in every abstract (almost always in this technical field) and selecting those where the angle between the coherent beams appears to be small, or variable, or somewhat important to the invention. For the documents selected in this way, there will be a reasonable probability that an exact value of the angle will be disclosed somewhere in the full specification, so the examiner will be able to perform the novelty/inventive step determination for claim 1 objectively.

Example c)

Claim 1

An electrohydrodynamic device for generating an aerosol, said device incorporating a composition for creating an aerosol, said composition comprising:

a. a pharmaceutically active ingredient; and

b. a carrier material in which said pharmaceutically active ingredient is dissolved, emulsified, or suspended,

said pharmaceutically active ingredient and said carrier material being selected such that the composition has a predetermined range of properties comprising a surface tension of about 10 to 72 milliNewtons/meter, an electrical resistivity of about 10 to 100,000 ohm-meters, and an relative permittivity of about 5 to 500.

Background:

Electrohydrodynamic aerosol generators are well in known in the art of pharmaceutical inhalers. Electrohydrodynamic generators require the carrier to be liquid. Water has a surface tension of 72 mN/metre and there are few (if any) liquids with a surface tension less than 10 mN/metre. The relative permittivities (dielectric constant) of some liquids typically used as pharmaceutical carriers are: ethanol 24.3; glycol 42.2; water 80.4 and glycerol 42.5. Materials at the low end of the range claimed are typically solids (rubber 7) and materials at the high end are also typically solids (strontium titanate 310). Therefore liquids with relative permittivities of 5 and 500 as claimed can be considered to be rare. Also the claimed range of resistivity encompasses a very wide range of materials. Therefore the claim effectively includes all possible carrier materials.

Search Strategy:

Since it is impossible to search all possible pharmaceutical carrier materials, the initial search should focus on the disclosed example compositions and further restricted to the context of inhalers.

Ethanol is present as a major component in all of the exemplified compositions, therefore the initial search should focus on electrohydrodynamic inhalers using ethanol as the carrier. If

1.1.7.3 PCT Articles 5 and 6


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no citations result, the broader search would focus on electrohydrodynamic inhalers in general.



The provisions of Articles 5 and 6 are equivalent to the requirements of subsections 40(2)(a) and 40(3) following the Raising the Bar Act. In general, the guidance provided in part 2.11 of the manual for those provisions may be followed when considering issues arising under Articles 5 and 6. However, only serious deficiencies are to be raised in international examination.

PCT Article 5

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

PCT Article 5 focuses on the disclosure of the specification and considers its sufficiency. However, because it is necessary that the invention is enabled across the full scope of the claims the breadth of the claims is also a consideration as to whether the description is sufficient.

The PCT Guidelines state that the disclosure of the claimed invention is considered sufficiently clear and complete if it provides information which is sufficient to allow the invention to be carried out by a person skilled in the art as of the international filing date, without undue experimentation. [PCT GL 5.45]

Although a reasonable amount of trial and error is permissible, a person skilled in the art must, on the basis of the disclosure of the claimed invention and the general knowledge, be able to carry out the invention without undue experimentation.

In determining whether undue experimentation is needed to carry out the claimed invention, a well founded objection must consider each of the following points:

• the breadth of the claims;

• the nature of the invention;

• the general knowledge of a person skilled in the art;

• the level of predictability in the art;

• the amount of direction provided in the application, including references to prior art; and



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• the amount of experimentation required to carry out the claimed invention on the basis of the disclosure.

Any objection made under Article 5 of the PCT should include at least a brief consideration of each of these points with particular emphasis being given to the last point.

PCT Article 6

The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.

PCT Article 6 focuses on the claims and considers clarity and conciseness, and whether or not they are supported.

[The issues of clarity and conciseness are not considered here – See also 1.1.7.4 Claims Lacking Clarity and Multitudinous Claims].

The PCT Guidelines state that there must be a basis in the description for the subject matter of every claim and that the scope of the claims must not be broader than is justified by the description and drawings [PCT GL 5.43]. This means that the claims must be enabled (fully supported) across their entire scope and consistent with the description.

(a) The claims will extend beyond the disclosure and will therefore not be fully supported under Article 6 if there are well-founded reasons for believing that the person skilled in the art possessing the common general knowledge in the art, would be unable, on the basis of the information given in the body of the specification as filed, to extend the particular teaching to the whole field claimed by using routine methods of experimentation or analysis [PCT GL 5.44]. For example, this will apply where the claimed invention cannot be performed over its full scope because a feature is missing from the claim that is necessary for the function or operation of the claimed invention [PCT GL 5.55].

An objection under Article 6 on this ground must set out well-founded reasons as to why the claimed invention is not enabled over the full scope of the claim. If the examiner is aware of a published document that supports their reasoning, they should refer to this document in their objection.

(b) The claims will be inconsistent with the description and will therefore not be fully supported under Article 6 if there are significant inconsistencies between the claims and the description [PCT GL 5.29]. For example, the description may state, or may imply, that a certain technical feature not mentioned in the claims is essential to the performance of the invention.

Any objection under Article 6 on this ground must set out reasons as to why, after reading the specification, there are serious inconsistencies between the claims and the description.

1.1.7.4 Claims Lacking Clarity and Multitudinous Claims


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In response to such an objection, the claims may be amended to include the necessary feature. However, if the applicant can show convincingly by way of response that it would be clear to a person skilled in the art that the description was incorrect in suggesting that the feature in question was necessary to enable the claimed invention to be carried out, the objection will be overcome.

Documents used in support of an Article 6 objection may be listed in the International Search Report under “Documents Considered to Be Relevant”. Documents that are also used for Novelty or Inventive Step purposes should be given X and Y classifications in the usual way. Documents that are used only in support of an Article 6 objection should be given an L classification if their publication dates are before the priority date and a T classification if their publication dates are after the priority date.

Note: PCT Articles 5 and 6 should be separately considered. Note, however, that there is significant overlap between the issues considered under Articles 5 and 6. Separate objections under each of Article 5 and Article 6 may be taken in a single case. Alternatively, the examiner may take one or other of these objections, depending on which is most suitable to the facts of each case.

Examples of objections under Articles 5 and 6 are provided in 1.3.10 Annex J.


1.1.7.4 Claims Lacking Clarity and Multitudinous Claims

Where clarity issues create significant doubt as to the scope of the claims, and consequently of the required search strategy, they should be raised in a similar manner as a lack of descriptive support as discussed above at 1.1.7.3 PCT Articles 5 and 6. Where the claims include alternatives, some of which are unclear realisations of the invention, and it is impossible to determine what may reasonably expected to be claimed, the search may be limited to only clear realisations of the invention. See para 9.37 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/5)[Art. 6, Art. 15(3), Rule 6.1(a), PCT/GL/ISPE/5 at Chapter 5, Chapter 9 para 9.36 and Chapter 15]

The procedure for broad claims should also be applied to claims found to lack conciseness, for example, multitudinous claims with overlapping scope. What constitutes an unreasonable number of claims or undue complexity depends on the circumstances of the case but the principle to be applied is that the claims should not be unduly multiplied or duplicative and should not "obscure the definition of the claimed invention in a maze of confusion". The example in para 9.25 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/1) indicates that 480 claims (38 independent) is clearly unreasonable.

1.1.7.5 Procedure for Informal Communication with the Applicant


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PCT/GL/ISPE/5 at Chapter 9, para 9.25 to para 9.30 discusses that where there is significant additional work associated with large and complex claim sets, i.e. in excess of approximately 100-150 (depending on circumstances), and particularly where there is no clear distinction between independent claims because of overlapping scope, it is appropriate to restrict the search to subject matter expected to be claimed and to raise the matter in the written opinion. Where unity of invention is also an issue, the communication with the applicant under MPP 1.1.7.5 Procedures for Informal Communication with the Applicant, and 1.1.4.9 Issuing the Invitation to Pay Additional Search Fees, should be combined.


1.1.7.5 Procedure for Informal Communication with the Applicant

Generally the applicant should be given the opportunity to comment on the proposed search strategy in the circumstances of a restricted search due to broad claims and/or article 5/6 issues. This is an opportunity to correct any misinterpretations or to focus attention on the true nature of the inventive concept. It is not a mechanism to negotiate the search strategy and responsibility for determining the search strategy and any findings in relation to descriptive support remains with the examiner and 3 person search strategy team. The procedure to be followed is set out below.

Where in consultation with the search strategy team, the examiner considers that because of a clear non-compliance with the requirements of descriptive support, clarity or other requirements of the PCT, a meaningful search is not possible in relation to some or all of the claims, the following procedure should be followed:

• The examiner, in consultation with the search strategy team, prepares a draft notification using PCT form 224 (“Communication in cases for which no other form is applicable”) briefly setting out the finding in relation to non-compliance with the PCT, the intention to limit the search to subject matter that may reasonably be searched noting the principles identified in 1.1.7.4 Claims Lacking Clarity and Multitudinous Claims above and inviting comments within 7 days of dispatch.

Annex D.2 shows the level of detail required (using PERP code T1).

• Examiners should telephone the attorney/applicant to advise that they intend to limit the search and that an informal invitation to comment will be sent to them. If the attorney wishes to immediately discuss the matter in detail the examiner should summarise the issues and note the comments made and may amend the notification accordingly or determine that no further opportunity to comment is required. A file note should be made in relation to all communications with the applicant or attorney.

• The finalised informal invitation to comment is sent to the PCT Unit by clicking SUBMIT and dispatched to the attorney by the PCT unit

1.1.8.1 Introduction


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• If a response is not received within 7 days, examiners are to proceed with a search based on the limited subject matter identified. Extensions will generally not be granted. However, if the applicant or attorney clearly requires further time to comment, for example, because the applicant is uncontactable and the attorney is unable to proceed without instruction, a further period may be allowed but the total period for comment should not exceed 14 days unless in exceptional circumstances

• Where comments are received, the examiner and search strategy team will reconsider their finding on non-compliance and the proposed search strategy and proceed accordingly. The examiner is not required to respond to any comments provided or to further justify the search carried out. However Box VIII of the ISO should indicate the nature and reason for the limitation on the search and opinion.

1.1.8 Search Strategy



Initial Considerations

In the course of classifying the international application, the search examiner will prepare a search statement that takes into account the correct field in which to conduct the international search and will determine the relevant non-patent literature that should be searched. [PCT/GL/ISPE/6 at para 15.41].

• Generally speaking, the search statement should be prepared in conjunction with a three person team. However, the search examiner should check if an indication of an earlier search having been carried out is included in Box VII on the International Application Request form PCT/RO/101 at the last sheet. Usually this will have been checked by the PCT Unit or relevant overseas RO (e.g. NZ) during initial processing and a copy of the earlier search if carried out placed on the case file. [Rule 4.11, Rule 16.3, Rule 41.1]. If an earlier search is found to be adequate, it is not necessary to form a three person team – see para 4.2 of 1.1.19 Annex S. If an earlier search has been carried out, and it was carried out by an examiner other than the search examiner, where practicable the case should be transferred to that other examiner to do the search.

• The search examiner should check INTESS for the availability of any PCT third party observations – see 1.3.5.3 PCT Third Party Observations

• The search examiner should check whether the international application cites any admitted prior art. If so then a full text copy should be obtained, unless it is clear from the descriptive text that it is of no interest. This full text copy may be of



59

assistance during the search strategy discussion and/or may be a potential citation for the ISR. [PCT/GL/ISPE/6 at para 15.37]

Where a refund may be due, then upon completion of the ISR (see 1.1.12 Search Report and Notification Form Completion) the refund form is sent for approval to the supervising examiner.

See 1.1.12.8 Refund Due, and para 6.4 of Annex S.

• Where the international application claims the priority of one or more earlier applications which the earlier search was done by the Australian Patent Office, even where the applicant has not requested to take such results into account, the examiner must, to the extent possible, take those results into account in establishing the international search report and written opinion (Rule 41.2(a), Rule 23bis(2), PCT/GL/ISPE/6 at para 15.17B). The PCT Unit will forward the earlier application's search report and citations to the search examiner.

• Where the international application claims the priority of one or more earlier applications which the earlier search was done by a foreign patent office, any earlier search report completed on the application will have been sent to AU at the same time as the search copy. The search examiner may take those results into account in establishing the international search report and written opinion (Rule 41.2(b), Rule 23bis(2), PCT/GL/ISPE/6 at para 15.17C). The search examiner should attempt to access the cited documents by the usual techniques, namely from the internet or by requesting the library to obtain the document(s). If this proves unsuccessful, then the applicant should be invited to provide the document(s) in question, except in the case when the earlier search was carried out by the USPTO and the applicant has marked the checkbox in Box VII of the Request, requesting the receiving Office to prepare and transmit copies of the citations to the ISA. In this case the PCT unit should be requested to ask the USPTO to supply the document(s). The invitation should be made by the examiner on PCT form PCT/ISA/238 and forwarded to PCT Unit for despatch.

A careful comparison of present and earlier search requirements could produce major efficiencies in search strategy e.g. limitation to an update of the earlier search or extension to IPC or US classification areas. Note also 1.1.12 Search Report and Notification Form Completion.

Note that in many cases, an applicant/inventor name search will also be required. It is the responsibility of the three person team to determine whether, for the search strategy under development, one of the identified exceptions, applies (see 4.1.3.6 Applicant/Inventor Name Searching and 1.1.8.3 Area of Search)

1.1.8.2 The Three Person Team (3PT)


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Recording Search Details

All details of the search must be recorded on the Search Information Statement (SIS), which must then be placed on the correspondence file. This includes details of all patent and non-patent literature searches, as well as searches conducted on the internet. [PCT/GL/ISPE/6 at para 15.62, 16.58, 16.59]. The names of the members of the three person team must also be recorded. See 4.1 Annex F for information on when a SIS must be completed. Further information on the SIS and instructions for its use are provided at 4.1.6 Recording the Search Details and 4.1 Annex D Search Information Statement.


1.1.8.2 The Three Person Team (3PT)

In conducting original searches of national and international applications, the search examiner allocated the case is to convene a three person team to formulate a search strategy for discovering relevant prior art documents. This team approach seeks to focus the efforts in formulating a search strategy such that the search strategy adopted is the one which is carried out in the most economical way while ensuring a high probability of finding relevant prior art, and takes account of the preferred embodiments ("inventive concept"), not just the broadest claim. The search strategy adopted should make as great a use as possible of any earlier search results.

See 4.1.4.1 Three Person Team (3PT) and subsections therein for more information on the composition and role of the three person team.

Note that in many cases, an applicant/inventor name search will also be required. It is the responsibility of the three person team to determine whether, for the search strategy under development, one of the identified exceptions, applies (see 4.1.3.6 Applicant/Inventor Name Searching).


1.1.8.3 Area of Search

The field of the international search must receive careful consideration, wherein the search examiner should ensure that the most relevant search area is searched first. Some insight may be gained on what area of the IPC should be searched by consulting patent documents. Examiners should however keep in mind that foreign offices may differ from this Office in the interpretation of the IPC. Non-patent literature is considered by the three person team and should be searched where non-patent literature is a common source of relevant citations – see 1.1.10 Non Patent Literature and 4.1.4.3.3 Non Patent Literature.

The discussion of the appropriateness of the search strategy may include, if this has not already been done, setting up sample searches of the AU documents or further sample

1.1.8.4 Search Considerations


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searches using ESP@CE or USPTO before determining the most effective international search.

Frequently applicants and /or inventors have worked for some time in the field to which an application relates and have similar or even parallel applications that may either be undergoing search and examination or awaiting it. It is important that such documents are located as early as possible in the searching process to allow simultaneous search and examination where this is appropriate, to assist in drafting a suitable search strategy or at least to identify what will undoubtedly be closely related art.

In general applicant/inventor name searches should be considered for all PCT applications. However, the specific circumstances of individual cases must be assessed to confirm that the search is required.

Consequently, a search of the applicant and/or inventor name is mandatory, except where, in the judgement of the three person team, either:

1. such a search would serve no useful purpose, OR (e.g. where the application clearly identifies cross-references to other cases of the applicant’s own)

2. to conduct the search would be non-viable – (e.g. a very active applicant or very common name e.g. Smith)

The recording of these searches in the SIS should comply with the guidance provided in 4.1 Annex D.

See 4.1.3.6 Applicant/Inventor Name Searching for a full discussion of the requirements of these searches

Note: Similar guidance applies to certain national applications – see also 4.1 Searching.

AU designs will not normally be searched. However, experience has shown search strategy/truncation benefits in a very limited number of arts e.g. toys and games, or where an invention is characterised solely by pattern, shape or profile and a simple illustration can serve as a citation, e.g. tyre treading, tools, extrusion profiles. Experienced Designs staff must not be routinely consulted, but can readily give a preliminary indication of the likely potential in such a search in these limited arts.



Claim Interpretation



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Terms and phrases in a claim should be interpreted in accordance with the PCT guidelines. 1.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6 provides guidance on this issue.

Searching Broad Claims

When searching broad claims the following steps should generally be followed:

i. An initial search of the general inventive concept with reference to the examples and description should be carried out (see PCT/GL/ISPE/7 para 15.22). The search should not be restricted to specific examples unless no other search is possible.

ii. If no relevant citations are retrieved, further search(es) of embodiments within the scope of the claims should be performed. The examiner, in consultation with the 3 person team or another technical expert, should attempt to identify potentially relevant subject matter that can be accessed quickly.

iii. If additional searching fails to quickly retrieve any relevant prior art, the 3 person team should assess whether further searching is useful.

iv. Any additional inventive step searches are then considered by the 3 person team (as outlined below).

Note: The initial meeting of the 3 person team should attempt to anticipate alternative search strategies in order to deal with all aspects of the search at the one time. Inventive step searching should only be considered where the initial search fails to uncover any citations disclosing one or more features of a claim.

An outline of the process for searching broad claims is given in 1.1.19 Annex H.

See also 1.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6, 1.1.7.2.1 Introduction, 1.1.7.2.2 Types of Broad Claims, and 4.1.4.2.3 Broad Claims.

Determining Whether Claimed Features are Substantial, Common General Knowledge or Well Known in the Art

The examiner is required to search the substantial features as defined in the entire claim set, including both independent and dependent claims. Where it is determined that a feature is substantial or significant, then documentary evidence will be required in order to prove obviousness. Similarly citations should be provided to support an assertion that a feature is



63

common general knowledge, unless the feature is so well known in the art that documentary evidence is unnecessary.

The 3 person team should be involved in determining whether any feature within the claim set is so well known, insubstantial or trivial that documentary evidence is not required to prove obviousness. The principles of the following procedure should generally be followed:

i. The 3 person team should individually consider the claims and decide which features/claims may be regarded as so well known, insubstantial or trivial that no additional searching effort is required.

ii. The 3 person team should then convene to discuss their individual points of view and any findings regarding insubstantial features/claims. If there is general consensus that these features/claims are insubstantial, then the examiner should be able to demonstrate obviousness without the need for documentary evidence. Thus no specific search for these features/claims should be required where they are subsequently found to be novel. Note however that where the feature can be readily found in a text book or other document, then this source should be cited.

iii. Where there is no general consensus amongst the 3 person team regarding which features/claims are insubstantial, then the features/claims in question are considered to be substantial and therefore documentary evidence is required to prove obviousness.

For further guidance see also [PCT/GL/ISPE/7] at para 15.28, 15.55 and 15.61.

Inventive Step Searching

All initial searches should be constructed to cover both Novelty and Inventive Step. After conducting an initial search, an additional or ‘inventive step’ search should be undertaken for any claim/feature found to be novel and not disclosed in documents that can be combined for an Inventive Step argument. The principles that should be followed in devising the additional search are these:

i. The results of the initial search should be assessed in order to establish the closest prior art.

ii. The differences (if any) between this art and the novel claims/features should then be determined. An additional search is not required for differences/features deemed to be insubstantial in (ii) above.

iii. The examiner should then conduct an additional search in order to find documents that disclose these differences.

1.1.9 (reserved)


64

These documents would be used as Y category citations in combination with the closest prior art. The additional or inventive step search may involve searching the relevant databases using specific targeted keywords that relate to the different features, or may require reconvening of the 3 person team to determine a new search strategy.

See also 1.3.8.6.2 Inventive Step.

Searching Dependent Claims

All dependent claims that are considered to define substantial features should be searched in accordance with the procedures outlined above. When initially determining the search strategy, the 3 person team should additionally consider all substantial or significant features defined in the dependent claims, or those features that the application might reasonably be expected to be directed towards following amendment. Where the features defined in the dependent claims are considered to be insignificant, the search strategy may be formulated to exclude those features, to ensure that the search is targeted to the most relevant prior art.

Where a significant feature cannot be found in the prior art, the examiner, in consultation with the 3 person team, should use his or her professional judgement to determine whether continuing the search is warranted.

Where the examiner believes there are too many dependent claims (or too many additional features defined by those claims), the case should be discussed with the 3 person team in order to determine which claims, or groups of claims, should be searched in detail.

For further guidance see also [PCT/GL/ISPE/7] at para 15.25, 15.27, 15.28 and 15.31.

International - International Searching Patent Manual of Practice & Procedure


1.1.9 (reserved)

This topic is reserved for future use.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. International - International Searching

1.1.10. Non-Patent Literature


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Patent Manual of Practice & Procedure


1.1.10. Non-Patent Literature

On reaching an agreed search strategy (see MPP 1.1.8.1 Search Strategy Introduction) in cooperation with the other members of the search strategy team, the search examiner should conduct any non-patent literature search deemed necessary at the same time as the patent search is conducted. This is in line with expectations on search times.

The non-patent literature (agreed upon by the ISA's and listed in Annex A of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/1)) comprises periodicals specified in the list of periodicals established under PCT Rule 34.1(b)(iii) plus "Chemical Abstracts", where the publication date does not precede the date of the search by more than 5 years.

The NPL databases Pubchem, Medline, XPTK (database of recent traditional knowledge) and INSPEC provided by EPOQUE have documents relating to Chemistry, Biotechnology, traditional knowledge, Physics, Electronics etc. Consideration of the results of the search in these databases may require obtaining the full journal article. The journal article is obtained by an email request to the IP Australia Library.

TKDL (Traditional Knowledge Digital Library, India) database contains information on about 223000 medicinal formulations, some of them dating back many centuries. It can be accessed via URL: http://www.tkdl.res.in/. Please note that TKDL is not available through EPOQUE

Chemistry searches are conducted using the STN collection of non-patent literature databases. The non-patent literature databases include Chemical Abstracts (CA, CAPLUS), Medline, Biosis and FSTA. Results from the search are retrieved in the form of abstracts from STN. The full journal article on which the abstract is based, is obtained by an email request to the IP Australia Library. Occasionally the Chemical Abstract result will refer to the printed form of the Chemical Abstract abstract and this can also be ordered by an email request to the IP Australia Library.

Examiners should refer to authorised users of STN for assistance in constructing search strategies.

Biotechnology searches are conducted using the GenomeQuest collection of patent and non-patent literature databases. The non-patent literature databases include EMBL and NCBI. Consideration of the results of the search may require obtaining the full journal article. The journal article is obtained by an email request to the IP Australia Library.

1.1.11.1 Overview - Novelty / Inventive Step


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Examiners should refer to authorised users of GenomeQuest for assistance in constructing search strategies.

See also 4.1.4.3.3 for further guidance on NPL searching

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 14 June 2016

1.1.11 Search Procedure

International - International Searching Patent Manual of Practice & Procedure Modified Date: 03 July 20171

1.1.11.1 Overview - Novelty / Inventive Step

The objective of the international search is to find the prior art which is relevant for the purpose of determining whether the claimed invention to which the international application relates is new (novel) or involves an inventive step, and, if not, the extent to which the prior art anticipates the invention. [PCT/GL/ISPE/5 at para 15.01]

a. Newness, or novelty, under the PCT is substantially the same as Australian novelty except that the concept of "essential" and "inessential" features does not apply under the PCT. Thus, under the PCT, a document takes away the novelty of any claimed subject matter when every element or step is explicitly or inherently disclosed within the prior art defined in Rule 64.1 (see paragraph 12.01 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/5) ), including any features implicit to a person skilled in the art (see paragraph 12.01 of the Guidelines; also see paragraph 13.11 of the Guidelines for a definition of the "Person Skilled in the Art"). However, the prior art disclosure must be an enabling disclosure (see paragraph 12.02 of the Guidelines). In considering novelty (as distinct from inventive step) it is not permissible to combine separate items of prior art together (see paragraph 12.06 of the PCT International Search and Preliminary Examination Guidelines). However, if the document refers explicitly to another document to, for example, provide more detailed information on certain features, the teaching of this latter document may be regarded as incorporated into the relevant document, to the extent indicated in the primary document. Also, a dictionary or the like may be used to interpret special terms used in the document. However, it is not correct to interpret the teaching of the document such that well-known equivalents, which are not disclosed in the document, are included. This is a matter for obviousness. Novelty and obviousness are different criteria. Novelty does exist if there is a difference between the claimed invention and the prior art, and this difference, being implicitly suggested within the prior art, could not have been considered part of the common general knowledge at the time of publication

1.1.11.2 Inventive Step


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of the prior art (note, however that some authorities have a different approach on this - see the annex to Chapter 12 of the PCT International Search and Preliminary Examination Guidelines.

b. The test for obviousness or inventive step is whether, at the relevant date (usually the priority date of the claim) it would have been obvious to a person skilled in the art, with regard to the prior art found by the examiner and the art known by the examiner and this person at the time, to arrive at something falling within the scope of the claim(s) under consideration. The term "obvious" means "that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art". The following are the basic considerations that apply in determining inventive step/non-obviousness [PCT/GL/ISPE/5 at para 13.03]:

i. the claimed invention must be considered as a whole

ii. the references must be considered as a whole and the skilled person must be motivated or prompted into combining the teaching of the documents so as to arrive at the subject matter as claimed including consideration of a reasonable expectation or likelihood of success - see 2.5.2.5.6 Inventive Step Objections Involving a Combination of Documents, and

iii. the references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 03 July 2017 Modified Date: 14 June 2016

1.1.11.2 Inventive Step

In considering whether there is inventive step as distinct from novelty (see 1.1.11.1 Overview - Novelty / Inventive Step), it is permissible to combine the teachings of two or more prior art references, for example, different published patents, or several teachings contained in the same prior art reference, such as one particular book, but only where such combination would be obvious to the person skilled in the art. In determining whether it would be obvious to combine the teachings of two or more distinct documents, the examiner should have regard to the following [PCT/GL/ISPE/1 at para 13.12]:

i. whether the nature and content of the documents are such as to make it likely or unlikely that the person skilled in the art would combine them;

ii. whether the documents come from similar or neighboring technical fields and if not, whether the documents are reasonably pertinent to the particular problem with which the invention was concerned.

Therefore in searching for inventive step, it is necessary to search for documents, or parts of documents, that provide disclosures whose combination would be obvious to a person skilled in the art. The examiner must always consider each document in the search as part of a possible combination of documents which could be cited. A document cannot be

1.1.11.3 Searching Product by Process Claims


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eliminated from inventive step considerations as easily as it can be when considering novelty. See 1.1.2.4 Extent of Search.

Paragraph 13.13 of the PCT ISPE Guidelines specifies the practices of combining teachings for Inventive step considerations. In general the inventive step consideration under the PCT is very similar to the approach used in Australian National examination.

That is:

“It would normally be obvious to combine with other prior art documents a well-known text book or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art.”

For further information regarding inventive step issues related to international examination according to PCT Guidelines, see 1.3.8.6.2 Inventive Step.

See also

• 1.1.8.4 Search Considerations


1.1.11.3 Searching Product by Process Claims

When interpreting ‘product by process’ claims, the approach to be followed is given in Appendix A 5.26[1] of the PCT International Search and Preliminary Examination Guidelines. That is, a product is not rendered novel merely by the fact that it is produced by means of a new process.

Where an international application contains a product by process claim in relation to a known product, it will be necessary to provide a citation directed to the product per se. However, it may not be necessary to conduct an additional search in order to find a citation that anticipates the claim. Thus relevant documents may be found during the course of searching the process, or the application may contain relevant admitted prior art. Where an application contains a broad product by process claim that encompasses a wide range of compounds, the procedures outlined in 1.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6 should be followed. However, bearing in mind that the inventive concept lies in the process and not the product per se, the amount of time spent searching the product should be kept to a minimum.


1.1.11.4 Dates Searched

1.1.11.5 Conducting the Search


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The search is to be carried out among documents published prior to the international filing date (as distinct from the priority date), which "must be taken as the basic reference date for the search".

Note: For the purposes of the ISO the examiner must form a view as to validity of the claimed priority date and examine for novelty and inventive step on the basis of that valid priority date. An exception is that if the priority document is not yet available at the time the ISO is being prepared, then the priority date is to be assumed valid - see paragraph 17.29(b) of the PCT International Search and Preliminary Examination Guidelines). [PCT/GL/ISPE/5 at para 15.03]

Because innovation patents are published relatively quickly after filing, circumstances may arise where it is appropriate to cite an innovation patent as a "P,X" document in an international search on an international application which is a family member. Those circumstances will be when the publication date of the innovation patent is earlier than the international filing date of the international application.

It should be noted that there is no provision under the PCT for a search for "whole of contents" novelty as provided for under the Australian Patents Act 1990.


1.1.11.5 Conducting the Search

On reaching an agreed search strategy, in consultation with other search strategy team members, the search examiner will ordinarily immediately carry out any aspects of the search strategy where it is practicable to do so. These aspects of the search may include inter alia a USPTO, ESP@CE, EPOQUE, AU search (full or non-Convention) or a non-patent literature search (see 1.1.10 Non Patent Literature and 4.1.4.3.3 Non Patent Literature).

Note that in many cases, an applicant/inventor name search will also be required. It is the responsibility of the three person team to determine during the development of the search strategy, whether one of the identified exceptions, applies (see 4.1.3.6 Applicant/Inventor Name Searching).

The search strategy should be regularly reviewed during the search process given interim search results; see also 4.1.6 Conducting the Search.

Where some abstracts are in a foreign language and the search examiner requires assistance with that language, the examiner may use the services of a suitable examiner (see 1.1.16 Assistance with Foreign Languages and 1.10.5 Examiners with Foreign Language Capabilities) or may utilise an online translation tool.


1.1.11.6 Useful Techniques ("piggy back/forward" searching)


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1.1.11.6 Useful Techniques ("piggy back/forward" searching)

It is sometimes useful to peruse the related art (called piggy-backing/forwarding or threading or streaming) for an identified abstract that is clearly highly relevant and thereby locate other relevant documents at the abstract search stage. As such, piggy back/forward searching involves looking at the cited art (piggy back) or citing art (piggy forward) of a small number of highly relevant patent documents. This practice is especially useful for US, WO, EP and (some) GB abstracts, but should not be continued ad nauseam and should cease when less relevant documents are persistently located. This technique can also be used when only a few abstracts of relevance are identified. (see 1.1.19 Annex V – Internet searching 1)


1.1.11.7 Obtaining Full Copies

On completion of the search, the examiner retrieves the documents themselves directly from electronic sources such EPOQUE, “Get the Patent” etc. All the downloaded documents relating to the PCT application are to be stored in the respective International application folder on the V:\ Drive.

The examiner may review full copies of less clearly relevant abstracts electronically (if available). Where the search has revealed only A category abstracts, a minimal number of these should be obtained as full copies (or viewed electronically) for further consideration as possible citations in the report to indicate the current state of the art.

If a required document is in a foreign language, then the examiner should check for its English equivalents and use one of them (if available) in the search report.


1.1.11.8 (reserved)

This topic is reserved for future use


1.1.11.9 Considering and Culling the Documents

After obtaining the citations, the examiner should view the full specifications. The most relevant foreign and AU documents are cited in the report with English language documents being preferred over foreign language documents disclosing the same matter. The practice in 1.1.12.5 Documents Considered to be Relevant should be followed where the English language specification actually viewed is published after the filing date and an earlier published foreign language family member exists. (Language assistance is obtained as

1.1.11.10 Ending the Search


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outlined in 1.1.16 Assistance with Foreign Languages and 1.10.5 Examiners with Foreign Language Capabilities)

The copy of any foreign document cited is to be retained in the V:\ Drive. A copy of any AU citations must also be retained in the V:\ Drive. For further information on use of the V: Drive in examination, see 5.7.4 Guidelines for Using the V: Drive in Examination.

Where some or all full copies of non-patent references have not been received and only four weeks remain until the search report must be established, the examiner should make enquiries about those full copies, then proceed to establish the search report in the normal way on the basis of the material which is available, in consultation with a Senior Examiner.


1.1.11.10 Ending the Search

Reasons of economy dictate that the examiner use appropriate judgment to end the search when the probability of discovering further relevant prior art becomes very low in relation to the effort needed. The international search may also be stopped when one or more documents have been found clearly demonstrating lack of novelty in the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed, apart from features the application of which would not involve an inventive step and which are instantly and unquestionably demonstrable as being well known in the field under consideration such that documentary evidence seems to be unnecessary [PCT/GL/ISPE/1 at para 15.57]. However, the search should not be stopped if the document that has been found is from the same applicant/inventor and the filing date of that document is within 12 months of the filing date of the invention being searched (see also 4.1.5.2 Cessation of the Search).

Note that while no special search should be made for features that are so well-known that documentary evidence seems unnecessary; if, however, a handbook or other document showing that a feature is generally known can be found rapidly, it should be cited. [PCT/GL/ISPE/1 at para 15.24]

See also 1.1.8.4 Search Considerations


1.1.11.11 Categorising the Citations

Search examiners should, whenever practical, perform some level of culling or sorting of full copy documents prior to an in-depth categorising step in order that the documents of highest perceived relevance are considered for categorising first.

Generally a cull/sort would involve a skim of the documents taking only a few minutes for each document. This would identify a coarse rank of relevance of the documents (whether

1.1.11.12 Grouping the Claims


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possible X, Y or other category), and eliminate any document whose disclosure is fully embraced by another document.

The publication level (A, A1, A2, B, C etc) should be indicated alongside its number.

Any relevant foreign language document should be considered in the categorising step of the process and not culled from further consideration just because it is not in English.

Note that the objective of the international search is to discover relevant prior art for the purpose of assessing novelty and inventive step. Decisions on novelty and inventive step are the province of the designated Offices. Thus it is essential that the search identify relevant items of prior art for novelty and inventive step purposes. [PCT/GL/ISPE/5 at para 1.03 and 15.09]

Once a document is determined to be of solely A category relevance, no further analysis should be undertaken.

Hence in-depth analysis is only undertaken on documents determined to be of particular relevance for the purpose of assessing novelty and inventive step in accordance with the objective of the international search.

See also 1.1.12.5.2 Citation Category


1.1.11.12 Grouping the Claims

Dependent claims can be grouped together in a detailed discussion if they define the same feature or variations of a feature.

The same feature may be defined in claims dependent on different independent claims. For example independent claims to a method, system and apparatus frequently define the same features and have dependent claims defining the same features. Identifying claims with repeated features should occur at the beginning of work on the case as part of a thorough claim construction.

Variations of a feature are often present in a sequence of claims. For example where a range of values may be defined broadly, then more narrowly, then narrower still. To obtain a required level of detail in the most efficient manner, the focus needs to be on the narrowest claim. If the features of this claim are disclosed, then all the claims in the sequence will also be disclosed.

Multiple dependent claims

Where a feature of a multiple dependent claim is anticipated, these claims are considered to lack novelty or inventive step if any of the claims they are appended to lacks novelty and inventive step and the features added in the dependent claim does not introduce novelty or

1.1.12.1 Background Search Report and Notification Form Completion


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inventiveness. A discussion of all the possible combinations is considered to introduce unnecessary complexity to our reports and to be unduly time intensive. Such claims have the potential to be disallowed under Rule 6.4(a) of the PCT and represent a style of claim drafting rather than a genuine definition of the scope of an invention.

1.1.12 Search Report and Notification Form Completion

International - International Searching Patent Manual of Practice & Procedure Modified Date: 03 April 2018

1.1.12.1 Background Search Report and Notification Form Completion

Following completion of the search, the examiner will reconsider the Classification in the light of experience acquired during the search and will prepare the ISR (form PCT/ISA/210) - refer Annexes B and C, the Notification of Transmittal of the ISR (form PCT/ISA/220) - refer Annexes B1, B2 and B3 and the ISO (see International Examination). Once an examiner has completed the search, there should be no delay in completing the search report. [PCT/GL/ISPE/6 at para 16.08]

Once the ISR and ISO have been completed, they may be submitted for Quality Assurance within the examination section which should be given high priority.

The person responsible for the report must ensure that, under normal circumstances, all matters are completed in time to allow the report to be established within three months (see Customer Service Charter Timeliness Guidelines for apology time limits) from the receipt of the search copy, or nine months from the priority date, whichever time limit expires later.

When unforeseen circumstances arise, such as the search examiner being unexpectedly absent, or abstracts/citations not being delivered within the anticipated time frame, and this is likely to prevent the search and opinion being completed within its target time, counter measures should be adopted where practical. For example transferring the case to another examiner for completion should be contemplated.

Annex A includes a sample form.

See completed examples of search reports at Annexes B and C.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 03 April 2018 Modified Date: 25 February 2019

1.1.12.2 Applicant Details

1.1.12.2 Applicant Details


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Address for correspondence [Ad. Inst. 108]

PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file is created.

When an agent represents the applicant, the address for service is listed in Box IV of the PCT Request form.

For applicants processing their own applications, the address for service may be listed in Box II of the PCT Request form.

Note: • Check correspondence on file for any changes in the applicant or address for service. • Check that the captured data in the Intelledox report is correct and current.

Date of mailing

Leave this space blank.

PCT Unit fills this box when the report is dispatched.

Applicant's or agent's file reference [Ad. Inst. 109]

PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file is created. This data is pre-populated on the PCT Forms when using DocGen. Any subsequent change made by an attorney such as addition of initials etc is not required to be entered on the Forms by the examiner.

Note: If the file reference is significantly different from the original eg a totally different number then the new reference should be used, and the change be communicated to the PCT unit. The PCT Unit will inform IB of the change. Additions of initials at the end of the original file references are not considered a significant change.

International application number

When entering data using DocGen, the application number initially entered automatically appears in all relevant places in the notification and report forms after the template has been completed. This number is in the expanded format PCT/AU20xx/123456 which came into effect on 1 January 2004. The expanded format will occur for all PCT applications, even those which were filed before 1 January 2004. Note, however, that the number will continue to be stored on the mainframe in the abbreviated form PCT/AUxx/12345, even for applications filed from 1 January 2004.

1.1.12.3 General Details


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International filing date

The PCT Unit upon receipt of the international application assigns this date. This date is recorded on the PCT Request Form and on INTESS.

Applicant [Ad. Inst. 105]

PCT Unit captures this applicant data and when the examiner uses the Intelledox templates, and the application number is entered, it appears in the template and in the final document.

When there is more than one applicant indicated in the Request of a PCT application, only the first mentioned of these has to be indicated in the International Search Report. The other applicants, if any, are indicated by the words “et al” following the first applicant's name. The first mentioned applicant is indicated in Box II of the PCT Request form, a second applicant is listed in Box III, further applicants will be listed on the continuation sheet if there are more than two applicants.

Example (a) AMERICAN EXPLOSIVES INC. et al.

Example (b) SMITH, John Doe

Note: As shown above, company names are written in capital letters; for personal names the family name is given first in capital letters and the given names are in mixed case - this helps to identify the family name.



Notification of Transmittal of ISR and ISO

Establishment/Non-establishment of search report

Refer to 1.1.6 Subjects to be Excluded from the Search, e.g. scientific and mathematical theories, plant or animal varieties, schemes, rules or methods of doing business, or computer programs. When considering this issue, discussion with a senior examiner and confirmation with supervising examiner is required.

Non-establishment of report

Refer to Subjects to be Excluded from the Search, which indicates the course of action to be taken in this case: discussion with senior examiner and confirmation with supervising examiner.

Payment of fees under protest



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Refer to 1.1.4.11 Payment of Additional Search Fees Under Protest, which indicates the course of action to be taken in this case.

Authorized Officer

Where the search examiner is an authorized officer his or her name will appear on the search report.

Where the search examiner is not an authorized officer the name of the responsible examiner who will be supervising the report should be entered as the authorized officer.

First sheet of the ISR

Earliest priority date

This information is given in the PCT Request form (PCT/RO/101) in Box VI. This data is initially captured by the PCT Unit and automatically appears in the dialogue box when entering the application number in the ISA macro. However, the Examiner must check that the correct date has been captured.

Note: Inform the PCT Unit if an error in the priority date is found.

Total number of sheets

The first sheet of the ISR will indicate the total number of sheets in the report. This number is automatically calculated and entered on the front sheet.

“It is also accompanied by a copy of each prior art document cited in this report” box.


The PCT Unit is responsible for completing this box.

Translation of the international application furnished under Rule 23.1(b)

Where a translation of the international application is furnished under Rule 23.1(b), a copy of that translation and of the request, which together shall be considered to be the search copy under PCT Article 12(1), shall be transmitted by the receiving Office to the International Searching Authority, unless no search fee has been paid. In the latter case, a copy of said translation and of the request shall be transmitted promptly after payment of the search fee.

Rectifications of Obvious Mistakes

Where there is an indication on the file that the rectification of an obvious mistake (or “obvious error” where the rectification has occurred before 1 April 2007) has been



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authorized, the international report shall indicate this and the report should be established on the basis of this rectification. See 1.1.17 for information regarding obvious mistakes.

Nucleotide and/or amino acid sequence listings

The considerations for nucleotide and/or amino acid sequence listing may be found in 1.1.18.1 Nucleotide and/or Amino Acid Sequence Listings.

Note: A sequence listing is a separate part of the description that is presented in a specific format (Annex C of the Administrative Instructions under the PCT). Nucleotide or amino acid sequences that appear in the figures or drawings, or in the text of the description, do not constitute a sequence listing.

Where a nucleotide or amino acid sequence listing is provided and is used to conduct the search, examiners should mark the checkbox at item 1c of the front sheet of the ISR (item 1b of the front sheet of International Type Search Report) and complete item 1 and item 2 (if appropriate) of Box I.

Where a sequence listing is provided, but it is not used to conduct the search, the checkbox at item 1c of the front sheet of the ISR (item 1b of the front sheet of International Type Search Report) should be marked and items 1 and 2 of Box I left blank. Examiners should indicate under item 3 of Box I (Additional comments) that:

“There was a sequence listing originally filed but it was not used for the purposes of this search.”

Where sequences are present in the drawings or figures, or in the text of the description (but not in the form of a sequence listing), and these sequences are used to conduct the search, the checkbox at item 1c of the front sheet of the ISR (item 1b of the front sheet of International Type Search Report) should be marked and items 1 and 2 of Box I left blank. Examiners should indicate under item 3 of Box I that:

“A sequence listing was not filed, however the sequences depicted in (Figure 1, Table 3 etc.) were used for the purposes of this search.”

Certain claims found to be unsearchable

• Subjects to be excluded from the search. Refer to 1.1.6 Subjects to be Excluded from the Search

• Broad claims; multitudinous claims. See 1.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6

• Omnibus Claims [Rule 6.2(a)] see 1.3.8.8 Box VII Certain Defects for instructions on filling in the ISR and Annex O for example.



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Unity of invention

Refer to 1.1.4 .1 – 1.1.4.15 Unity of Invention

Title

Refer to 1.1.5.2 Title

Abstract

Refer to 1.1.5.1 Abstract

Drawings to be published

When indicating the Figure No. of the drawings, the Applicant's suggestion is found at Box IX of the International Application Request (PCT/RO/101).

Where none of the figures are considered useful for the understanding of the abstract (paragraph 4.2(c)), indicate this at the appropriate box (item 6, first sheet).

When no drawings accompany the application do not cross any boxes.

It is not recommended to select more than one figure; however, if it is necessary to do so then change the wording to reflect the change from single case to plural case. For example, change “figure” to “figures”, “is” to “are” and “No.” to “Nos.”

Box No. I of the ISR

See Nucleotide and/or amino acid sequence listings above

Box No. II of the ISR

Excluded subject matter Item 1

Refer to 1.1.6 Subjects to be Excluded from the Search

No meaningful search possible Item

Refer to 1.1.7.2.1 No meaningful search can be carried out

Multiple dependant claims Item 3

Refer to 1.1.11.12 Grouping the Claims

Ignore this box as our national law allows multiple dependent claims.

1.1.12.4 Fields Searched


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Box No. III of the ISR

Lack of unity

Refer to 1.1.4.2 Determining Lack of Unity

Remarks on lack of unity fees paid under protest.

Refer to 1.1.4.11 Payment of Additional Search Fees Under Protest

Box No. IV of the ISR

Text of the abstract

Refer to 1.1.5.1 Abstract

Abstracts should not be more than about 150 words.

Second Sheet of ISR, Box A

Classification of Subject Matter: IPC Symbols

The first IPC symbol listed in the ISR should have particular significance in that it most adequately characterises the invention. All IPC symbols are to be validated on the date of completion of search reports and examination reports. For intermediate reports (i.e. examination opinions) that do not have a date of completion, the IPC symbols are to be validated for the system date (i.e. today's date) and the Intelledox template will populate the version indicator for each IPC symbol, as indicated in the Guide to the IPC (year, month), in round brackets after each IPC symbol. The validation and the ST.10/C display will be used wherever the IPC symbols are presented (in the IPC box) in any report.



Second Sheet of the ISR, Box B

Minimum documentation searched

Refer to 1.1.2.4 Extent of Search and paragraph 16.54 of the PCT International Search and Preliminary Examination Guidelines.

• Where the IPC marks were searched, without restricting the search by using keywords enter the marks searched. DO NOT use “IPC: AS ABOVE”, and



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• If keywords were used in conjunction with IPC marks to restrict the search then leave this section blank.

Documentation searched other than minimum documentation

This section is used for non-electronic databases searched, e.g. paper or microfilm. PCT third party observations may also be entered here – see 1.3.5.3 PCT Third Party Observations.

Electronic database consulted

The names of any electronic databases consulted and any broad (Subclass Level or lower) IPC marks (if used for searching) should ALWAYS be included.

Where keywords (search terms) are used, they should ALWAYS be included. If the number of keywords used is large then a representative sample of the keywords could be used (for example “Keywords: A, B, C, and similar terms”). Truncation symbols need not be included. The logic used in relation to the search terms should not be included.

Partial structure searches are not conveniently indicated on the search report. If a partial structure search was carried out this can be indicated by a statement such as “partial structure search carried out based on the quinoline nucleus in formula (I)”.

Sequence searches should be dealt with in the same way as partial structure searches (“search of SEQ ID 1-5”).

The following is a non-exhaustive list of examples of formats in which electronic databases consulted information may be presented in an ISR:

Single databases -

• JAPIO & keywords: A, B, C, and similar terms

• MEDLINE & keywords: A, B, C, and similar terms

• CA: Structure searched based on Formula (I)

• ESP@CE keywords: A, B, C.

Multiple databases:

• DWPI & keywords: A, B, C, and similar terms (note that DWPI includes WPAT, WPI, WPIL)

• DWPI IPC A01B 1/- & keywords: A, B, C

• CA & WPIDS: IPC C07D 409/- & keywords: A, B, C

1.1.12.5.1 Selection of Documents Considered to be Relevant


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• EPODOC, WPIAP, Google Patents, Google, Google Images, Espacenet, TXTE IPC/CPC: A61M 16/20, A62B 9/02, A62B 18/10, A61F 5/56 Keywords: A, B, C, D, E, or the like, Applicant Name

Note: • Merely putting “keywords searched” without specifying the actual keywords used is not acceptable. • There is no need to indicate the way the database was accessed, e.g. there is no need to specify that ESP@CE was accessed via the Internet, or MEDLINE via STN.

The box should also include an indication of an applicant/inventor search if such a search was in fact carried out. The indication does not need to be as detailed as in the SIS and could be a generic statement, for example “<database>: Applicant/Inventor name search”, inserting the databases used.

1.1.12.5 Documents Considered to be Relevant



Second Sheet of ISR, Box C

The completion of this part of the international search report can be considered as having three components. These are:

• the citation category

• the 1.1.12.5.3 Citation of the Documents together with identification of relevant passages where appropriate, and

• the identification of relevant claim numbers.

These three components are discussed in 1.1.12.5.2 Citation Category, 1.1.12.5.3 Citation of the Documents and 1.1.12.5.4 Citation of URLs. [Rule 43.5 PCT/GL/ISPE/6 at para 16.57 et seq]

Some general points to note are:

• The ISR should identify documents relevant to assessing the novelty and inventive step of the claims of the application. Consequently the range of documents cited



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should be sufficient to justify such an assessment in relation to all the claims, where such relevant documents can be located. In some cases, only a few documents are required to achieve this, while for other applications a much larger number of documents is required.

• Documents selected for citation therefore should be the prior art that is closest to the applicant’s invention as this will ensure they are relevant to the largest number of claims possible. The duplication of teachings by way of citation of multiple documents showing the same inventive elements should be kept to a minimum. When citing a document, the examiner should clearly indicate which portions and specific pages of the document are most relevant, using the discussion of those documents in the ISO as guidance.

• Thus, in order to avoid increasing costs unnecessarily, examiners must not cite more documents than is necessary.

• Nevertheless, examiners must not inappropriately exclude documents of particular relevance from the report. That is, documents in either X or Y category, even if they are also P category, should not be excluded where they disclose subject matter of particular relevance that is not disclosed in other cited documents, as these documents will be of interest to some Designated Offices, for example the USA. Be alert also to documents that could be relevant to AU whole-of-contents novelty considerations at a later stage [Rule 33.1 PCT/GL/ISPE/6 at para 16.71]

• In most cases there should be no need to cite A category documents when X and/or Y category documents are cited (if needed, then it would normally be expected that no more than two category A documents would be necessary).

• While the number of documents cited in an Australian ISR does not normally exceed about ten, this number can and should be exceeded if it is necessary to do so to cover all of the claims.

Note: Documents should not be cited simply to top-up the number of documents cited to some 'magical' number.

• Documents cited should be based on the full copy of the document and not on the abstract thereof, except where section practices allow otherwise.

• English language documents must be cited whenever available.

• In cases where an English language document has a publication date after the filing date of the international application, but has a family member of non-English language with a publication date earlier than the filing date, then both documents should be identified. In these circumstances the non-English language document is cited first and the English language family member is mentioned afterwards, e.g. DE 2947734 A1 (GREEN) 4 August 1981 col 2-3, fig 2 (& US 4282353 A). [PCT/AI/Part1

1.1.12.5.2 Citation Category


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Section 507 (g)]. See also MPP 2.1.7.2 Identifying Citations under the heading “Citing Family Members”.

• Where the cited document is a patent document in a language other than English and another member of the same patent family is available in English, the examiner should preferably also indicate the corresponding part or passage of the English member of the patent family. In doing so, the examiner should not cite the English member as a separate document, but briefly mention it and indicate the relevant part or passage of that English member in the place following the indications of specific part or passage of the cited document. [PCT/GL/ISPE/6 at para 16.64(b)]

• Where the search has revealed patent and non-patent literature documents disclosing the same subject matter of particular relevance, preference should be given to citing patent documents in the search report.

• Because innovation patents are published relatively quickly after filing, the situation can arise where the publication date of an innovation patent is earlier than the international filing date of an international application which is a family member. In these circumstances it is appropriate to cite the innovation patent as a "P,X" document in the international search on the international application which is a family member. See 1.1.11 Search Procedure.

Modified Date: 03 April 2018

1.1.12.5.2 Citation Category

Documents which are cited are given a category indication by way of an alphabetic character, details of which are given in Administrative Instructions 505 and 507 (see completed example ISRs in Annex B and Annex C to this part). The categories for citations are also explained under the “Documents considered to be relevant” section of the report. A category should always be indicated for each document cited. [Ad. Inst. 505 Ad. Inst. 507 PCT/GL/ISPE/6 at para 16.65]

It is possible that a particular document may have more than one category specified in the report. For instance a citation may be an anticipation and so be indicated as X, and also in its introductory portion contain a good description of the developments in the appropriate field up to that time, and so also be indicated as A. [Ad. Inst. 508]

A separate line is to be used for each category assigned. Particularly relevant passages of citations must be indicated. In identifying relevant passages in the ISR, examiners should “summarise” the relevant passages identified for each document in the ISO. For example, if the ISO discusses a certain feature disclosed at column 10 lines 23–35, in the ISR it would only be necessary to refer to column 10 (Refer Annexes B and C to this part for examples.) References in the ISR that merely state “See whole document” are not useful and should be

1.1.12.5.3 Citation of Prior Art Documents


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avoided where features are not readily apparent from the citation (eg. due to interpretation/construction/contextual issues, inherency or features hidden in a lengthy specification).

In situations where there are two documents which are to be read as a single source of information, the two documents can be combined for novelty considerations under para 12.06 of PCT/GL/ISPE/6, the primary document should be categorised as ”X”, while the second document (which is referred explicitly in the primary document) should be categorised as “L”.

Where a citation is combined with common general knowledge to support an inventive step objection, regardless of whether documentary evidence is used to demonstrate common general knowledge, it should be categorised as “X” – see 1.1.8.4 Search Considerations and Annex I for examples of inventive step objections.

Note: In cases where documentary evidence is used to support an assertion of common general knowledge the documentary evidence should be categorised as “A”.

A “Y” category indicates the document is relevant for use in an inventive step objection, only when it is combined with at least one other document. This implies that there must always be at least two “Y” documents.

Modified Date: 03 October 2017


In this topic:

General

Note: When identifying cited documents, those errors that reflect a misapprehension of the facts rather than a simple miskeying are regarded as serious mistakes. They are errors whose routine correction is not obvious to a reader in the light of other citation information. Such errors are misleading in that they would reasonably lead the reader to an incorrect conclusion (e.g. a typographical error that results in an incorrect applicant name which is the name of a known competitor firm in the art concerned, or a citation publication date that erroneously indicates that the citation cannot be used to establish want of novelty).



85

Identification of any document should be made according to WIPO standard ST.14 [Ad. Inst. 503 ST.14, ST.16] unless indicated otherwise in the manual (e.g. see MPP 1.1.12.5.5, MPP 1.1.12.5.6, completed example ISRs in Annex B and C).

This means that the details required for each entry in the citations list include, as available:

• Patent Literature:

• country code,

• publication number,

• publication Kind code,

• applicant,

• date of publication;

• Non-patent literature:

• name by which the journal or reference work is known,

• date of publication,

• volume number,

• starting page reference and/or the title of the article.

When citing documents, internationally recognized abbreviations are permitted.

Additionally, the citation list must be free from frequent or serious spelling or typographical mistakes and must not contain misleading information.

Note: Copies of all documents (both patent and non-patent literature) cited in official IP Australia examination and search reports and opinions, including any document having relevance categorised ‘A’, must be stored on the V: drive for future reference in accordance with the guidance provided at 5.7.4 Guidelines for Using the V: Drive in Examination.

Patent Literature

In general cited patent documents should be identified in the form:



86

CC NUMBER KC (APPLICANT) Publication Date specific pages, paragraphs or lines containing the cited disclosure

Which indicate the relevant parts of the disclosure, where:

CC = country code, identifies country or region from which the document originates; NUMBER = document number of the patent, patent application or abstract cited; KC = Kind code, identifies the type and level of publication; APPLICANT = name of the applicant for the patent; Publication Date = date of publication of the document cited

(See 1.1.12.5.5 for a non-limiting list of example citation formats)

Although the document number and country code of a citation are critical to correct identification of a document, it is recognised, that there is substantial variation in the number formats as they are adopted by different databases. Moreover, it is expected that the reader/user of the information will adjust the format to suit the database accessed when retrieving the document.

Therefore:

1. For the purposes of consistency when reporting prior art patent documents, a citation is correctly identified when the document number, including any leading zeroes, and the convention country as cited, are identical to these descriptors as they appear on the document viewed and cited. This principle may be applied when citing documents from any jurisdiction, including when citing a WO document.

2. Copies of all documents (both patent and non-patent literature) cited in official IP Australia examination and search reports and opinions, including any document having relevance categorised ‘A’, must be stored on the V: drive for future reference in accordance with the guidance provided at 5.7.4 Guidelines for Using the V: Drive in Examination.

3. Where a copy of the document cited has been placed on the V: drive (see 2, above), the details of the citation written in the report, should mirror this information.

WO Documents

In view of the variation in number formats that the WO documents have adopted at various times, examiners may, when citing WO documents, identify them according to the 10 digit format, regardless of the format of the number on the document viewed. That is examiners may, at their discretion, insert leading zeroes and century digits to the numbers as they appear on the document viewed. (See 1.1.12.5.5 for a non-limiting list of example citation formats).



87

Additional ‘descriptors’

Where additional descriptors or alphanumeric codes are included in English in the number on the document considered, as stored on the V drive (e.g. H or S in Japanese citations), they must be included in the citation details. Where they are absent from the document considered, or appear in another language, examiners are not obliged to determine, translate or include them in the citation. If aware of the English translations of such descriptors, however, examiners may include them in the citation details, at their discretion.

As they are not considered critical, slashes, hyphens and commas may be added or omitted except where essential to the unambiguous identification of the document.

Note: 1. If system limitations prevent the entry of the citation number in the format of the document actually considered, the matter should be referred to the Supervising Examiner for direction and reporting. 2. A copy of each document cited in official IP Australia examination and search reports, including any document having relevance categorised ‘A’,must be stored on the V: drive, for future reference, in accordance with the guidance provided at 5.7.4 Guidelines for Using the V: Drive in Examination. 3. The copy of a cited document stored on the V: drive is regarded as determinative of the content of the cited document, the number format and therefore the detail to be included in citation details.

Kind Codes

Note: 1. When citing a patent document, a Kind Code must be included. 2. When citing a document for which no Kind Code is identified, ‘A’ should be applied in the absence of any other indication or means of identification. 3. When citing an older Australian patent document for which no Kind Code is identified, an appropriate Kind Code should be ascribed as set out in 2.1.7.2 Identifying Citations.

When included in a reported citation list or reference, a Kind Code, must comprise at least the letter (A, B, etc), as required to indicate the level of publication. Where the letter (A, B, etc) alone is not sufficient to provide certainty as to the content of the disclosure of the cited document being referenced, the number (e.g. A3) must also be recorded, if known.



88

When the examiner is compiling the Search report, the publication level of the document actually considered and assessed as relevant is cited. Examiners are not precluded from viewing and citing B level publication documents but nevertheless should remain alert to the fact that a B level document is published later than, and may also omit subject matter originally disclosed in, the corresponding A level document.

US Documents

Note: 1. On 2 January 2001 the US introduced pre-grant publication, resulting in new identifying codes appearing on published US Patents. Annex Z is a notice by the USPTO explaining the new system. 2. As a result of the America Invents Act, the applicant for a US Patent filed on or after 16 September 2012 is no longer restricted to being the Inventor, and may be the assignee. 3. Consequently, when citing US applications filed after this change took effect, examiners cannot rely on the name appearing at the top of the document [just below box (12)]as indicating the applicant, as this name refers to the inventor who may not be the applicant. Instead examiners should refer to the name appearing against INID 71 which code formally identifies the applicant. In the absence of INID 71 on the front page of a US application/patent, the examiners should continue to use Inventor name as identifying the applicant.

Other Patent Documents

In the case of JP documents, as the citation may be on the basis of the DERWENT or Patents Abstracts of Japan abstract, the appropriate method for identifying the citation should be used. (see sample DERWENT and Patents Abstracts of Japan abstracts at 1.1.12.5.5. [Ad. Inst. 507(g), Ad. Inst. 507(h)].

Note: Where a Japanese document number includes, in English, an ‘H’ or ‘S’ (indicating the year of the emperor’s reign), it must be included in the citation details. If absent from the document actually considered by the examiner, or present only as a Japanese character, examiners are not obliged to determine, translate or include the associated letter in the citation. If aware of the English translations of such descriptors, however, examiners may include them in the citation details, at their discretion.

For the SU documents, the citation is presently based on the DERWENT abstract.



89

Note: Where the abstract does not indicate all the elements for identification it may be identified with whatever elements are available from the abstract.

Publication Date (INID Codes)

The date of publication of foreign patent documents can be identified by the date following the relevant INID number i.e. 41-47. For older documents not bearing INID numbers identification includes looking for terms such as:

US granted or patented

GB acceptance date

FR publication de la deliverance

publie

DE Offenlegungstag

Bekanntmachung Ausgabe der Auslegeschrift

ausgegeben

CH veroffentlicht

expose d'invention publie le

CA issued

The patentee (or applicant) for a foreign patent can be recognised by the name following the relevant INID number i.e. 71-76 (for US patents filed before September 2012: 75 or 76)

Note: In the absence of other indications, where documents refer to multiple publication dates, with or without INID code identification, the earlier date should be assumed to apply.

Note: Accepted Australian patent documents (i.e. B level documents) may include more than one INID code relating to the date of publication, e.g. INID numbers 43 and 44. In such cases, the correct date of publication of the accepted patent document is the date following the INID number 44 (accompanied by the text “Accepted Journal Date”). The date following the INID number 43 should not be taken as the date of publication of the accepted patent document because this date refers to the date of original publication of the corresponding patent application.

e.g. (71) Name(s) of applicant(s) (73) Name(s) of grantee(s)



90

Non-Patent Literature

The name by which a journal or reference work is known and the date of publication (or URL and retrieval date) are critical information items and therefore must be correctly recited for non-patent literature.

The details used when citing non-patent literature must be the same as those recited on the document actually viewed and considered to be relevant. (Where the a copy of the document cited has been placed on the V: drive, the details of the citation should mirror this information.) (see 1.1.12.5.5 Citation Examples for a non-limiting list of citation formats).

For non-patent literature citations in a language other than English, the original (non-English) reference should be included, wherever technically possible, followed by an official translation into English, if one exists and it is available, in round brackets. An “official translation” here means an existing rendering of the original language name or title in English coming from the same source as the citation and useful for identifying and retrieving the relevant document. In case an official translation into English is not available for some elements of the original citation, an informal translation into English for those elements may optionally be provided after all elements of any official translation. Any informal translation should be preceded by the text “non-official translation”. [PCT/GL/ISPE/6 at para 16.78B]

Citing Chemical Abstracts (CAS) Registry Numbers

When a CAS Registry Number is cited as the result of an original or additional search, sufficient information should be included in either the Citation Details in Intelledox (DocGen) or the text of an objection to enable the compound to be identified. For example, the compound may be identified by its chemical name, by means of an examiner-prepared chemical structure (e.g. using ChemDraw) or by reference to a chemical formula (e.g. compound of formula X wherein R = methyl).

An example where the chemical name is included in the Citation Details is provided below:

D1 CAS Registry Number 780007-06-9; STN Entry Date 14 November 2004; 1-Piperidinebutanoic acid, 4-[(4-methoxyphenyl)phenylmethylene]-****

Category: X Claims: 1-10

**** Document found in an original search. See attached Search Information Statement for details.

1.1.12.5.4 Citation of URLs


91

Note: A copy of each document cited in official IP Australia examination and search reports, including any document having relevance categorised ‘A’, must be stored on the V: drive, for future reference, in accordance with the guidance provided at 5.7.4 Guidelines for Using the V: Drive in Examination. The copy of a cited document stored on the V: drive is regarded as determinative of the content of the cited document, the number format and therefore the detail to be included in citation details.


1.1.12.5.4 Citation of URLs

Any URL cited should show the address of the internet site that the citation came from and the date that it was retrieved.

The URLs cited in all parts of this Volume are examples only and may only be valid for the stated retrieval date.

For direction to any Internet site, such as PAJ machine translations or USPTO, the examiner's workbench should be used to access the latest website address (and not any example shown in this Volume).

For further instructions on Internet searching refer to Annex V.


1.1.12.5.5 Citation Examples

The following are examples of citations of documents:

C DOCUMENTS CONSIDERED TO BE RELEVANT

Category* Citation of document, with indication, where appropriate, of the relevant passages

Relevant to claim No.

PATENT DOCUMENTS

AUSTRALIA (AU)

X

AU 23456/00 A (BROWNE) 4 January 2001

See Examples 3, 7 and 9 1,8



92

X

Y

AU 345678 B2 (SMITH PTY LTD) 1 April 1979

Page 5 lines 2-10, Figure 8

Page 6 lines 15-25

(see Note below)

1-5, 9

6

A

AU 81733 S (KRAFT FOODS GROUP BRANDS LLC) 7 November 2000, Design

Whole document

WO (WO)

Y

WO 1981/001617 A1 (BOLIDEN AB) 11 June 1981

Page 4 line 20 - page 5 9

UNITED STATES (US)

X

US 3205468 A (JONAS et al) 25 July 1965

Columns 2-3, Figure 2 10

A

US 6208901 B1 (HARTUNG) 27 March 2001

Column 2 lines 22-40

A

US 2009/0012378 A1 (INCE) 8 January 2009

Whole document

A

US Des. 378472 S (BRAMANI) 18 March 1997

Whole document

A

US RE42586 E (GEORGEAU et al.) 24 August 2010

Abstract

EUROPEAN PATENT OFFICE (EP)

X

EP 1943110 A1 (LANGE et al) 16 July 2008

Page 5 line 18 – page 6 line 17, Figure 3 1-7

X

EP 0073567 A2 (F.L. SMIDTH & CO. A/S) 9 March 1983

Page 4 lines 6 - 30 3



93

UNITED KINGDOM (GB)

X

GB 191402678 A (STARR JOHN GARDINER) 21 January 1915

Page 2 lines 6-15 1

Note: The above format (GB YYYYNNNNN) is to be used for old GB documents (pre 1916). On the document itself, the number appears as 2678 and next to it is the year 1914.

SWITZERLAND (CH)

X

CH 504901 C2 (SWEP INTERNATIONAL AB) 26 May 1997

Figure 5 1

GERMANY (DE)

P,X

DE 29807997 U1 (WUELHORST GMBH & CO KG) 25 June 1998

Page 9 lines 21-29 10, 13

P,X

DE 2643150 A (SIEMENS AG) 30 March 1978, Derwent DWPI Online Abstract Accession No. 78-C7591A/14,

Abstract 1-9

SOVIET UNION (SU)

X

SU 557229 A (TULA POLY) 22 June 1977, Derwent Abstract Accession No. 33208A/18, Class Q68

Abstract 10-12

A

SU 402532 A (LOZOVNIK et al) 2 July 1974, Derwent Soviet Inventions Illustrated, Section 1, Chemical, Vol. V, No. 49, Issued 14 January 1975, Polymers, p.1

Abstract

JAPAN (JP)

P,X

JP 56-081110 A (OKANUE) 2 July 1981, Derwent Abstract Accession No. 61012 D/34, Class J01

Abstract 1, 5



94

X

JP S55164495 A (FRAMATOME SA) 22 December 1980

Abstract

(see Note below) 1, 2

A

JP4-28372 A (TOYO INK MFG CO LTD) 30 January 1992, Patent Abstracts of Japan, C-938, page 24

Abstract

X

JP 05071200 A (MIYAKE SOUICHI) 23 March 1993, Patent Abstracts of Japan

Abstract 1-10

A

JP 7-153465 A (SANYO ELECTRIC CO. LTD) 16 June 1995, Patent Abstracts of Japan

Abstract

X

JP H08317913 A (TSUTOMU) 3 December 1996

Abstract

(see Note below) 1, 5

X

JP 09-123456 A (CANON INC) 13 May 1997

Figures 1, 2 and para [0028] 1, 6, 9

A

JP 10-105775 A (NCR INTERNATIONAL INC.) 24 April 1998

Abstract

X

JP 2005-018678 A (CASIO COMPUTER CO. LTD.) 20 January 2005, English abstract retrieved from EPODOC database

Abstract 1-10

NON-PATENT LITERATURE (NPL)

BOOK and JOURNAL ARTICLE

X

WALTON, H., ‘Microwave Quantum Theory’, Sweet and Maxwell, London, 1973, Vol. 2, ISBN 5-1234-5678-9, pages 138 to 192

Pages 146 to 148 1-3



95

X

SMITH, R. et al., 'Digital Demodulator for Electrical Impedance Imaging', IEEE Engineering in Medicine & Biology Society, 11th Annual Conference. Edited by Y. Kim et al. New York: IEEE, 1989, Vol. 6, pages 1744-5.

Page 1744 lines 5-20 1-5, 9

X

BHATTACHARYA, C. et al., ‘Insulin, Transforming Growth Factors, and Substrates Modulate Growth of Guinea Pig Pancreatic Duct Cells In vitro’, Gastroenterology. 1995, vol.109, pages 944-952

Page 945 1, 5, 10

JOURNAL ABSTRACT

X

LIU, X. et al., ‘Synthesis and evaluation of novel radioiodinated nicotinamides for malignant melanoma’, Nuclear Medicine and Biology, 2008, Vol. 35, No. 7, pages 769-781

Abstract, page 771 section 2.2.2 3-8

NUCLEOTIDE / PROTEIN SEQUENCE

X

MAY, F. E. B. et al., ‘The Human Cathepsin D-encoding Gene is Transcribed from an Estrogen-regulated and a Constitutive Start Point’, Gene. 1993, vol 134, pages 277-282

Abstract, page 280, Sequence 2

Sequence shares 92% identity with SEQ ID No. 7 3-8

A

EMBL Accession No. L12980 14 November 2006

& MAY, F. E. B. et al., ‘The Human Cathepsin D-encoding Gene is Transcribed from an Estrogen-regulated and a Constitutive Start Point’, Gene. 1993, vol 134, pages 277-282

Abstract, page 280

Sequence shares 86.3% identity with SEQ ID No. 1 and 85.6% identity with SEQ ID No. 3

X

FSTA Accession No 1977(11):L0846

& MAKSIMOV, A. S. et al, Rheology of confectionery masses under vibration, Izvestiya Vysshikh Uchebnykh Zavedenii, Pishchevaya Tekhnologiya, (1976) No 6, p108-111

1, 48, 115



96

Abstract

X

GenBank Accession No. ABQ86777 21 June 2007

Sequence shares 96.7% identity with SEQ ID No. 1 1, 5, 20

X

EMBL Accession No. U58476 19 June 1996

Sequence shares 100% identity with residues 1-42 of SEQ ID No. 1 18-76

CHEMICAL ABSTRACTS

X

Chemical Abstracts Accession No. 75:12345

& SHETULOV, D.I., 'Surface Effects During Metal Fatigue’, Fiz.-Him Meh. Mater, 1971, 7(29), 7-11 (Russ.)

Abstract and Figure 1 2-7

X


& CAS Registry File RN 204923-30-8

Abstract 1-15

Note: For citing CAS Registry Numbers, see MPP 1.1.12.5.3

X


& SHETULOV, D.I., 'Surface Effects During Metal Fatigue’, Fiz.-Him Meh. Mater, 1971, 7(29), 7-11 (Russ.)

Abstract and Figure 1 2-7

X CAS RN 7589306-1, STN Entry Date 2006 1, 10




97

X

WO 2004/001234 A1 (SKY UNLIMITED INC) 26 June 2004

Page 12 lines 7-17

& CAS Registry Number 7589306-1 8,24


Websites / URLs

X

MERCKX, V et al, Diversification of myco-heterotrophic angiosperms: evidence from Burmanniaceae, BMC Evolutionary Biology (2008) Vol 8, Art 178, published 23 June 2008, (online journal) [retrieved from internet on 2 July 2009]

<URL: http://www.biomedcentral.com/content/pdf/1471-2148-8-178.pdf>

Background lines 1-7, Results para 2 lines 3-8 9, 17, 27

X

OWEN, R W et al, Olive-oil consumption and health: the possible role of antioxidants, Lancet Oncology, Vol 1, No. 2, 2000, pages 107-112 [online], [retrieved from internet on 18 July 2008] <URL: http://www.ingentaconnect.com/content/els/14702045/2000/00000001/00000002/ art0001>

<DOI: 10.1016/S1470-2045(00)00015-2>

Page 108 15, 56

X

F88 Wristwatch mobile phone [retrieved from internet on 20 September 2007]

<URL: http://web.archive.org/web/20060711162947/http://www.mobilewhack.com/ reviews/f88_wrist_watch_mobile_phone.html> published on 11 July 2006 as per Wayback Machine

Whole Document

1-20



98

X

Production Process - Ferro cement Wall panel [Viewed on internet on 05 August 2014] Viewed on internet.

< URL:

http://www.youtube.com/watch?v=a2IkP0je51Y>, Published on 8 July 2013

Whole document

1

A

AJTAI, M., ‘Generating Hard Instances of Lattice Problems’, Electronic Colloquium on Computational Complexity, Report TR96-007 [retrieved from internet on 20 February 2007].

< URL: http://web.archive.org/web/20061029121227/http://eccc.hpi-web.de/eccc-reports/ 1996/TR96-007/Paper.pdf> published on 29 October 2006 as per Wayback Machine

Whole document

1-5

Suunto Vector Watch - S09 [retrieved from internet on 21 August 2009].

< URL: http://www.exava.com/shop?q=suunto%20wristwatch >

Whole Document 1

L (The International Searching Authority is unable to establish the publication date of the above citation).

Note: 1. Japanese numbers should be entered in Intelledox as they appear on the document viewed and cited by the examiner (Where a copy of the document cited has been placed on the V: drive, the details of the citation written in the report should mirror this information; see 1.1.12.5.3 Citation of Prior Art Documents). The examples shown in the table above are purely for illustrative purpose and are not prescriptive of a format(s) that must be used. Note also that where the number on the JP document viewed and cited includes either of the English letters “S” or “H” as descriptors, it must be included in the number when citing the document in Intelledox. (see ‘Other Patent Documents’ under 1.1.12.5.3 Citation of Prior Art Documents). 2. Many older Australian patent documents do not have an indication of kind code on the

1.1.12.5.6 Citing patent Documents Retrieved from EPOQUE


99

document itself. However, the distinction between pre- and post-grant publications may be determined on the basis of the published number (pre-grant are of the form NNNNN/YY, while post-grant are NNNNNN). When citing such documents, an appropriate kind code must be ascribed in Intelledox, as described in ‘Kind Codes for Australian Patent Documents’ under 2.1.7.2 Identifying Citations). 3. “L” category can be used on its own or in combination with any other category e.g. “X”, “Y” or “A”.

Modified Date: 02 March 2015


1. EPODOC Abstracts

A. English Citations of English patent documents:

All English abstracts of the English patent documents (e.g US, AU, CA) viewed in the EPOQUE VIEWER (from EPODOC database) are identical to the publicly available abstracts of the published patents to which they correspond. Therefore, when citing such abstracts viewed in EPOQUE, the current practice of citing an English patent should be maintained.

For example:

X

WO 1981/001617 A1 (BOLINDEN AB) 11 June 1981

Abstract 1-10

The applicant can be supplied with one of the following documents – BNS front page, full patent document printed from BNS, Getthepatent etc or text print out of the abstract from the EPODOC database as discussed in the next section.

B. English Citations of foreign language patent documents:

Japanese Citations:

The Japanese abstracts are viewed in EPOQUE either in the text format or in the image format (e.g. BNS image of the abstract which would be marked as “Patent Abstracts of Japan” when printed out)

The following format is the preferred format for citing English abstracts of the Japanese patent documents viewed in EPOQUE in the text format:



100

X

JP 2005-018678 A (CASIO COMPUTER CO. LTD.) 20 January 2005, English abstract retrieved from EPODOC database

Abstract 1-10

The following format is the preferred format for citing English abstracts of the Japanese patent documents viewed (in printed form) in EPOQUE in the image format and marked as “Patent Abstracts of Japan”:

X

JP 05071200 A (MIYAKE SOUICHI) 23 March 1993, Patent Abstracts of Japan

Abstract 1-10

German Citations:

The following format is the preferred format for citing English abstracts of the German patent documents viewed in EPOQUE:

X

DE 102007003337 A1 (VOLKSWAGEN AG) 24 July 2008, English abstract retrieved from EPODOC database

Abstract 1-10

Korean Citations:

Note that most (if not all) published Korean documents have the prefix ‘10’ at the beginning of the publication number. When viewing these documents in EPOQUE, the text window of the VIEWER displays the publication number without the ‘10’ prefix (although the BNS abstract displayed in EPOQUE contains the prefix). Also please note that in order to retrieve these documents from Espace, the prefix ‘10’ must be removed from the publication number.

The preferred format is that the prefix ‘10’ be included in the publication number as this is the official publication number given by the KIPO.

When citing English abstracts of the Korean patent documents viewed in EPOQUE, use the following format:

X

KR 1020070101898 A (INNER CUBE, INC.) 18 October 2007, English abstract retrieved from EPODOC database

Abstract 1-10

Chinese Citations:



101

The following format is the preferred format for citing English abstracts of the Chinese patent documents viewed in EPOQUE

X

CN 1588431 A (UNIV TSINGHUA) 2 March 2003, English abstract retrieved from EPODOC database

Abstract 1-10

Russian Citations:

The following format is the preferred format for citing English abstracts of the Russian patent documents viewed in EPOQUE:

X

RU 2340978 C1 (G OBRAZOVATEL NOE UCHREZHDENIE) 10 December 2008, English abstract retrieved from EPODOC database

Abstract 1-10

When the name of the applicant is not available:

X

RU 2007117899 A (APPLICANT UNKNOWN) 20 November 2008, English abstract retrieved from EPODOC database

Abstract 1-10

Soviet Union Citations:

The following format is the preferred format for citing English abstracts of the Soviet Union patent documents viewed in EPOQUE:

X

SU 1787417 A1 (PROIZV OB MIR N) 15 January 1993, English abstract retrieved from EPODOC database

Abstract 1-10

When the name of the applicant is not available:

X

SU 1840699 A1 (APPLICANT UNKNOWN) 10 December 2008,. English abstract retrieved from EPODOC database

Abstract 1-10

Following is an example of an EPODOC abstract displayed on the EPOQUE VIEWER with recommended fields which will be sent to the Applicant when printed or stored in the V drive.



102

Recommended Fields for EPODOC and Derwent (WPI) Abstract

AN = Accession number (For WPI abstracts only)

PD (or ORD) = Publication Date

PN = Publication Number

OPD = Oldest Priority Date

TI = Title IC = IPC (International Preliminary Classification mark)

PA = Patentee/Applicant IN = Inventor

AB = Abstract

For a full list of available fields and what they represent, type in the “ ..field ” command in the INTERNAL module of EPOQUE or look up in the database fact sheets available on the EPOXY website.

Following is a guide on how to set EPOQUE to display required fields in the VIEWER

1. From the menu select Options | Preferences’

2. Select the tab labelled 4 Fields Display

3. Select the database EPODOC in the pull down menu.

• If a ‘required field’ in the list is below the ‘--- STOP HERE ---’ text then scroll down and select that ‘field’ option, and click the up arrow until that ‘field’ option is above the ‘--- STOP HERE ---’ text.



103

2. Derwent (WPI) Abstracts

When citing an abstract from the Derwent WPI database viewed in EPOQUE, use the following format:

X

DE 2643150 A (SIEMENS AG) 30 March 1978, Derwent Abstract Accession No. 78-C7591A

Abstract 1-10

Please note that the Derwent Accession Number must be included, however, including the Derwent classification symbols is optional.

The Accession Number (AN) field will need to be set to be displayed in EPOQUE when viewing Derwent WPI abstracts.

Following is a guide on how to set EPOQUE to display required fields in the VIEWER

1. From the menu select Options | Preferences’

2. Select the tab labelled 4 Fields Display

3. Select the database WPI in the pull down menu.

• If a ‘required field, AN, in particular" in the list is below the ‘--- STOP HERE ---’ text then scroll down and select that ‘field’ option, and click the up arrow until that ‘field’ option is above the ‘--- STOP HERE ---’ text.

Following is an example of a WPI abstract displayed on the EPOQUE VIEWER with the recommended fields (see the previous section) which will be sent to the Applicant when printed or stored in the V drive.



104

3. BNS Full Documents

When citing a BNS Full Document retrieved from EPOQUE (English or Non-English), the standard (i.e. current) format for citing patent documents should be used.

Examples

X

WO 1981/001617 A1 (BOLINDEN) 11 June 1981

Abstract, page 4 lines 10 – 15 and page 5 lines 7 – 20 1-10

1.1.12.5.7 Relevant Claim Numbers


105

X

GB 2362240 A (INTERNATIONAL BUSINESS MACHINES CORP., USA) 14 November 2001

Abstract, fig. 4, page 4 lines 22 – 28, and claim 1 1-10

X

JP 2004364093 A (OKI ELECTRIC IND. CO. LTD.) 24 December 2004

Figure 1 1-10

X

FR 2345677 A1 (ZINC WATER) 21 October 1977

Figure 1 and pages 8 lines 2 – 31 1-10

X

US 6020978 A (COOPER et al.) 1 February 2000

Abstract, Figure 1, column 3 lines 3 – 38 and column 17 lines 6 – 32 1-10

The applicant can be supplied with full patent document printed from BNS, Getthepatent etc.


1.1.12.5.7 Relevant Claim Numbers

For “X” and “Y” citations the relevant claims to which the category applies are given as prescribed in Administrative Instruction 508. [PCT/GL/ISPE/6 at para 16.71]

Note: Comprehensive discussion of all cited documents in the corresponding ISO is not required (See MPP 1.3.8.6).

For “A” citations it is not necessary to indicate the relevant claims unless there is good reason to do so; for example where there is a clear lack of unity a priori and the citation is relevant only to a particular claim or group of claims.

Further documents listed in continuation box

If more documents are cited than will fit in the space provided and a supplementary sheet is used cross this box.

1.1.12.6 Family Member Identification


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1.1.12.6 Family Member Identification

A family member listing is automatically included with the report as generated by DocGen.

The search report is published with the specification and distributed worldwide. To enable any reader in any country to consider the citation in the most convenient document/language, the known family members of each citation are listed in the patent family annex sheet of the ISR (See Annex B and C). The annex sheet of the ISR is to be prepared automatically in DocGen.


1.1.12.7 Date of Actual Completion of the Search

Where the search examiner is an authorised officer, the “date of the actual completion of the international search” will be the date the examiner completed the search report.

Where the search examiner is not an authorised officer, upon completing the notification and report, the case should be referred to the responsible examiner. The “date of the actual completion of the international search” will be the date on which the responsible examiner concurs with the search report. Note, however, 1.1.13 Reissued, Amended or Corrected ISRs and ISOs, relating to re-issued and corrected reports.

Under normal circumstances the ISR and the ISO should be completed within 9 weeks of filing of the PCT application, and in all cases within 3 months of receipt of the search copy (see Customer Service Charter Timeliness Guidelines for apology time limits).

Examination sections have prime responsibility for eliminating the errors occurring in reports. They must aim to eliminate errors in reports with effective quality assurance procedures. An ISR check sheet is provided at Annex U and a check sheet for international examination is provided at IPE Quality Checklist.

In cases where it may not be obvious to an applicant why a later search report differs from an earlier search report referred to in Box VII of the request of the later application, it may be appropriate for an explanatory letter to accompany the search report. Such a letter could anticipate possible complaints by stating for example that new citations were reported because they were found in an updated search, or that the claims searched in the later application were of a different scope than the earlier search statement, or the like. A senior or supervising examiner should authorise such explanatory letters.

See 1.1.12.8 Refund Due

See 4.9.5.4 Sending Documents to the PCT Unit for Processing.


1.1.12.8 Refund Due


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1.1.12.8 Refund Due

Where a refund may be due, then upon completion of the ISR and ISO examiners are to fill out the template for form PCT/ISA/213 (if a refund is recommended) or PCT/ISA/224 (if a refund is not appropriate). If form PCT/ISA/213 is used, this should be sent to their Supervising Examiner for approval using workflow (see 4.9.6.3 Refund of Fees). If form PCT/ISA/224 is used, before completing the form, the examiner should get email approval from the Supervising Examiner and place a record on the case file. The examiner as the authorised officer can then click SUBMIT to complete the form. Approval should be obtained from the Supervising Examiner no later than 1 week prior to the 9 week date for establishment of the ISR and ISO.

Examiners should refer to Annex S – Refund of Search Fees which sets out the circumstances in which a refund may be due. To assist their Supervising Examiner, examiners may refer to these circumstances in a brief file note as to the extent of the search in light of the earlier search, and as to the quantum of refund accordingly recommended.

Note: All refunds are to be stated in Australian dollar amounts only. For the search fee amount, see Patent Regulations, Schedule 7, Part 3 item 302.

After considering whether the amount of refund is appropriate, the Supervising Examiner is to forward the form PCT/ISA/213 template to the PCT Unit indicating their decision.


1.1.12.9 Contents of Case File at Completion

In addition to the ISR and the ISO, the INTESS file must include:

• If not previously despatched, a copy of the board decision which ISA/AU has taken on the protest by the applicant against payment of an additional fee because of lack of unity of invention.

• A Search Information Statement (SIS)

Actions by the PCT Unit

Upon receipt of the Intelledox report templates the PCT Unit will perform the final processing steps:

• Enter the date of mailing of the ISR and the ISO; the date of mailing must be the same for the ISR and ISO

1.1.13 Reissued, Amended or Corrected ISRs and ISOs


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• Where the applicant/attorney has requested a copy of the citations and has an account with this Office then make one copy of each citation from V:\ Drive and prepare an invoice

• Under the cover of the original notification form PCT/ISA/220 dispatch ISR and ISO (and one copy of the citation, provided that the applicant does not already have these citations as a result of them having been cited in an earlier search, and invoice if attorney/applicant has an account) to the applicant/attorney as stated in the PCT Request Form (by e-mail, paper or both).

• Where a refund for an earlier search consideration has been approved include the notification PCT/ISA/213 in the dispatch to the applicant/attorney

• Forward the ISR and ISO to the IB Update all changes to the INTESS file (ISR and ISO) [Rule 44.1]

• Update search object in INTESS with the date of mailing.

International - International Searching Patent Manual of Practice & Procedure Modified Date: 25 February 2019


On rare occasions it will be necessary to replace a previously issued ISR and/or ISO. This can arise if, for example, a further relevant document is discovered or if an error has been made in the transcribing of details into the report. Where the error or omission is not one which would have procedurally disadvantaged the applicant (such as an incorrect IPC mark or a misspelling of the applicant’s name), a “Corrected” report should be issued bearing the same date of establishment and same date of issue (mailing) as the original report. Where the error or omission is one of real substance which would procedurally disadvantage the applicant if the original dates of establishment and issue (mailing) were maintained (such as a new citation or a citation whose number has been misrecorded), an “Amended” report having the actual date of establishment and actual date of issue (mailing) of the amended report should be issued. [PCT/GL/ISPE/8 at para 15.74]

If an error or omission concerns only one or the other of the ISR and ISO, then it is only necessary to amend the document in which the fault occurs (although the reissuing or correction of one will often require reflection in the other, in particular to ensure that any change to the deemed date of mailing was properly reflected as one or the same in both documents).

The discovery of a further relevant document may arise out of the following circumstances:



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• the discovery that the full international search has not been done, or a citation has been missed, thus requiring a further search and/or opinion.

• an (international) search in a later related application which provides documents relevant to the original search

• notification by a third party of the existence of a relevant document.

If the person discovering the need for a search, or the existence of relevant documents, is not the original search examiner, they must, if practical, immediately inform the original search examiner. If that is not practical, another examiner will need to take carriage of the case. The search copy file is retrieved and, if practical, the original three-person team or, if not practical, a new three person team determines the need for an amended search or the relevance of the later search.

If there is a need for a further search as above, then the three-person team determines the appropriate search strategy and proceeds according to the procedure in a normal international search (see 1.1.12.1 Search Report and Notification Form Completion).

If a later search report provides relevant documents then the search examiner prepares an “Amended” ISR comprising the relevant citations of the later (international) search report depending on whether it is wholly or partly relevant.

If the task above is completed in sufficient time for the amended report to arrive at the IB at least two weeks before normal publication of the original international application, then the amended search report is treated in the same way as a normal search report (see 1.1.12.1 Search Report and Notification Form Completion for the procedure). If not, then an amended report may be issued any time up to entry into the National Phase, less a publication lead time.

An amended ISO may also need to be issued with the amended search report (see para above).

There is no Intelledox template specifically for an amended or corrected search report or an amended or corrected ISO. However, there is an option in the Intelledox template which can be ticked to create a ‘Comments to PCT Admin (Optional)’ box to the PCT. See 4.11.5.1 Creating an International Search Report (PCT210) and Written Opinion of the International Searching Authority (PCT237) and SIS for more details.

Information about issuing corrective actions as a result of a quality review Finding can be found in the Quality System and Security Manual.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 25 February 2019 International - International Searching

1.1.14 Priority Document


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Patent Manual of Practice & Procedure Modified Date: 01 August 2018

1.1.14 Priority Document

Although the validity of the priority date claimed by a PCT application (including any right of priority restored under PCT Rule 26bis.3 – see 3.11.4 Restoration of the Right of Priority under the PCT) is not an issue in so far as international searching is concerned, it may need to be assessed when producing an ISO - see below. For the purpose of an international search report the priority date is assumed to be the filing date of the PCT application (ie any citation published prior to the filing date of the PCT application [rather than the priority date] should be cited as a prior publication). For the purpose of an ISO, however, it may be necessary to determine what priority date a PCT application is entitled to if a citation in the ISR is published after the earliest priority date. In this case it will be necessary for the examiner to view the priority document, if possible. [PCT/GL/ISPE/7 at Chapter 6]

Examiners may also have a need to view a priority document for reasons unrelated to priority date determination, such as to gain a better insight into the subject matter of the PCT application.

In the most common situation viewing a priority document will be straightforward as it will be an Australian provisional or standard application which can be accessed by the examiner using PAMS. However, a situation can arise where the priority is sought from an earlier application which is not available by this mechanism (that is, it is a foreign document, as will most likely be the case when the PCT application was originally filed with RO/NZ) and the document is not already in the search file of the PCT application (as may well be the case as the applicant has until 16 months after the priority date to file it). If an examiner needs to view such a priority document, the examiner is to request a copy of the document together with a translation where appropriate from the PCT Unit via email. If the PCT Unit proves unable to obtain the document, the priority date is to be assumed valid - see paragraph 17.29 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/7).

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 01 August 2018

1.1.15 Foreign Patent Search Aids and Documentation

International - International Searching Patent Manual of Practice & Procedure Modified Date: 15 February 2015

1.1.15.1 Background Patent Search Aids and Documentation


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1.1.15.1 Background Patent Search Aids and Documentation

Searching has evolved to the point where it is now predominantly performed by electronic means, such as by accessing on-line databases via EPOQUE or STN, or the Internet and using techniques such as key-word searching.

Australian patent data can also be searched by examiners using AUSPAT, which is IP Australia’s web based search tool. The link for AUSPAT is http://pericles.ipaustralia.gov.au/ols/auspat/.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 01 February 2019 Modified Date: 01 June 2011

1.1.15.2 Hard Copy Documentation

Exam Support & Sales holds numerically arranged patent document collections and certain abstract collections for the "Minimum Documentation" countries. These documents are in various hard copy forms however ES&S rely on on-line retrieval for the majority of documents supplied to examiners.

International - International Searching Patent Manual of Practice & Procedure Modified Date: 01 July 2014

1.1.16 Assistance with Foreign Languages

Where a search examiner requires assistance with a foreign language, he or she should consult the list of foreign language translators and the services of a suitable examiner.

Whilst as many as three examiners will often be involved in the conduct of any one search, only one examiner - the person whose normal duties cover the technical area of the search - will have the immediate responsibility for both the conduct of the search and the indicating of the special categories of cited documents.

It may on occasions be possible for a search examiner with no foreign language capability to nevertheless perform a preliminary culling of relevant material on the basis of drawings or formulae. Where possible this should be done before foreign language documents are given to foreign language translators.

It is the search examiner's duty to inform the foreign language translator of the nature of the invention and to indicate to them the nature and scope of the search. Copies of the written

1.1.17 Rule 91 Obvious Mistakes in Documents


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search statement and/or copies of the broadest claim(s) should be provided to the foreign language translator. It is not expected that these translators should be required to determine this information, since apart from duplication of effort there is a danger of inconsistency.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 03 July 2017 International - International Searching Patent Manual of Practice & Procedure Modified Date: 01 November 2018

1.1.17 Rule 91 Obvious Mistakes in Documents

Rule 91.1 provides that obvious mistakes may be rectified. Where rectification in respect of any document other than the Request form is sought before the ISR is established (or an Article 17(2) declaration made), PCT Unit will forward the request for rectification, the search file and necessary forms to the search examination section for consideration. [Rule 91.1, Ad. Inst. 511 PCT/GL/ISPE/7 at Chapter 8]

Any request for rectification from the applicant will be in the form of a letter. However, the PCT Unit, acting as the RO, can also forward replacement sheets to the search examiner for consideration under Rule 91; e.g. where the applicant has supplied a replacement sheet for another reason (e.g. to correct a defect) and the PCT Unit believes that it contains additional matter.

The search examiner considers whether the mistake is rectifiable under Rule 91.1, and completes form PCT/ISA/217 (see Annex J to this part). Once PCT/ISA/217 is completed it should be added to the eCase, see MPP 4.9.6.6.

Note: • Rule 91.1(c) to (g) is the only source of instruction when considering requests for rectification, i.e., case law does not exist. • Although Rule 91.1(h) allows the ISA to invite rectifications (form PCT/ISA/216), it is not envisaged that such invitations will be issued since any error which can be rectified under Rule 91 will not cause any problems in establishing the search report. • Authorisation of rectifications is determined solely by Rule 91.3(a) and (b) while Rule 91.1(c) determines if they are of effect. Whether such rectifications can be effective is not a consideration in authorizing and thus of no examiner concern. [Rule 91.1(c) to (g), Rule 91.3(c)]

1.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings


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Obvious Mistake

Mistakes which are due to the fact that something other than what was obviously intended was included in the contents of the international application may usually be rectified. The mistake must be “obvious” in the sense that it is immediately apparent:

i. that a mistake has occurred; and

ii. that anyone would immediately recognise that nothing else could have been intended other than the rectification requested by the applicant.

Examples of obvious mistakes that are rectifiable include linguistic mistakes, spelling mistakes and grammatical mistakes so long as the meaning of the disclosure does not change upon entry of the rectification. Mistakes in chemical or mathematical formulae would not generally be rectifiable unless the correct formulae would be common knowledge to anyone.

If a rectification is not of this nature (for example, if it involves cancellation of claims, omission of passages in the description or omission of certain drawings), it should be treated as an amendment under Article 19/34 and dealt with on that basis.

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 01 November 2018

1.1.18. Nucleotide and/or Amino Acid Sequence Listings



Nucleotide and/or amino acid sequence listings are representations of the sequence in a standardised format set down in Annex C of the Administrative Instructions under the Patent Cooperation Treaty. This listing(s) may be supplied with an international application in addition to the sequence disclosed in the specification.

Note: A sequence listing is a separate part of the description that is presented in a specific format (Annex C). Nucleotide or amino acid sequences that appear in the figures or drawings, or in the text of the description, do not constitute a sequence listing.

The listing may be filed as part of the specification or it can be furnished separately at a later date. Where the sequence listing was originally filed as part of the description or where it



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was filed in response to an Article 14 objection (certain defects in the specification) by the Receiving Office, the sequence listing forms part of the description (Rule 5.2) and hence forms part of the pamphlet. If however the sequence listing is only filed in response to a Rule 13ter request by the ISA then the sequence listing does not form part of the description (unless the subject of an Article 34 amendment) and will not be part of the pamphlet (Rule 13ter (f)).

Examiners should note that the expressions "nucleotide sequence" and "amino acid sequence" are defined to mean an unbranched sequence of ten or more contiguous nucleotides and an unbranched sequence of four or more contiguous amino acids, respectively; branched sequences are specifically excluded (Annex C).

Where the international application contains a disclosure of a nucleotide and/or amino acid sequence, the sequence listing may be in paper form, or electronic form on a (ISO9660) CD-ROM, CD-R or DVD. According to section 208 of the Administrative Instructions, the standard prescribed for a sequence listing is that specified in Annex C. [Rule 5.2 Ad. Inst. 208 Ad. Inst. 801]

As of 1 July 2009, the filing of 'mixed mode' PCT applications, i.e. international applications where the sequence listing is filed in electronic form and the remainder of the international application is filed in paper form, is not permitted. Thus international applications must be filed in either paper or electronic form in order to be accepted by the Receiving Office.

When an international application containing a sequence listing is lodged with the Receiving Office, PCT unit will check that the necessary formalities requirements have been met before the application is forwarded to the relevant examination section.

Note: An application where the sequence listing is provided in paper form, may also contain a copy of the sequence listing in electronic form in order to comply with Rule 13ter [Ad. Inst. 208 Ad. Inst. at Annex C] (see below)

If the sequence listing provided at filing is not in electronic form, or if one is provided which does not comply with Annex C, the ISA, under Rule 13ter.1(a), may issue an invitation to the applicant to furnish a sequence listing in electronic form, or to furnish a listing which complies with Annex C. The sequence listing provided must be in electronic form encoded as a text file on CD or DVD media. The prescribed time for responding to such an invitation is usually one month. (PCT/ISA/225) [Rule 13ter.1(a) Ad. Inst. 513(a)]

If the applicant does not comply with an invitation, the ISA will only search the international application to the extent that a meaningful search can be carried out without the sequence listing. [Rule 13ter.1(c)]

Any limitations placed upon the scope of the search, as a result of non-compliance with this request, should be discussed by the three person team.

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This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 03 April 2018 Modified Date: 01 June 2012

1.1.18.2 Office Practice

Australian Patent Office practice, in its role as an ISA, is as follows:

• An applicant is required to file a sequence listing in paper form, or electronic form on a (ISO9660) CD-ROM, CD-R or DVD, if the specification discloses a nucleotide and/or an amino acid sequence. The PCT unit can issue a defect notice to the applicant if the paper or CD-ROM, CD-R or DVD sequence listing is missing, or if it does not conform to the standard prescribed in Annex C of the Administrative Instructions under the Patent Cooperation Treaty.

• The Commissioner may request that if the applicant only files a paper form of the sequence listing, that the applicant files an additional copy of those sequences in electronic form. Any sequence listing in electronic form submitted in addition to the paper sequence listing contained in the specification must be identical to that paper sequence listing, and must be accompanied by a statement that [Rule 13ter.1(a) Ad. Inst. 513(a)]:

"The sequence listing does not include matter which goes beyond the disclosure in the international application as filed" (Annex C paragraph 4(vi)).

The examiner should check whether the electronic listing is accompanied by such a statement. If not, the examiner will then issue an Invitation to furnish the statement. (PCT/ISA/225).

Note: If the applicant has not supplied an electronic form of the listing, then the three person team should consider whether or not an electronic sequence listing is necessary for a comprehensive search. If it is decided by the three person team that a comprehensive search can be completed without the electronic form of the listing, then the search should proceed. For example, if the application relates to a single 10 amino acid sequence, then it may be possible to undertake a search without such a listing in electronic form. If however the application relates to extensive sequence listings, then the examiner may issue an invitation to supply an electronic listing - see also 1.1.18.1 Nucleotide and/or Amino Acid Sequence Listings.

• The Office will accept the accuracy of any filed listing. The listing so supplied should comply with Annex C, however the Office will not necessarily check the listing for compliance. The Office will check for any physical damage to the disc, and for the presence of viruses.

1.1.18.3 Summary


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1.1.18.3 Summary

In summary:

• examiners will check for the presence of a sequence listing, if there is a sequence disclosed in the specification. However, examiners are not required to check for compliance of the sequence listing with Annex C of the Administrative Instructions under the Patent Cooperation Treaty

• examiners with the agreement of the three person team may issue an invitation as stated in Rule 13ter.1(a).

• examiners will accept the sequence listing in paper form filed by the applicant, but are not obliged to require that the applicant supply an electronic form of the sequence listing.

• if, in the establishment of the ISR, or international-type search report, the search was carried out on the basis of the sequence listing, examiners should mark the appropriate check boxes under 'Basis of the Report' on the first sheet and in Box I on the second sheet of PCT/ISA/201 or PCT/ISA/210 forms. In the ISO the examiner should mark the appropriate checkboxes under Items 3 and 4 of Box I 'Basis of the Report' of the form PCT/ISA/237. At the international preliminary examination stage examiners should mark the appropriate check boxes under Item 2, 3 and 4 in Box I 'Basis of the Report' in the PCT/IPEA/408 and PCT/IPEA/409 forms, plus regarding the last check box in Item 2, include relevant information in the Supplemental Box Relating to Sequence Listings in the PCT/IPEA/408 and PCT/IPEA/409 forms.

The Australian Patent Office will accept the filing of such sequence listing parts in paper form or in electronic form on a standard (IS09660) CD-ROM, CD-R or DVD.

Note: As of 1 July 2009, the filing of 'mixed mode' PCT applications, i.e. international applications where the sequence listing is filed in electronic form and the remainder of the international application is filed in paper form, is not permitted. Thus international applications must be filed in either paper or electronic form in order to be accepted by the Receiving Office.

1.1.19 Annexes


Annex H - Searching Broad Claims


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Annex H - Searching Broad Claims


Annex S - Refund of Search Fees

Guidelines for PCT International Search Refunds 1. Introduction



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PCT Rules 16.2 and 16.3 deal with refunds of international search fees. For the search fee amount, see Patent Regulations, Schedule 7, Part 3 item 302.

2. Rule 16.2 Refunds

Rule 16.2 sets out particular circumstances in which it is appropriate to refund the search fee in its entirety. As implemented in IP Australia, those circumstances are where:

i.the applicant withdraws the PCT application and the search examiner has not commenced any work; or

ii. the Receiving Office i.e. AU Patent Office, declares that the PCT application shall be considered withdrawn e.g. due to non-compliance with Article 14 of the Treaty and no work has commenced on the search.

Note: 1. No partial refunds are appropriate under on the provisions of Rule 16.2. 2. Where the search examiner has commenced any work on the file, a refund is not appropriate.

3. Rule 16.3 Refunds

PCT Rule 16.3 relates to partial refunds pursuant to the clause in the agreement between the Australian Patent Office (in its capacity as an International Searching Authority) and WIPO which states:

“Where the Authority benefits from an earlier search, 25% or 50% of the search fee shall be refunded, depending on the extent to which the Authority benefits from that earlier search.”

A partial refund under Rule 16.3 is only applicable where specific reference is made in item VII - 2 in the Request to use the results of an earlier search performed by any International Searching Authority or national Office. In the case of an earlier search which is not carried out by the Australian Patent Office, the earlier search results or a reference to where the search results can be accessed must be furnished at the time of filing or indicated in the request form, respectively. Additionally, in the case of an earlier search which is not carried out by the Australian Patent Office, if considered necessary the applicant may be invited to provide:

• a copy of the earlier application

• a translation of the earlier application if not in English

• a translation of the search results if not in English; or



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• a copy of any document(s) cited in the earlier search report and considered by the examiner to be likely to be particularly relevant. However, before ordering copies of citations from the applicant, the examiner should attempt to access the cited documents by the usual techniques, namely from the internet or by requesting the library to obtain the document(s), If this proves unsuccessful, then the applicant should be invited to provide the document(s) in question, except in the case when the earlier search was carried out by the USPTO and the applicant has marked the checkbox in Box VII of the Request requesting the receiving Office to prepare and transmit copies of the citations to the ISA. In this case PCT unit should be requested to ask the USPTO to supply the document(s).

The invitation should be made by the examiner using PCT form PCT/ISA/238 for subsequent dispatch by the PCT Unit – see 4.9.6.3 Refund of Fees.

Apart from the refunds mandated by PCT Rules 16.2 and 16.3, another situation in which the Australian Patent Office may partially refund the international search fee is if it declares that the PCT application relates to subject matter excluded from the search and/or is unsearchable.

4. Guidelines for the quantum of refund under Rule 16.3, or where a PCT application is declared to relate to excluded subject matter and/or is unsearchable, or where a new search with significant effort is required

a. Rule 16.3 - Refund 50%:

Applicable in circumstances where the search report is wholly based on the results of an earlier search (where only a top up search of the intervening period may be required) and no significant categorising of citations is needed.

b. Rule 16.3 - Refund 25%:

Applicable in circumstances where:

i. the search report is substantially based on the results of an earlier search, but additional searching effort in addition to a top up search for the intervening period is required; or

ii. the relevance of the earlier search results upon which the search report is wholly based needed to be reconsidered due to significant changes in scope of the invention claimed

For the purposes of determining the quantum of refund to be granted under Rule 16.3, where the subject matter is the same as that for the earlier search, the earlier search was conducted by the Australian Patent Office and the earlier search conducted was clearly inadequate in respect of that subject matter, no account should be taken of the additional searching effort arising from the inadequacy of the earlier search. This does not apply in the case of earlier searches conducted by other offices. Reliance on these searches is discretionary.



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c. Excluded or Unsearchable Subject Matter - Refund $1500:

Applicable in circumstances where all claims of the international application are directed to subject matter excluded from the search under Rule 39.1 and/or the international application fails to comply with prescribed requirements, e.g. where the description, the claims or the drawings are totally unclear, to such an extent that none of the claims can be meaningfully searched. (See 1.1.6 Subjects to be Excluded from the Search). In these circumstances no search is carried out and a declaration of non-establishment of the international search report is issued pursuant to PCT Article 17(2)(a).

d. New search with significant effort is required – No Refund:

Applicable in circumstances where, for example, an entirely new search with significant effort is required and/or negligible benefit has been obtained from the earlier search.

For information where an application includes more than one invention and at least one of the inventions is covered by an earlier search, see 1.1.4.9 Issuing the Invitation to Pay Additional Search Fees last para.

For information on completing Intess fields, see 4.9.6.3 Refund of Fees.

5. Preliminary Actions

5.1 The PCT Unit will place a copy of any Art 15(5) search and, where apparent to the PCT Unit, a copy of any other earlier search conducted by the AU Patent Office, on the case file before it is sent to the relevant examination section.

6. Search Examiner Actions



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6.1 The search examiner should as a precaution check the PCT request form to see if there is a notification of an earlier search.

If the request cites an Art 15(5) or other earlier search conducted by the AU Patent Office and that the applicant wishes this to be taken into account during the searching of the PCT application, then the examiner should find the details of the earlier search to determine how much (if any) new searching is required and, consequently, the quantum of refund due.

If the request cites a search report carried out by another International Authority or national Office, the examiner should assess whether it is necessary to invite the applicant to provide any of the following:

• a copy of the earlier application

• a translation of the earlier application if not in English

• a translation of the search results if not in English

• copy of any documents cited in the earlier search reports

6.2 The search examiner formulates the proposed search for the PCT application. In formulating the proposed search, the claims and/or search statements of both applications should be carefully compared to determine whether the proposed search is to differ from the earlier search. Where the earlier search was conducted in the correct field and covers the claims of the PCT application, the search examiner should determine whether an update of the earlier search need be conducted. If the earlier search is found to be inadequate (e.g. was carried out in the wrong area or in respect of different claims), the search examiner in conjunction with a three person team should determine whether and to what extent the search for the PCT application need be extended beyond the earlier search.

In formulating the proposed search, the claims and/or search statements of both applications should be carefully compared to determine whether the proposed search is to differ from the earlier search.

6.3 On completion of the search, the examiner should complete either form PCT/ISA/213 (to recommend a refund) or form PCT/ISA/224 (if a refund is not appropriate) using DocGen. A brief file note (see 1.1.12.8 Refund Due) as to the extent of the search, in the light of the earlier search, and advising as to the quantum of refund to be granted may be included in the file to assist the Supervising Examiner in deciding the amount of refund, if any.

Annex U - ISR Quality Checklist


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6.4 If the examiner has completed form PCT/ISA/213, the examiner should click SUBMIT to assign the workflow task to their Supervising Examiner and send an email to them with a link to the pending task.

The Supervising Examiner will consider whether a refund is appropriate and set the document status to either APPROVED or AMEND as applicable - see 4.9.6.3 Refund of Fees.

6.5 If a refund is not appropriate, form PCT/ISA/224 is completed; this should include reasons why no portion of the search fee is to be refunded, eg:

“Reference is made at Box VII of the Request accompanying PCT/AU199x/xxxxxx to an earlier search carried out on Australian Provisional Application No. YYYYXXXXXX. The results of the earlier search were taken into account when preparing the search report on the PCT application but an entirely new search with significant effort had to be performed. Since this Office as the International Searching Authority obtained negligible benefit from the prior search, the payment of a refund is not appropriate.”

Before completing the PCT/ISA/224 form, the examiner should get email approval from the Supervising Examiner and place a record on the case file. The examiner as the authorised officer can then click SUBMIT to complete the form.

6.6 Cases involving circumstances which are out of the ordinary and which the Supervising Examiner is unable to resolve should be referred to AGM ELEC.

6.7 If a refund has been approved, PCT Unit completes a Treasury claim for refund and arranges for the refund and notification (form PCT/ISA/213) to be sent with the ISR to the applicant or its agent.

6.8 If a refund has not been approved, PCT Unit arranges dispatch of form PCT/ISA/224 together with the ISR to the applicant or its agent.


Annex U - ISR Quality Checklist

Reference: International Searching Search Report and Notification Form Completion

Address for service is that on the latest correspondence from the applicant or agent.

Internet searching 1


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Applicant's/agent's reference number is from the latest correspondence from the applicant or agent must be used. Note that the latest correspondence from PCT will not necessarily indicate the latest reference number.

Filing date is automatically entered in the Intelledox report . This information is on the front page of the PCT Request Form.

Priority date is automatically entered in the Intelledox report. This information is also in PCT Request Form Box VI.

All relevant Boxes crossed and related explanation given.

IPC marks are valid in the current edition of the IPC.

Electronic data bases identified correctly and relevant keywords used are noted.

Citations

Identification for example, Correct Derwent Accession Numbers, Application numbers, Journals etc.

Publication date

ISO completed

Annex V - Internet Searching

Modified Date: 01 December 2006


Internet Patent Searching Guidelines

Introduction

The Internet searching group was asked to investigate the usefulness of the Internet for patent searching purposes and to recommend guidelines with the following constraints:

• Searching is of PCT minimum documentation

• Searching patent information NOT NPL (NPL to be considered later)



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• Limited to sites currently available to examiners ("free sites")

The group collected data on current searching practice and consulted with a technical panel of examiners and senior examiners on the features offered by the sites available.

The following comments and guidelines apply to all original searching.

Usefulness of the Internet

The working group agrees that patent searching on the Internet presents opportunities to reduce costs and improve the quality of our searches but only where that tool is used intelligently to enhance the effectiveness of the standard WPAT or CAS search. In this regard the time resource expended on Internet searching must be regarded in terms of the time saving it will produce in the WPAT or CAS search. Generally this will be by a narrowing of the search field. Internet use without a clear strategic objective is not justified.

Generally the data collected showed that examiners are making appropriate judgements and are receiving benefit from their Internet use. However some feedback suggests that long Internet sessions are being conducted (up to 3 hours) without any benefit identified. Hence it is appropriate to provide some guidelines to assist examiners in their value judgements concerning the Internet.

Security

The Commissioner, Deputy Commissioners and employees of the Patent Office are under legal obligation not to disclose information about matters proceeding under the Act except where required or authorised by the Act, eg at OPI (Section 183). See also Article 30 of the PCT. Our customers rely on these provisions in their commercial and IP strategies and a perceived failure in our confidentiality obligations would have serious implications for our ability to attract searching work and for the prestige of the Office; an actual failure could result in a legal claim for damages.

Before commencing a search on the Internet it is paramount that examiners consider whether their proposed search terms would amount to disclosing the searched invention over the Internet. A selective keyword search, generally associated with mechanical and electrical technologies, is unlikely to disclose the invention. To avoid such disclosure it is best to use only a few search terms, at least initially. The number of search terms can then be increased in stages until an appropriately focused result is achieved. However it is essential to check at each stage that the invention would not be disclosed by the increased number of search terms.

In some areas of chemistry and bio-chemistry, the entry of a specific alloy, compound or gene sequence may disclose the invention over the Internet. Consequently the entry of such terms over the Internet is unacceptable. It is more appropriate to use a dedicated and secure communication medium for this purpose.



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Generally the Internet is an insecure communication channel. Hence it does not matter whether database providers assure confidentiality or not, or whether providers log accesses to their databases or not. The primary issue is the level of security of the communication medium to the database. It may be that the Internet could be made secure if appropriate encryption techniques over the Internet were employed. While such developments may overcome security concerns in the future, the principle to be followed is that we are not to enter anything over the Internet that discloses the invention.

Guidelines

The attached flow chart (Annex V.5) outlines the recommended procedure with guidelines for key decision points. Ultimately the optimum use of search tools for any particular case is dependant on those individual circumstances and examiners are expected to use their professional judgement in conjunction with the views of the three person search team and if necessary in consultation with senior or supervising examiners. The guidelines are repeated below with their explanation.

Will a quick Internet patent search assist in refining or validating the search strategy?

An Internet patent search may be appropriate where:

• IPC doesn't cover invention well

• Not confident about keywords

• US uses different terminology

• Art is largely US based

• Technology is not well understood.

• Search is not dependant on viewing drawings or chemical structures

• "King Hit" citation is very likely

Explanation:

The points listed above are some of a number of situations where the benefits of using the Internet are likely to justify the time spent. It should be remembered that the databases on the Internet are a subset of those available through Derwent and if an Internet search is not likely to produce a change in the eventual WPAT/CAS search strategy, or confirm the validity of a narrowly focused strategy, it shouldn't be done.

Choose Internet site/database.



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Irrespective of the site/database chosen, we are not to enter anything over the Internet that discloses the invention.

Keyword searching: USPTO site (abstract search) is most recommended followed by Espace.

Piggy back searching: IBM site is most recommended followed by USPTO.

Complex Search > 5 Terms

Full Text

Abstract Claim Piggy Annexes V.6-V.8 provide a comprehensive comparative list of features

USPTO

Espace

IBM * * *

*Not recommended

Explanation:

The choice of the internet site used in any particular case will ultimately depend on the nature of that case. However, there are a number of limitations that should be taken into account when deciding which site to use. In summary these are:

USPTO At the USPTO site it is possible to conduct complex searches of US patents on either the abstract database or the full text database. In most cases the abstract search would be adequate. Full text searching is much slower and should only be done in cases where there are good reasons for doing so (perhaps the three person team should be consulted in these cases if a significant amount of time is going to be spent). Claim searching is possible and may be a useful option in some cases. It is possible to do piggy back searches however titles of the prior art are not provided.

Espace In Espace it is not possible to perform a complex search. The maximum number of search terms is about 5. Another major disadvantage is that truncation of the search term is not possible. The major advantage of Espace is that one search can cover patents from the main countries. It can also be useful for searching excluded subject matter that would not be patentable in the US. Piggy back searching is not possible in Espace since the prior art is not listed anywhere as a hyperlink.

IBM The IBM site is a commercial site. Consequently we need to be sensitive to our customers' views about using this site. For instance a patent applicant, who may be a competitor of IBM, may view our use of the IBM site as leading to possible disclosure of their invention to a competitor. The use of the IBM site must be determined with such considerations in mind. The same considerations apply if use of any other commercial site in any other technological field is contemplated.



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At the IBM site it is possible to conduct complex searches of the abstract and claims of US patents and complex searches of the abstracts of EP, WO and JP patents. It is noted that on this site each country must be searched separately.

Piggy back searching is very convenient on this site because the titles of the prior art documents are provided with each patent. This allows scanning of the titles before looking at the abstract of the prior art. This makes the IBM site the preferred choice for piggy back searching. If appropriate, patent numbers can be extracted from a keyword search on USPTO or Espace and then transferred to the IBM site for piggy backing purposes.

Continue Internet search?

Stop if highly relevant art is not found after several set of keywords are entered. Normally the benefit of an Internet search is obtained in the first 10 to 15 minutes.

Any search taking more that 15 to 30 minutes which has not produced significant value should be terminated and the matter discussed with the three person team.

Explanation:

The data collected indicates that best practice lies in short Internet searches that produce either citations or better keywords that help to confine the WPAT/CAS search. Elaborate keyword strategies developed on the Internet (often with the full text option) are usually too narrow to transfer to WPAT and this suggests that the time taken to develop them is not well spent.

There are however rare circumstances when narrow full text searching is appropriate, eg if a key distinguishing feature of a claim is likely to be mentioned only in the detailed description of the prior art.

Piggy backing?

Piggy backing (on the Internet or otherwise) is justified where there is some certainty that better X citations will be found and (if done before the WPAT search) there is some risk that they will not be identified in the WPAT/CAS search.

Explanation:

Piggy backing (or forwarding) is an old technique that is facilitated in many ways by the linking of documents on the Internet, particularly from US reference lists but also from EP and GB search reports. It is however a time consuming activity and should not be done merely because the facility exists. Usually it is done after the WPAT/CAS search and potentially produces highly relevant art that would not otherwise be located. If it is done before the WPAT/CAS search there must be a good indication that better citations will be obtained that allow a narrowing of the subsequent search or that could not be located by



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other means. Using piggy backing to locate documents that are not more relevant or that will be turned up anyway by the WPAT/CAS search is a waste of time.



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Annex W - Obtaining full text from internet


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‘Obtaining’ full text patent documents for ISR’s from the Internet

Background

The section heads group is currently investigating searching and retrieval of patent documents for ISR’s from the Internet. The purpose is to ensure that the best practice is achieved from our use of the Internet. It is expected that a number of Internet sites will be thoroughly investigated and best practice in their use for searching and retrieval will be identified.

As a temporary measure, the section heads group recommend the following as current best practice to examiners for ‘obtaining’ for ISR’s the full text of published patent documents.

Definitions

By ‘obtaining’, is meant viewing the full text of the patent document on-line, printing the full text on-line, or ordering the patent document from ES&S.

For the purpose of this document a distinction is made between a ‘text’ form and an ‘image’ form of the patent document. A ‘text’ form is one comprising text only, without columns, page, and line numbers of the published paper document. Drawings and chemical formulae are not present in the ‘text’ document. On the other hand, an ‘image’ form is an electronic photocopy of the published paper patent document. Drawings and chemical formulae are present in the ‘image’ version.

Practice

Based on the information available at present, we have identified the following as current best practice has been identified. (Examiners should remember that these recommendations are merely reflective of our current understanding about the Internet and may be modified later). The expectation is that examiners will follow current best practice. The starting point for this practice is when examiners, having completed an abstract search, have a short list of abstracts for which they want to obtain full specifications for detailed culling.

Paper copies on file



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The current practice of placing paper copies of the 'image' versions of the citations on file remains unchanged. ‘Image’ versions of patent documents are currently much slower to view and print as compared to the ‘text’ version of the document.

Ordering from ES&S

Examiners should continue to order all the documents from ES&S where they have any doubts about the value of using the Internet.

Culling on line

Examiners should only cull from ‘text’. If the examiner needs to view drawings or chemical formulae then retrieval of the full documents from ES&S is recommended.

This issue of culling on line is currently being looked at and further advice will be given in due course. However, at this stage, it is clear that it would be a waste of examiner time to cull using the ‘image’ version of the document.

Printing on line

Printing of the image from the Internet is more efficient than retrieval from ES&S in the following circumstances.

• if only a few documents are required to be printed for the ISR report,

• if there are only a few pages in each document,

Espace is the recommended site because it is the only site that examiners currently have access to capable of providing high quality for ‘image’ retrieval.

Flow Chart

A flow chart of the current process for obtaining documents for ISR’s is attached.

Observations

The following observations about the 3 major Internet sites are also made:

• The IBM site is currently not suitable for obtaining full text documents because of the poor quality of its images and because its prints contain site references.

• Currently the USPTO full ‘text’ site provides ‘text’ versions of US patents from 1975 without drawings or chemical formulae. While ‘image’ versions are becoming available, the site is not yet reliable.

• Espace has full ‘image’ versions including drawings and chemical formulae of EP, WO and US since 1920. The database contains an English language abstract of the



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patent document from 1975. From 1975, the full text of the patent may come either as ‘text’ and/or as ‘images’ but prior documents may be only available as ‘images’. The image version is as good as the quality obtained from ES&S. The image version is a clean copy in that it does not contain any site references on its pages.

A number of patent sites including USPTO and Espace are currently being looked at in detail. When these investigations are complete, the above practice will be reviewed.



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Annex Z - USPTO kind codes


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Annex Z - USPTO kind codes

"Kind Codes" Included on USPTO Patent Documents

On January 2, 2001, the United States Patent and Trademark Office (USPTO) began printing the World Intellectual property Organization (WIPO) Standard ST.16 code on each of its published patent documents. WIPO Standard ST.16 codes (kind codes) include a letter, and in many cases a number, used to distinguish the kind of patent document (e.g., publication of an application for a utility patent (patent application publication), patent, plant patent application publication, plant patent, or design patent) and the level of publication (e.g., first publication, second publication, or corrected publication). Detailed information on Standard ST.16 and the use of kind codes by patent offices throughout the world is available on the WIPO web site under the links for WIPO standards and other documentation.

In addition, some kind codes assigned to existing USPTO patent documents were changed due to the upcoming introduction of USPTO patent application publications resulting from the American Inventors Protection Act of 1999 (AIPA). The first patent application publications are expected to be published in Mid-March 2001. Thereafter, patent application publications will be published weekly on Thursday. Additional information on the AIPA, including the rules pertaining to publication of patent applications, is posted on the USPTO web site.

The tables below give a summary of the kind codes which are no longer being used on certain published patent documents as well as a summary of the kind codes which will be used on published patent documents after January 2, 2001. It is recommended that USPTO documents be identified by the following three elements: 1) the two-character country code (US for United States of America); 2) the patent or publication number; and 3) the WIPO ST.16 kind code. For example, "US 7,654,321 B1" for US. Patent No. 7,654,321 where there was no previously published patent application publication, and "US 2003/1234567 A1" for U.S. Patent Application Publication No. 2003/1234567, published in 2003. Each year the numbering of published patent applications will begin again with the new four digit year and the number 0000001, so the number of a patent application publication must include an associated year.

Summary of USPTO Kind Codes No Longer Used As of January 2, 2001* WIPO ST.16 Kind Codes

Kind of Document Comments

A Patent Kind codes replaced by B1 or B2

P Plant Patent Kind codes replaced by P2 or P3

Annex AA - Markush Claims


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B1, B2, B3 ... Reexamination Certificate Kind codes replaced by C1, C2, C3 ...

* See the table below for the new uses for codes B1 and B2 beginning January 2, 2001

Summary of USPTO Kind Codes Used on Documents Published Beginning January 2, 2001 WIPO ST.16 Kind Codes

Kind of Document Comments

A1 Patent Application Publication Pre-grant publication available March 2001

A2 Patent Application Publication (Republication)

Pre-grant publication available March 2001

A9 Patent Application Publication (Corrected Publication)


B1 Patent No previously published pre-grant publication

B2 Patent Having a previously published pre-grant publication and available March 2001

C1, C2, C3 ...

Reexamination Certificate Previously used codes B1 and B2 are now used for granted Patents

E Reissue Patent No change

H Statutory Invention Registration No change

P1 Plant Patent Application Publication


P2 Plant Patent No previously published pre-grant publication

P3 Plant Patent Having a previously published pre-grant publication and available March 2001

P4 Plant Patent Application Publication

Pre-grant publication available after March 2001

P9 Plant Patent Application Publication (Corrected Publication)

Pre-grant publication available after March 201

S Design Patent No change


Annex AA - Markush Claims

Annex BB - Article 5/6 Comparisons


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Markush claims were named after Dr Eugene A Markush, the first inventor to use this style of claiming successfully in a US patent. In 1923, Dr Markush filed a patent application claiming a method of preparing a generic group of pyrazalone dyes for wool or silk:

1. The process for the manufacture of dyes which comprises coupling with a halogen-substituted pyrazalone, a diazotized unsulphonated material selected from the group consisting of aniline, homologues of aniline and halogen substitution products of aniline.

The claim was challenged as being too unspecific. On appeal, the US commissioner of Patents ruled on the propriety of such claims. The patent was granted in 1924 as US 1506316.

A group of chemical entities that are considered equivalent for the purposes of the invention are referred to as a “Markush group”. If a compound being patented includes several Markush groups, the number of possible compounds it covers could be vast.

A typical example of a Markush structure would be:

Each of R1, R2, R3, X, Y and Z are Markush groups. The total number of compounds defined by the structure is the numbers of the members of each group all multiplied together.

Extremely broad Markush claims may cover millions of compounds with a single generic structure. Some structures stretch over many pages and contain so many variable moieties that it becomes impossible to visualize what the applicant is seeking to protect.



See the following tables for a comparison of US and EP practice

Article 5 Comparison / Review:



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PCT USPTO EPO

“The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.” (Article 5: The Description)

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” (35 USC Section 112. Note that this covers enablement and written description. Enablement is the relevant consideration here)

“The European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.” (EPC Article 83: Disclosure of the Invention)

“The disclosure of the claimed invention is considered sufficiently clear and complete if it provides information which is sufficient to allow the invention to be carried out by a person skilled in the art as of the international filing date, without undue experimentation.” (PCT GL 5.45)

“even though the statute does not use the term ‘undue experimentation,’ it has been interpreted to require that the claimed invention be enabled so that any person skilled in art can make and use the invention without undue experimentation.” (MPEP 2164.01)

“the description must disclose any feature essential for carrying out the invention in sufficient detail to render it apparent to the skilled person how to put the invention into practice….There are some instances where even a very broad field is sufficiently exemplified by a limited number of examples or even one example... In these latter cases the application must contain, in addition to the examples, sufficient



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information to allow the person skilled in the art, using his common general knowledge, to perform the invention over the whole area claimed without undue burden and without needing inventive skill” (EPO Exam GL at Part C Chapter II 4.9)

“Factors to be considered in determining whether undue experimentation is needed to carry out the claimed invention include:

(i) the breadth of the claims;

(ii) the nature of the invention;

(iii) the general knowledge of a person skilled in the art;

(iv) the level of predictability in the art;

(v) the amount of direction provided in the application, including references to prior art; and

(vi) the amount of experimentation required to carry out the claimed invention on the basis of the disclosure.” (PCT GL 5.47)

“Evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:

1. the breadth of the claims,

2. the nature of the invention,

3. the state of the prior art,

4. the level of one of ordinary skill,

5. the level of predictability in the art,

6. the amount of direction provided by the inventor,

7. the existence of working examples, and

8. the quantity of experimentation needed to make or use the invention based on the content of

Part II.A of the EPO case law sets out the following considerations under sufficiency:

1. Sufficiency is assessed on the basis of the application as a whole- all parts of the application are relevant for assessing sufficiency.

2. Knowledge of skilled person relevant for assessing sufficiency. CGK can be used to supplement the information in an application. References can also be used to enable the skilled person to carry out an invention.

3. Clarity and completeness of disclosure. An invention is in principle sufficiently disclosed if at least one way is clearly indicated enabling the person skilled in the art to carry out the invention, but only if it allows the invention to be



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the disclosure.” [MPEP 2164.01(a)]

performed in the whole range claimed rather than only in some members of the claimed class to be obtained.

4. Reproducibility without undue burden. A reasonable amount of trial and error is permissible, but the skilled person must have at his disposal, either in the specification or on the basis of common general knowledge, adequate information leading to success through the evaluation of initial failures.

Article 6 Comparison / Review:

PCT USPTO EPO

“The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.”

(PCT Article 6: The claims)

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” (35 USC Section 112. Note that this covers enablement and written description. Written

“The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.”

(EPC Article 84: The claims)



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description is the relevant consideration here)

“there must be a basis in the description for the subject matter of every claim and that the scope of the claims must not be broader than is justified by the description and drawings.”

(PCT GL 5.43)

"a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor's obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed." (MPEP 2163)

“there must be a basis in the description for the subject-matter of every claim and that the scope of the claims must not be broader than is justified by the extent of the description and drawings and also the contribution to the art.”

(EP Exam GL Part C, III, 6.1)

“a claim is regarded as supported by the description unless, exceptionally, there are well-founded reasons for believing that the person skilled in the art would be unable, on the basis of the information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed by using routine methods of experimentation or analysis.” (PCT GL 5.44)

“There is a strong presumption that an adequate written description of the claimed invention is present in the specification as filed… Consequently, rejection of an original claim for lack of written description should be rare.” (MPEP 2163)

“a claim should be regarded as supported by the description unless there are well-founded reasons for believing that the skilled person would be unable, on the basis of the information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed by using routine methods of experimentation or analysis.” (EP Exam GL Part C, III, 6.3)

“Support must, however, relate to the features of the claimed invention; vague statements or assertions having no technical or other relevant content provide no basis.” (PCT GL 5.44)

“Support must, however, be of a technical character; vague statements or assertions having no technical content provide no basis.” (EP Exam GL Part C, III, 6.3)

1.2.1 Procedural Outline - International Type Search


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“The examiner should raise an objection of lack of support only if there are well-founded reasons. Where an objection is raised, the reasons, where possible, should be supported specifically by a published document.” (PCT GL 5.44)

The examiner has the initial burden, after a thorough reading and evaluation of the content of the application, of presenting evidence or reasons why a person skilled in the art would not recognize that the written description of the invention provides support for the claims.”

(MPEP 2163)

“The examiner should raise an objection of lack of support only if he has well-founded reasons….. Where objection is raised, the reasons should, where possible, be supported specifically by a published document.” (EP Exam GL Part C, III, 6.3)

1.2 International Type Searching


1.2.1 Procedural Outline - International Type Search

Refer to 5.12 for PAMS processing of International Type Searches

1. Initial processing by COG

2. Completion of examiner details in PAMS by the Examiner

3. Check person requesting search is applicant

4. Determine classification



7. Request written search statement (if applicable)

8. Form 3 person team

9. Search patent literature

10. Search non-patent literature

11. Order relevant non-patent literature from library

1.2.2 Introduction - International Type Searching


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12. Download full copy patent documents (or order from Exam Support & Sales)

13. Assess which documents (incl. AU) to be cited

14. Receive and assess non-patent literature full copies

15. Prepare a cover letter including apology (if required), a Search Report including a written opinion and a Search Information Statement (SIS) using the template in Intelledox

16. Ensure the citations are on the V drive

17. Refer the case for supervision (where applicable)

18. Click SUBMIT in Intelledox and the Send in Exam Corro task and the report will be sent via outbound correspondence.

19. Complete the Edit Ecase/Exam Request task


1.2.2 Introduction - International Type Searching

Note: From 15 April 2013 applicants will only be able to file a request for an Article 15(5) search on a provisional application.

Note: A search report and opinion must be provided for all Article 15(5) search requests filed on or after 1 July 2012. However, for requests filed before 1 July 2012, only a search report will need to be provided.

The optional international-type (or Article 15(5)) search assists prospective PCT applicants in determining, at an early date, whether or not to seek protection for their domestic origin inventions in one or more foreign countries via the PCT route. Thus the purpose of an Article 15(5) search report is to provide the prospective PCT applicant with a list of prior art documents relevant to the field of technology of the invention as broadly defined in claims or a search statement. This information provides assistance to the applicant in assessing the patentability prospects of subject matter contained within a national application.

International-type searches are by definition similar to PCT international searches and similar considerations apply. [PCT/GL/ISPE/8 at para 2.22]

"If the national law of the Contracting State so permits, the applicant who files a national application with the national office of or acting for such state may, subject to the conditions provided for in such law, request that a search similar to an international search ("international-type search") be carried out on such application". [Article 15(5)(a)]

1.2.3 Classification and Search Indication


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The Patents Act 1990 provides authority for such a search to be carried out. The search must be requested within 10 months of making the application and the fee payable is specified in Schedule 7 Part 2 item Schedule 7 Part 2 item 236. [Reg 3.14A]

Should the applicant withdraw the request for an Article 15(5) search before an examiner has taken any action with regard to the request, the applicant may request a partial waiver of the fee, which will be considered in light of the particular circumstances and will generally be 50% of the applicable fee. Upon a request being made, the case will be referred by COG to AGM(ELEC) for consideration.

Note: When the situation arises that a request is made after 10 months, the PCT Unit will contact the applicant/agent to inform them that we cannot guarantee that the search results will be available within 12 months of the priority date. If, notwithstanding this, they still wish to have the search carried out, then the Article 15(5) eCase file will be sent to the relevant examination section.

All reasonable measures should be taken to complete these searches as quickly as possible. The potential consequences of not doing so extend beyond Customer Service Charter issues to the risk of there being financial detriment to the applicant.

The search examiner should aim to dispatch International-type searches within 6 weeks of request date and have the highest priority of all international searching (see Customer Service Charter Timeliness Guidelines for apology time limits). The priority for international-type searches over other searches in the same category is determined by request date order. There may at times be departures from the set time limit where justifiable delays for unity, search statement requests or resources exist.

Where nucleotide and/or amino acid sequence listings are present, the same considerations given in 1.1.18 Nucleotide and/or Amino Acid Sequence Listings apply.



National applications on which an international-type search is requested will usually be:

• a provisional application, but could be

• a complete application for a standard patent, or

• an innovation patent application.

Note: From 15 April 2013 applicants will only be able to file a request for an Article 15(5) search on a provisional application.



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All examination details for PAMS cases are found in 5.12 International Type Searching. The search procedure to be followed is similar to that outlined in 1.1 International Searching. See also 4.1 Searching for information on developing search strategies and the 3PT.

Upon receipt in this Office such requests are forwarded to COG who will:

• acknowledge receipt to the applicant/attorney along with any query relating to search fees

• create an Edit Ecase task corresponding to the Australian application to which the request for an international-type search relates

• check that the search request was made by the applicant

• establish a search request date which will be the date of receipt in this Office where sufficient material exists for the search file to be assigned to the examination branch and full fee payment has been made

• establish the search report completion date as 6 weeks from request date

• assign the Edit Ecase task to the preliminary sorter for reassignment to an examination section.

Basis of Search

On being assigned the Edit Ecase task [see 5.12.1 Overview International Type Searching and 5.12.2 – Entering Art 15(5) Examination Details] the search examiner should check to see that the person requesting the Article 15(5) search is the patent applicant. If this is not the case, the search cannot proceed. The underlying cause when this situation occurs will usually be a clerical error somewhere in the process.

An international-type search shall be carried out on the basis of the claims, with due regard to the description and the drawings (if any). However, if the applicant makes (i) a specific request to search a search statement when both the search statement and the claims are filed together or (ii) files a later search statement the search is to be carried out on the basis of the search statement – see 1.2.8 Search Report. A provisional application which does not include claims may be the subject of an international-type search based only on the description and drawings. In this situation the applicant will usually provide a search statement with the search request.

Where a search is carried out on the basis of a search statement provided by the applicant, the search is not to be conducted on the basis of the search statement in isolation. In formulating the search, the search statement must be considered in the context of the specification as a whole.



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Where there is difficulty in determining the subject matter area which the applicant desires to be searched, examiners must avoid the temptation to perform a search simply because they can and thus provide a search report that cites documents from a range of technologies and/or cites documents that read onto the search statement but none of the embodiments. Examiners should not commence the search but should, following consultation with a senior examiner, advise the applicant of the situation and request them to provide a written search statement (see 5.12.3 Requesting a Search Statement).

If no reply is received within one month, the examiner in consultation with a senior examiner, will send a reminder letter to the applicant. If after a further month there is still no reply, or the reply does not indicate any likelihood that a search could be undertaken in the near future, then the examiner, with the supervising examiner's concurrence, will send a letter to advise the applicant that no search will be carried out and although IP Australia is unable to refund the fee paid for the filing of the request under regulation 3.14A - see IP Australia's Refund Policy - they may request a partial waiver of the fee, which will be considered in light of the particular circumstances and will not generally exceed 50% of the applicable fee. Once the letter has been sent, the examiner can then complete the Edit Ecase task in PAMS. Upon a request of a partial waiver of fee being made, the case will be referred to AGM (ELEC) for consideration.

Product by Process Claims

These types of claims are for the purposes of an international-type search report to be interpreted in accordance with the PCT guidelines – see 1.1.7.1.1 PCT Guideline References and Flow Chart.


All details of the search must be recorded on the Search Information Statement (SIS), which should then be placed on the file. This includes details of all patent and non-patent literature searches, as well as searches conducted on the internet. The names of the members of the three person team should also be recorded. See 4.1 Annex F for information on when a SIS must be completed. Further information on the SIS and instructions for its use are provided at 4.1.6 Recording the Search Details and 4.1 Annex D Search Information Statement (Instructions for Completing the SIS).





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An international-type search may be established on one invention only for each fee that is paid (Schedule 7 Part 2 Item 236).

The examiner will consider the question of unity of invention in the same way as for a normal international search (see 1.1.4 Unity of Invention) and the following procedure applies:

• If the examiner considers there is lack of unity, the examiner, with prior approval of the Supervising Examiner will write a letter to the applicant advising that the application does not comply with the requirements of unity of invention, giving reasons, inviting an indication of which invention is to be searched and advising that we are prepared to search one or more of the other inventions upon payment of a 15(5) search fee for each invention for which a search is required. The letter is to be prepared using the “Create Corro” function in PAMS (see 5.12.3 Requesting a Search Statement). The Supervising Examiner will also add a case note to the ecasefile using a QA form indicating their approval.

• No further action is to be taken by the examiner until a reply has been received from the applicant. If no reply is received within one month, the examiner will send a reminder letter to the applicant. If after a further month there is still no reply, or the reply does not indicate that the search could commence in the near future, then the examiner, with the supervising examiner's concurrence, will send a letter to advise the applicant that no search will be carried out and although IP Australia is unable to refund the fee paid for the filing of the request under regulation 3.14A - see IP Australia's Refund Policy - they may request a partial waiver of the fee, which will be considered in light of the particular circumstances and will not generally exceed 50% of the applicable fee. Once the letter has been sent, the examiner can then complete the Edit Ecase task in PAMS. Upon a request of a partial waiver of fee being made, the case will be referred to AGM (ELEC) for consideration.

• The basis of any search actually conducted will be indicated on the first sheet of the report (see Annex C).

Note: See Customer Service Charter Timeliness Guidelines for time limits to issue the international-type search report.



The considerations described in International Searching - 1.1.6 Subjects to be Excluded from the Search apply equally to International-type searches. However, form PCT/ISA/203 is not applicable to international-type searches and is not to be used.

Where the examiner considers that the application relates to excluded subject matter to the extent that it is inappropriate to conduct the search, the matter should be discussed with a

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senior examiner and confirmed by the supervising examiner. The examiner should then write a letter addressed to the applicant advising that an international-type search report will not be established on the application, and give the reasons. The letter should also state the following:

"In view of our finding that your application contains no patentable subject matter, you may, if you wish, withdraw the application. Please note that IP Australia is unable to refund the full fee paid for the filing of the request under regulation 3.14A - see IP Australia's Refund Policy. However, IP Australia will provide a partial refund of $750 of the applicable fee. This will be processed in due course.”

The supervising examiner is the "Authorised Officer" for this letter and must add a case note to the file i.e.:

Partial refund - Article 15(5) search fee

In accordance with the Commissioner’s practice I approve a partial refund of the Article 15(5) search fee:

Amount: $750

Reason: Application unfit subject matter for a search and/or is unsearchable:

Supervising examiner’s name

Position title

Date

The examiner should then complete the exam corro task, print and dispatch the letter, and reassign the edit Ecase task to COG. When reassigning the task to COG (see 5.12.9 Reassigning the Art 15(5) Tasks to COG) a comment needs to be included indicating that a partial refund of the Art 15(5) fee is required.

COG will process the refund.

Any additional issues relating to fee waivers including requests for refunds over $750 should be referred to the Assistant General Manager (Electrical).

As indicated in 1.1.6 Subjects to be Excluded from the Search, the search is done where practicable. If the search is conducted for some of the claims or aspects of the application but not for others because they relate to excluded matter, the reason for non-establishment of the report in relation to those claims or aspects should be detailed in Box No. II.

Note: A similar procedure to the above is to be followed where a meaningful search is not possible – see 1.2.6 Obscurities, Inconsistencies or Contradictions.




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A similar procedure to that given in 1.2.5 Subjects to be Excluded from the Search is to be followed where the search examiner considers that a meaningful search is not possible because of obscurities, inconsistencies or contradictions in the specification, to the extent that it is impossible to arrive at a reasonable conclusion as to the scope of the claimed invention.


1.2.7 Abstract and Title

The considerations which apply to an international application in this regard do not apply to a national application and the examiner will take no action in the event that a title or abstract is absent or unsatisfactory.


1.2.8 Search Report

Following completion of the search, examiners should reconsider the classification in the light of the search results and prepare an International Type Search Report guided by the instructions in Chapter 10 of the PCT Search and Preliminary Examination Guidelines. A blank Article 15(5) search report form is shown in Annex C.

Note: In view of the effort required and because international-type search reports are never published internationally, it is not necessary to provide family member listings .

Although there is no PCT-imposed time limit for the establishment of the report, examiners are responsible for ensuring that no unavoidable delays occur. The target time for completion of Article 15(5) searches is 6 weeks from receiving the search request (see Customer Service Charter Timeliness Guidelines for apology time limits). The usefulness of the search may be diminished for future applications after 12 months from the priority date of the subject application.

The first sheet of the International Type Search Report will indicate the total number of sheets in the report. Blank sheets will be omitted from the report.

The report must include the same level of detail with respect to identification of relevant passages of the citations as an International Search Report; see 1.1.12.5.2 Citation Category. Phrases such as “whole document” and “see figures” should be avoided and reference to specific and relevant passages of the cited document included.

Generally speaking, where the application on which an international-type search is requested includes claims, the claims should be reported on against the documents cited in

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the search report by filling Box C “Relevant to claim No.” of the search report. However, if the search has been conducted on the basis of a search statement and the search statement does not include claims, Box C “relevant to claim No.” of the search report, and the STATEMENT box of the opinion, are to be left blank.

Note: The 15/5 search report should provide a list of prior art documents as indicated at paragraph 1.2.2. This list should include documents which provide a useful background to the current state of the art (which may be category “A” documents), even if a particularly relevant category “X” document (i.e. a so-called “king hit”) is identified. This is consistent with the use of the 15(5) search to assist the applicant in deciding at an early stage whether they should seek protection through the PCT route.



A blank Article 15(5) search report form is shown in Annex C. The Search Report and Opinion are completed using Intelledox. See 4.11.4 Article 15(5) Searches and 5.12 International Type Searches for further instructions.

Front Sheet

Bibliographic Information

All bibliographic information including National Application No., Country or Office of Filing, Applicant’s or Agent’s file reference, Filing date, Priority Date and, Applicant for international-type search will be automatically extracted from PAMS, and entered on the front sheet.

Total number of sheets

Upon completion of the Report, the number of sheets will be automatically calculated and entered on the front page in the relevant place.

Items 1a.

If the search was based on claims, cross the upper box under item 1a and enter claim numbers.

If the search was based on a search statement filed by the applicant, cross the lower box under item 1a and provide the search statement in a Supplemental Box.



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Items 1b., 2-4

Cross boxes as applicable.

Box No. I Nucleotide and/or amino acid sequence

See “Nucleotide and/or amino acid sequence listings” in 1.1.12.3 General Details.

Box No. II Claims found unsearchable

See

• Subjects to be excluded from the search. Refer to 1.2.5 Subjects to be Excluded from the Search

• Broad claims; multitudinous claims. See 1.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6

• Omnibus Claims [Rule 6.2(a)] see 1.3.8.8 Box VII Certain Defects

Box No. III Lack of Unity

The international type search report is completed so as to clearly establish the extent of the search actually performed. Where lack of unity has been found, Box 3 of the first sheet is to be checked and Box III of the report is to be completed, irrespective of whether a letter to the applicant was written advising that the application did not comply with the requirements of unity of invention. See 1.2.4 Unity of Invention

The search report must indicate the separate inventions present in the national application, whether additional search fees were requested and paid, and which inventions were searched.

Second Sheet of the Search Report

Box A Classification of Subject Matter

See “ Classification of Subject Matter: IPC Symbols ” in 1.1.12.3 General Details



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Box B Fields Searched

See 1.1.12.4 Fields Searched

If the text does not fit in the “Electronic data base” box in the pdf preview, cross the “Move text to supplemental sheet” checkbox in Intelledox. All the text will be moved to the supplemental box when the report is generated. See 1.2.10 Annex C.

Box C Documents Considered to be Relevant

See 1.1.12.5 Documents Considered to be Relevant

Written Opinion

The opinion must include the same level of details with respect to the cited documents as in ISO/IPEO/IPRPII. See 1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability, and 1.3.8.7 Box VI Certain Documents Cited.

It is to be noted that International Type Search and Opinion Form does not include Box VI (Certain Documents Cited) as found in ISO/IPEO/IPRPII, and therefore any relevant P and E category documents will need be discussed under the headings Novelty and/or Inventive Step, as applicable, under Citations and Explanations.

If the search was based on a search statement provided by the applicant, then the following items should be left blank:

• International-Type Search report: “Relevant to claim No.” under Box “C. DOCUMENTS CONSIDERED TO BE RELEVANT”

• Written Opinion: “STATEMENT” under “Reasoned statement with regard to novelty, inventive step or industrial applicability; …”

Supplemental Box

Search statement

If the search was based on a search statement filed by the applicant, the search statement is to be provided here.

Continuation of Box III

Procedural Outline - Written Opinion of the ISA and International Preliminary Examination


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Where lack of unity has been found, provide the details of separate inventions present in the national application.

Other Observations

Any defects in the form or content of the national application will be noted here. For matter that may be required to be noted here see 1.3.8.8 Box VII Certain Defects.

Specific issues of clarity of claims, description and drawings and whether the claims are fully supported by the description will also be noted here, see 1.3.8.9 Box VIII Certain Observations.

Electronic data base consulted during the international-type search (continuation)

If the “Move text to supplemental sheet” checkbox is crossed, all the text in the “Electronic data base” box will appear here.

1.3 International Examination


Procedural Outline - Written Opinion of the ISA and International Preliminary Examination

1. Initial processing (for international preliminary examination only)

2. The "report establishment" date (for international preliminary examination only)


4. Consider validity of amendments (for international preliminary examination only)


6. Consider ordering priority document

7. Consider clarity and descriptive support

8. Consider novelty, inventive step and industrial applicability

9. Note formality deficiencies

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10. Prepare a written opinion on form PCT/ISA/237 (ISO) or PCT/IPEA/408 (IPEO) or establish a report on PCT/IPEA/409 (IPRPII)

11. PCT Unit actions on opinions

12. Consider response to IPEO

13. Establish the IPRPII on form PCT/IPEA/409

14. Complete a Notification of Transmittal form PCT/IPEA/416 for IPRPII

15. Final processing by the PCT Unit


1.3.2 Introduction International Examination

The following procedures relating to international examination are supplementary to the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/8) and are intended to facilitate an understanding and application of the Guidelines by highlighting the essential steps to be taken by examiners and by directing their attention to the relevant passages of the Guidelines, PCT Articles, Rules and Administrative Instructions.

These procedures are to be used for international applications that were originally filed either at RO/AU, or any other country such as RO/NZ for which Australia is a competent International Searching Authority (ISA) and/or International Preliminary Examining Authority (IPEA) (see 1.10.6 Current Status of APO AS AN RO ISA and IPEA) as long as AU is the specified ISA and/or IPEA. The search may have been performed by another ISA.

Also, IP Australia acts as an ISA and IPEA for international applications filed with the USPTO. These applications are to be treated the same as any other international application for which AU is the ISA and/or IPEA. However, IP Australia will only act as an IPEA for international applications filed with the USPTO where we functioned as the ISA. COG should identify any excluded applications prior to the applications being forwarded to Examination sections. All excluded applications must be referred to Assistant General Manager B who will advise COG if an examination will not be conducted by IP Australia. COG will notify the USPTO using form PCT/ISA/224.

The Guidelines are formulated to comply with the Regulations under the PCT in force from 1 January 2004. They thus apply to all PCT applications filed on or after this date. Such applications are readily differentiable from those PCT applications filed prior to 2004 by the year component of the international application number PCT/AU20xx/123456 used on all official communications, publications and other official documents applying from that date.

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Note: The expanded numbering system PCT/AU/20xx/123456 and WO 20xx/123456 took effect from 1 January 2004, and in the case of Australia applies to all official communications, publications and other official documents in respect of all PCT application numbers and publication numbers whether the PCT application was filed before or after that date. The citing of pre 2004 documents in the new format extends to the citing of such documents in reports and opinions, even if the document has been cited in an earlier opinion or report according to the old format. However, the old numbering system will be retained for data held in the mainframe computer (PATADMIN, etc). This applies even for applications filed from 1 January 2004.

The primary objective of international examination is to formulate a preliminary and non-binding opinion on the questions of whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable. A secondary objective is to identify whether the claims appear to have any defects in the form or contents of the international application, the clarity of the claims, the description, and the drawings, or whether the claims are fully supported by the description. [Article 33(1) PCT/GL/ISPE/8 at para 3.02 and 19.02]

The purpose of a written opinion, issued by the International Searching Authority is to give a primary indication to the applicant of the defects which the examiner considers to exist in the application. The opinion should be drafted in such a manner as to facilitate further international preliminary examination of the international application should it be amended, and, in particular, to avoid the need for extensive re-reading should the examiner wish to issue one or more additional written opinions during the international preliminary examination. The report should be set out so that it will be easily used by designated offices.

1.3.3 The Demand and IPRPII



The objectives of international examination (see MPP 1.3.2) are achieved by establishing, firstly, a Written Opinion of the International Search Authority (ISO), which, provided no Demand is filed for international preliminary examination, is converted by the International Bureau (IB) into an examination report entitled "International Preliminary Report on Patentability (Chapter I)" (IPRPI) and issued 30 months after the priority date of the application.

For many PCT contracting States that do not have an examining capability this examination report serves as the only examination report in relation to the particular application. The ISO therefore serves an important role and the examination must be carried out according to a high standard.



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If international preliminary examination is demanded, the objective of international examination is achieved by establishing an examination report entitled "International Preliminary Report on Patentability (Chapter II)" (IPRPII).

The IPRPII is issued at 30 months after the priority date, as with the IPRPI. No IPRPI is issued if international preliminary examination occurs. The IPRPII should be preceded by at least one written opinion of the International Examining Authority (IPEO) if and only if important matters arise. Unimportant matters, even if recognised, are not to be raised in international preliminary examination.

The international preliminary examination will normally be performed by the examiner who did the ISR and the ISO. If this examiner is not available and another examiner authorised the ISR, then this examiner should perform the examination. If this examiner is also not available, the section which has current responsibility for the relevant IPC subclass is responsible for the conduct of the international preliminary examination.

When unforeseen circumstances arise, such as the examiner being unexpectedly absent within the anticipated time frame, and this is likely to prevent an international preliminary examination action being completed within its target time, counter measures should be adopted where practical. For example, transferring the case file to another examiner for completion should be contemplated.

Note: The examiner responsible for the international preliminary examination must ensure that, under normal circumstances, an IPEO or IPRPII is established within the 20 working day time frame allowed by the Customer Service Charter Timeliness Guidelines. The examiner must also allow at least three days for the PCT Unit to process the IPEO or IPRPII. The 20 working day period begins on the date of the start of international preliminary examination (Rule 69), the date a response to a previous opinion is filed, or the date of the most recent Office action (such as where the PCT Unit forwards the case file to the examiner when there has been no response to an IPEO), and ends on the date of dispatch from IP Australia. If an invitation to pay an additional examination fee is issued, the 20 working day period starts on the date that fee is paid. If the IPEO or IPRPII is not established within the time frame stated above, an apology must accompany the opinion/report.

Quality assurance should be given a high priority. Thus:

• third and subsequent IPEOs, and

• adverse IPRPIIs issued after a second IPEO - but only if the report is issued following a response to the previous opinion

are, as a matter of practice, to be referred to supervising examiners for review before transmission.

Supervising examiners do not, however, need to routinely supervise:



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• adverse IPRPIIs that are issued after a second opinion without a response to the previous opinion having been received, and merely repeat the substance of that previous opinion;

• IPRPII's generally; or

• ISO's.

Before international preliminary examination has commenced, the applicant may make amendments according to Article 34.2(b) and the international preliminary examination shall initially be directed to the claims, the description, and the drawings, as contained in the international application at the time the international preliminary examination has commenced, including any amendments made according to Article 19 (claims only), to the extent that they are not superseded or reversed by the amendments under Article 34.2(b). [Article 19 Article 34.2(b) Rule 66.1]

In the case of the ISO, there is no provision in the PCT to amend the claims, description or drawings up to this stage in the life of a PCT application when the ISO is produced, other than to correct an obvious error under Rule 91. A Rule 91 amendment does not alter the scope of the claims, description or drawings.

International preliminary examination involves the following steps:

1. The applicant demands international preliminary examination.

2. The Demand is submitted directly to the competent IPEA (but see paragraphs 22.02 - 22.05 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/5) concerning Demands not submitted to the competent IPEA); that IPEA conducts the international preliminary examination which is essentially directed to the questions whether the claimed invention is new, involves an inventive step (is non-obvious) and is industrially applicable.

3. The IPEA may issue one or more written opinions, and the applicant and the IPEA communicate with each other during the international preliminary examination, and the applicant is given at least one opportunity to amend the claims, the description, and the drawings. The IPEA issues its report which does not contain any statement on the question whether or not the claimed invention is or seems to be patentable according to the law of any country; it merely states-by a "Yes" or "No"-in relation to each claim whether such claim seems to satisfy the said three criteria and each such statement is accompanied by citations and other explanations (see paragraph 3.23 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/5)) finally.

4. The report and, where requested, copies of the documents cited therein which were not cited in the ISR, are communicated to the applicant and the national Offices of the States in which the applicant wishes to use the IPRPII ("elected States").

1.3.3.2 Timeframe for Demand and IPRPII


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The first international preliminary examination action will either be a second IPEO (as the ISO is treated as the first IPEO) or an IPRPII (see 1.3.5 First IPE action for further guidance).



The applicant must file the Demand with the competent IPEA before the expiration of the later of the following time limits [Article 17(2)(a) Rule 43bis.1]:

• three months from the date of transmittal to the applicant of the ISR and ISO established under Rule 43bis.1, or of the declaration referred to in Article 17(2)(a) that no ISR will be established (and, the ISO established under Rule 43bis.1); or

• 22 months from the priority date of the international application.

See Annex P for a timeline of typical international application process from first filing to National Phase Entry.

Demands for international preliminary examination are received by the PCT Unit, which in turn notifies the IB [Article 31 Rule 61.1] provided that:

• the applicant has not indicated on the Demand that examination is to be postponed,

• copies of any amendments referred to by the applicant are available, and

• all other formal requirements have been met.

The PCT Unit will then forward the file to the Examination section with current responsibility for the relevant class once the formal "start" date for international preliminary examination is reached.

Otherwise the file will be so forwarded when the amendments become available or after expiration of the appropriate time limits.

The International Preliminary Examining Authority normally starts the International Preliminary Examination (the “start” date) when See [PCT/GL/ISPE/6 at para 3.13]:

a. it is in the possession of:

• the demand,

• the amount due (in full) for the handling fee and the international preliminary examination fee, including, where applicable, the late payment fee under Rule 58bis.2,

• if the applicant is required to furnish a translation under Rule 55.2, that translation,



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• either the ISR and, the ISO established under Rule 43bis.1, or a notice of the declaration by the ISA under Article 17(2)(a) that no ISR will be established,

and b. the time limit within which the applicant was permitted to file the Demand (see above and PCT/GL/ISPE/6 at para 3.07) has expired. That is, when the applicant has filed the above, the formal start date for international preliminary examination is the expiration date of the time limit for filing the Demand (normally 22 months from the priority date) unless the applicant has expressly requested an earlier start and has met the above conditions. Where an ISO which has been prepared by another authority is not on file, the examiner is to contact PCT unit and ask them to request the ISO from the IB, and wait until they receive the ISO before carrying out international preliminary examination.

However, exceptions to this requirement can arise in the following cases [PCT/GL/ISPE/6 at para 19.08]:

1. An international preliminary examination may, if that national Office or intergovernmental organization that acts as the ISA and IPEA so wishes, start at the same time as the international search, provided that the examination is not to be postponed according to the statement concerning amendments. The ISO will still be issued by the ISA, with subsequent opinions and the IPRPII issued by the IPEA. The only exception to this is if the ISO would be "clear", in which case the IPEA will issue an IPRPII instead of a clear IPEO.

2. Where the statement concerning amendments contains an indication that amendments under Article 19 (see Article 19 or Article 34(2)(b) Amendments) are to be taken into account (Rule 53.9(a)(i)), the IPEA does not start the international preliminary examination before it has received a copy of the amendments concerned. [Rule 53.9(a)(i)]

3. Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (Rule 53.9(b)), the IPEA does not start the international preliminary examination before whichever of the following occurs first [Rule 53.9(b)]:

• it has received a copy of any amendments made under Article 19

• it has received a notice from the applicant that he does not wish to make amendments under Article 19, or

• the later of three months from the transmittal of the ISR and ISO or of the declaration that no ISR will be established, or the expiration of 22 months from the priority date

4. Where the statement concerning amendments contains an indication that amendments under Article 34 (see Article 19 or Article 42(2)(b) Amendments) are submitted with the Demand (Rule 53.9(c)) but no such amendments are, in fact,

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submitted, the IPEA does not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1(g) has expired, whichever occurs first. [Rule 53.9(c)]

These examination procedures before the IPEA are set out in detail in Chapter 19 of the PCT International Search and Preliminary Examination Guidelines. (PCT/GL/ISPE/6) [Rule 60.1(g)]

PCT applications are deemed amended when the applicant files amendments (i.e. the familiar concept of "proposed amendments" in national examination does not exist).

The IPRPII must be established within [Rule 69.2 PCT/GL/ISPE/6 at para 3.24]:

• 28 months from the priority date

• six months from the time provided under Rule 69.1 for the start of the international preliminary examination

• six months from the date of receipt by the IPEA of the translation furnished under Rule 55.2.

whichever expires last.

The start date of the international preliminary examination is determined by Rule 69.1.

The report establishment date can be found in the Final Date for Action Type field of the eCase ‘~PCT EXAM’ Properties screen (see 4.9.3.2.5.4 PCT Exam Object).

So far as Australia is concerned, while it is in the international phase a PCT application effectively proceeds as both an application for a patent and for a patent of addition. An indication of the form or form(s) of protection in respect of which a PCT application is made is only effective when the indication is given to a designated Office when performing the acts required for national phase entry (although reference to a parent application can be made in the Request). Our systems do not recognise an application as being for one or another form of protection until entry into the national phase has occurred.

The following chapters deal with subjects as they would arise in the course of international preliminary examination.

1.3.4 Top-up Search



The International Preliminary Examining Authority is required to conduct a top-up search in each case on which a Demand has been filed, except where it is considered that the proposed search would “serve no useful purpose” i.e. where the prior art that might be found



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would be superfluous in light of the documents already identified, or the art to which the application relates is such that the finding of better citations is considered very unlikely.

No top-up search is required to be conducted for cases where the Demand for International Preliminary Examination was filed prior to 1 July 2014. For cases where the demand was filed on or after 1 July 2014, a top-up search would be conducted only once before carrying out the International Examination.

Objective of a top-up search

• The objective of a top-up search is to discover prior art which was published after the date of International Search and is relevant to the determination of whether the claimed invention is lacking in novelty or an inventive step.

Decision to conduct a top-up search

• The primary responsibility for making a decision to carry out a top-search lies with the examiner conducting the international preliminary examination.

• In making a decision, examiners should exercise their judgement mainly based on the results of the International Search and their knowledge of the technology in question. If the International Search has already discovered category X citations against most of the claims, there may be little benefit in conducting a top-up search. A top-up search may also not be appropriate for slow changing technologies. On the other hand, if the documents found during the International Search are category A only or the technology in question is fast changing, a top-up search may discover relevant citations.

• If the examiner decides against conducting a top-up search for a particular case, the decision should be confirmed by discussion with a Senior Examiner. The examiner should then record their decision by adding a note to the INTESS case file. Detailed reasoning is not required.

Method for a top-up search

• Top-up searching should be predominantly performed by using the earlier search strategy for the period one month prior to the date of International Search until the date of filing the demand.



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• There is no requirement to form a three person search team for conducting a top-up search.

• Examiners should follow the instructions provided in MPP 1.3.4.2 to determine the cost of each top-up search for the purpose of data collection.

Note: EPOQUE counters must be reset PRIOR to conducting the search.

Note: A top-up search should not be confused with an additional search which is conducted when an earlier search is considered to be inadequate and /or the scope of the claims has changed substantially due to amendments. In most cases, an additional search would require the formation of a three person team.

Completing SIS, Written Opinion-IPEO and IPRPII

• A Search Information Statement (SIS) is required to be completed whenever a top-up search is carried out regardless of the relevance of the documents discovered in the search.

• Where a top-up search has been performed using the earlier search strategy either directly or by a simple modification thereof, a truncated SIS may be completed rather than a complete SIS.

• A truncated SIS will, identify the nature of the search strategy performed by referring to the earlier SIS, any modifications to the search terms, and indicate the restricted period of the top-up search.

• No indication that a top-up search has been conducted is required when completing the Written Opinion of the International Preliminary Examining Authority (Form PCT/IPEA/408) However, if any useful documents are found in the top-search, they must be raised in Box V of the opinion as new citations.

• Item 6 of Box 1 of the International Preliminary Report on Patentability (Form PCT/IPEA/409), will be completed to indicate whether a top-up search was carried out by the examining authority and whether any relevant documents were discovered in that search.

Note: Where a top-up or additional search is conducted and a Search Information Statement (SIS) generated with the second opinion, no further SIS relating to this search action is required accompanying third and higher opinions or the related IPRPII. (see 4.11.6.2 Creating an IPE Written Opinion (PCT408) and 4.11.6.3 Creating an International Preliminary Report on Patentability (IPRPII) (PCT409))

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Data Collection

It has been decided to collect data relating to top-up searches to inform us of the effect of these searches and considerations flowing therefrom in terms of time taken, online costs etc.

The examiners are required to complete a questionnaire through “Survey Monkey” each time they consider conducting a top-up search regardless of whether the top-up search was conducted or not. The “Survey Monkey ” can be accessed by clicking on the following link:

https://www.surveymonkey.com/s/TTYDFB6

Privacy Statement

IP Australia does not intend to collect any personal information via this survey. The results of the survey will only be used to identify the following:

i. % of cases where top-up search was conducted;

ii. technological areas in which the top-up searching was found to be useful;

iii. relevance of the documents found; and

iv. resource requirements, such as examiner time/on-line costs.

If, however, you choose to provide information that may identify you, such information will be handled in accordance with the Privacy Act 1988 and IP Australia’s Privacy Policy.


1.3.4.2 Determining Cost of a Top-up Search on EPOQUE

When you have logged into EPOQUE the SEA bar is displayed. The two cost counters are seen in the top row.

1. Right-click on any of the coloured boxes and select Interaction Counters | Reset Counters.

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Result: This will reset both figures to zero. (A local pc reset indicator, not reset in Europe which has monthly accounts)

2. Do your search.

3. On completion and closing of your search, look above the SEA bar

If you forget and log out, don’t worry, simply log back in again, the interactions/cost data will still be showing.

• Looking at the top of this SEA bar, the example above has 29 Queries and 212 Others. QT (Query Transaction), OT (Other Transactions) and TOTT (Total Transactions) are the measures of EPOQUE usage. 15 OTs is equivalent to 1 QT TOTT = QT + OT/15. 1 TOTT is charged at €0.85.

The cost of this search is = 0.85 * (29 + (212/15)) = €36.66 Euros.

(Queries are typically search statement lines, Others are typically ..hi commands, ..li commands, and number of items viewed in Viewer (e.g. – Viewing one abstract/full text on LHS and 2 images on RHS = 3 Others) )

(Viewing the same doc from a drawer will incur an extra 3 Others each and every time the doc is viewed)

1.3.5 First IPE action





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The first IPE action will be either an IPRPII or a second written opinion depending on the circumstances. In this regard the ISO (whether produced by the Australian Patent Office or some other International Authority) is deemed, for Australian purposes, to constitute the first written opinion of the international preliminary examination.

See Form PCT/IPEA/237 (Written Opinion-ISA) for a completed example of form PCT/ISA/237.

At the commencement of international preliminary examination at 22 months after the priority date of the application the examiner will again consider the PCT application using the guidance contained in 1.3.8 Completing ISO, IPEO and IPRPII Forms and 1.3.9.3 General Notes on Form Completion and PCT Guidelines 17.06 provided that the applicant has filed amendments under Article 19 or 34C and/or submissions responsive to the ISO. If a second written opinion is required the examiner will complete form PCT/IPEA/408 and set the time limit for response at two months (one month for subsequent changes - see 1.3.4 Timeframe for Demand and IPRP). However, if a response to the second written opinion is not received an IPRPII is not to be established until one month before the final date for that to occur, and account must be taken of any response filed before the report is established - see 1.3.6.1 Response to Opinion

Note: For issues related to Article 19 or 34 amendments resulting in gaps in numbering of the description pages, claim numbers and/or drawing sheets, See PCT Guideline 17.22. For issues related to Article 19 or 34 amendments going beyond original disclosure, See PCT Guidelines 17.23 and 20.10-20.19.

If the applicant does not file amendments and/or submissions responsive to the ISO before the IPE start date (see 1.3.4 Timeframe for Demand and IPRP), then in view of the fact that the Demand will be, in effect, a response to the first written opinion, the Report is to be established immediately on the basis of the ISO. The only exception to this is if the examiner is certain that a finding made in the ISO is incorrect, in which case a second written opinion should be issued.

Where issues arise as to the completeness of the demand, e.g. submissions and/or Article 34 amendments referred to but not included, these will be handled by the PCT Unit and the file forwarded to the Examination section only after any further time allowed for filing the amendments or submissions has expired (usually one month). Consequently once the file has been transferred to the Examination section it will be ready for examination to proceed and no further extension of time is to be given by the Examiner.

Note: Requests by applicants for the examiner to defer examination or to issue an opinion instead of an IPRPII (other than when an examiner agrees the ISO was incorrect) should be refused.



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Occasionally the applicant may refer to or submit Art 19 amendments when they file the Demand. When Art 19 amendments are referred to or submitted with the Demand and no evidence exists on file that Art 19 amendments had been received by the IB, the PCT unit should check at the WIPO’s “PatentScope” website (WIPO’s International Patent Applications “Advanced search” website) for an indication or other evidence that the IB has received the Art 19 Amendments. If the amendments are confirmed to have been received then the file is sent for examination as per the normal process. If there is no indication or evidence of any such filing of Art 19 amendments, the PCT unit should send a letter to the applicant seeking clarification as to whether they want examination to proceed disregarding the amendments filed with the Demand, or that they want to convert the amendments filed with the Demand to Art 34 amendments and examination to proceed having regard to the converted amendments. The PCT unit should retain the case until a response is received from the applicant. If Examiners cannot determine if the Art 19 amendments have been received from the IB they should contact the PCT unit for confirmation.

Where there are no matters arising from 1.3.8 Completing ISO, IPEO and IPRPII Forms and 1.3.9.3 General Notes on Form Completion, requiring an IPEO to issue, proceed to establish the IPRPII - see 1.3.7 IPRPII and Notification

Note: Although, in principle, international preliminary examination is based on the documents cited in the ISR, the examiner should not be deterred from looking for additional relevant documents which they personally know, or have reason to suspect, exist, if the examiner can locate such documents in a short time from material available to them. Such documents shall be considered on the same footing as the documents cited in the ISR, and mentioned in the IPEO.

When using Intelledox to create the opinion or report, the following details are automatically filled in on the form (for further details on completing this part of the IPEO or the IPRPII form see 1.3.8 Completing ISO, IPEO and IPRPII Forms):

• Address for correspondence

• Applicant's or agent's file reference

• International filing date

• Priority date

• Applicant

Note: 1. Examiners must check the latest correspondence on file to ensure that all PCT Rule 92bis changes have been recorded by the PCT Unit.

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2. If any of the above application details have been updated, the examiner must enter the latest updated detail in the form. 3. Two compulsory boxes on the first sheet of the IPEO or ISO, in Item 2, will be crossed automatically on the Word Processing Template. The two compulsory boxes are: Box I - Basis of the opinion, Box V - Reasoned statement under Article 35(2) d). 4. If there is insufficient space in any Box provided, use a Supplemental Box sheet(s), remembering to indicate the Box number I-VIII from which it is a continuation. 5. Any document cited in an IPEO that was cited in the ISR may be cited in a shortened form, provided that the reference to the document is unambiguous. Any document cited in the IPEO which was not cited in the ISR shall be cited in the same form as required under Section 503 for ISR's. Similarly all documents cited in the ISO may be cited in shortened form. [Ad. Inst. 503 Ad. Inst. 611]

Claim groupings used in an ISR in accordance with 1.1.11 Search Procedure, are not automatically transferable to an ISO, IPEO or IPRPII. For example, a citation may have been accorded an "X" category because it is a novelty citation or an inventive step citation.

Guidelines for the considerations for items for Boxes I-VIII in the opinion are given in 1.3.8 Completing ISO, IPEO and IPRPII Forms and 1.3.9.3 General Notes on Form Completion.

See Form PCT/IPEA/408 (Written Opinion-IPEO) for a completed example of form PCT/IPEA/408.


1.3.5.2 Supplementary International Search Report

From 1 July 2017, applicants will have the option of requesting a supplementary international search in relation to any international application for which the 22 months period under Rule 45bis.1(a) has not expired by that date. The supplementary search will be conducted by a different Authority to the one which conducted the main international search.

The examiners should note that any supplementary international search reports which are transmitted to IP Australia in sufficient time should be taken into account for the purpose of the written opinion or international preliminary examination report as if they were a part of the main international search report. On the other hand, supplementary international search reports do not need to be taken into account if they are received by IP Australia after the examiner has started to draw up an opinion or report.


1.3.5.3 PCT Third Party Observations

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General

As of 2 July 2012, a system implemented under the PCT allows third parties to make observations on an international application if they believe that the claimed invention is either not new (lacks novelty) or is obvious (lacks an inventive step). The key points of this PCT Third Party Observation system are as follows:

• An observation on an international application can be submitted by a third party from the international publication date until 28 months from the priority date.

• Once the observation has been accepted by the International Bureau (IB):

• the applicant will be notified

• if the ISR has not yet been received by the IB, the ISA will be notified

• if a demand has been filed and the IPRPII has not yet been received by the IB, the IPEA will be notified

• the observation (but not copies of the cited documents) will be available on Patentscope the next day.

• The applicant is permitted to respond to the observation until 30 months from the priority date, but is not required to do so.

• The observation (together with any other observations received and any responses by the applicant) will be notified to designated Offices which have asked to receive such information after 30 months from the priority date or on specific request in relation to a national phase entry.

An example of a PCT third party observation is shown in 1.3.10 Annex K.

Dealing with PCT Third Party Observations

Examiners must take any third party observations into consideration when preparing ISRs and IPEOs/IPRPIIs by checking the correspondence in INTESS during the international search stage and the IPE stage. It is, however, unlikely that a third party observation will be available during the international search stage under normal circumstances.

During the international search stage

If a document referred to in a third party observation but not found during the international search is cited in the ISR, the examiner may indicate this by entering “PCT third party observation submitted [Date]” in the “Documentation searched other than minimum documentation” box of the “FIELDS SEARCHED” section of the ISR.

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Where a document referred to in a third party observation is cited in the ISR, the examiner is to enter “PCT third party observation submitted [Date]” in the “Earlier Search Results (if available)” field of the international SIS.

During the IPE stage

If the IB transmits a third party observation to the IPEA in sufficient time for it to be taken into account before establishing the IPRPII, any document referred to in the observation should be considered in the same way as if it had been cited in the ISR, provided that either a copy of the document is included with the observation or is otherwise immediately available to the examiner. The examiner is not required to comment on a document referred to in a third party observation unless the examiner considers it appropriate to cite the document. The examiner may, if considered useful, state in Box V of the IPEO/IPRPII that third party observations submitted on specified dates have been taken into account in preparing the opinion on novelty and inventive step.

A new international SIS need not be created even if a document referred to in a third party observation is cited for the first time in the IPEO or IPRPII.

1.3.6 Response to Opinion



If there is no response to an Opinion and there is less than one month remaining to establish the IPRPII examiners should establish the report as in 1.3.7 IPRPII and Notification [Rule 66.4bis]. PCT unit will forward these files to the section which issued the opinion when less than one month remains.

Where a response is received in the form of arguments only, reconsider the IPEO in the light of those arguments. [Rule 66.4(b) PCT/GL/ISPE/1 at para 19.17 et seq]

Where a response is received which includes amendments (Rule 66.5 - "Any change, other than....... obvious errors,....... shall be considered an amendment"), consider the amended description, drawings, and/or claims as in 1.3.9.3 General Notes on Form Completion [PCT/GL/ISPE/1at para 20.04 et seq]

Where a response is received after PCT unit has forwarded the file to an examination section to establish the report, but the report has not yet been established, then that response may be considered if it is reasonable to do so. In this regard, note Rule 66.4bis (amendments or arguments need not be taken into account).

Where a response which includes amendments, but does not include the letter referred to in the second sentence of Rule 66.8(a) (explaining the differences between the replaced sheets and the replacement sheets) then, unless the presence of this letter is critical to the



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understanding of the amendments, its absence should not interrupt processing and the response should receive immediate detailed consideration. Where, because of exceptional circumstances, the letter is required, and time permits, then a request for this letter may be despatched using the form PCT/IPEA/424 - available from the PCT Unit.

In order to determine whether an opinion should issue or the IPRPII should be established in light of an applicant’s response, the examiner must consider both the nature of any outstanding issues and the time remaining before the final date for establishing the IPRPII.

If there are still Rule 66.2 matters (general international preliminary examination considerations) which apply, then the examiner should issue another opinion provided there is sufficient time remaining to do so. As a general rule, if there is more than 3 months to go until the final date for establishing the IPRPII, then this is considered to be sufficient time for the applicant to make a further response and for the examiner to properly consider that response. If less than 3 months remains, either the IPRPII should be established – or, if the circumstances favour it, the examiner may make informal communication with the applicant – see 1.3.6.2 Extensions of Time to Respond to Opinions

If, after consideration of an applicant’s response, there are no outstanding issues or the only outstanding issue relates to Rule 6.2(a) matters (omnibus claims), the examiner should establish the IPRPII regardless of any timing considerations.

Note: 1. The time limit set in this new opinion should be one month. 2. Where an informal communication is made with the applicant (Rule 66.6 - informal communication with applicant) it should be formalised by a subsequent despatch summarising the content and results of such a communication. Forms PCT/IPEA/428 and PCT/IPEA/429 are available from the PCT Unit.

There is no barrier to resuming international preliminary examination after an IPRPII has been issued, provided the circumstances justify such an action. Any replacement report resulting from the re-opening of international preliminary examination should be clearly labelled as such so that elected offices are aware of its status. [PCT/GL/ISPE/1 at para 19.25, 19.26]

PCT Unit will advise WIPO to disregard the earlier report. If the resulting response is a further IPEO, then this opinion will be sent to the applicant only. However when the resulting response is another IPRPII, this will be sent to both the applicant and WIPO as a "corrected version" of the IPRPII.

The type of circumstance prima facie justifying the re-opening of international preliminary examination is where the IPRPII was issued earlier than it otherwise would have, by reason of an error or omission on the part of either the Commissioner, applicant or attorney. For

1.3.6.2 Extensions of Time to Respond to Opinions


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example, where it had been the intention of the applicant to respond but as a result of an omission by the applicant's attorney no response had been made. Where examiners become aware of circumstances that prima facie justify the resumption of international preliminary examination after an IPRPII has been issued, they should bring the matter to the attention of their supervising examiner who should then consult with OEP.

Note: Once examination of a particular application has been re-opened, any subsequent request to re-open examination of that application should not be entertained.


1.3.6.2 Extensions of Time to Respond to Opinions

No consequences flow from the failure by an applicant to respond to an IPEO within the time set to provide such a response. Any response from the applicant is to be taken into account in establishing the IPRPII providing the circumstances justifying the invoking of Rule 66.4bis do not exist. No request for an extension of time is required to be filed by the applicant when responding to an IPEO outside the time set to do so in the opinion, but any such response must be made no later than 1 month before the final date for establishment of the IPRPII. If no response has been made to an IPEO by this time, the case file will be forwarded to the examiner to immediately establish the IPRPII. No extension of time beyond this point will be granted. See also 1.3.5.1 First IPE Action.

If a response to an IPEO is filed more than 1 month but less than 3 months before the expiration of the final date for establishing the IPRPII, then under normal circumstances no further IPEO is to be issued, and the IPRPII is to be established forthwith.

Note: Any request to extend the time to respond to an ISO will not be granted.


1.3.7 IPRPII and Notification

The final response comprises:

• Notification of Transmittal form, PCT/IPEA/416, and

• IPRPII form PCT/IPEA/409

The above forms are available as a single template under “PCT/IPEA/409” in Intelledox.

See Form PCT/IPEA/416 (Notification of Transmittal of IPRP from 2004) and Form PCT/IPEA/409 (IPRP from 2004) for completed examples of forms PCT/ISA/416 and PCT/IPEA/409, respectively.

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The applicant receives both the Notification of Transmittal and the IPRPII, whereas WIPO is only sent the IPRPII.

When using Intelledox to create the Notification of Transmittal and the IPRPII, the following details are automatically filled in on the forms (for further details on completing this part of the IPRPII form see 1.3.8 Completing ISO, IPEO and IPRPII Forms):

• Address for correspondence

• Applicant's or agent's file reference

• International filing date

• Priority date

• Applicant

Note: 1. Examiners must check the latest correspondence on file to ensure that any PCT Rule 92bis changes have been recorded by the PCT Unit. 2. Two compulsory boxes on the first sheet of the IPRPII, in Item 4, will be crossed automatically on the Intelledox Template. The two compulsory boxes are: Box I - Basis of the report, Box V - Reasoned statement under Article 35(2)). 3. Examiners should not copy citations or annexes as this will be done by the PCT Unit. 4. If there is insufficient space in any Box provided use a Supplemental Box sheet(s), remembering to indicate the Box number I-VIII from which it is a continuation. 5. The "date of completion of this report" will be the date that the authorising officer completes or concurs with the report. This date will be the date of establishment of the report and should not be after the mailing date shown on the Notification of Transmittal sheet of the written report. In the situation where a corrected report is required to be issued, the"date of completion of the report" shown in the report should be the date of completion of the original report, unless the correction is one of real substance and doing this would procedurally disadvantage the applicant, in which case the actual date of completion of the corrected report should be shown. 6. Any document cited in the IPRPII which was previously cited in the ISR may be cited in a shortened form, provided that the reference to the document is unambiguous. Any document cited in the IPRPII which was not cited in the ISR shall be cited in the same form as required under Section 503 for ISR's. (Note - no document should be cited for the first time in an

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IPRPII. Any new citation should be raised first in an IPEO). [Rule 43.5 Rule 70.7 Ad. Inst. 503 Ad. Inst. 611]

Guidelines for the considerations for items for Boxes I-VIII in the IPRPII are given in 1.3.8 Completing ISO, IPEO and IPRPII Forms.

1.3.8 Completing ISO, IPEO and IPRPII Forms



Address for correspondence [Ad. Inst. 108]

PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file is created.

When an agent represents the applicant, the address for service is listed in Box IV of the PCT Request form.

For applicants processing their own applications, the address for service is listed in Box II of the PCT Request form.

Note: 1. Check correspondence on file for any changes in the applicant or address of service. 2. For applicants not using the services of a Patent Attorney, the address for service may not be in the proper format and will need to be corrected and it may not include the name of the addressee. 3. No change of address for correspondence is allowed unless the applicant has filed a request under PCT Rule 92 bis.

Date of mailing


PCT Unit fills in this box when the report is dispatched.



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In the case of an ISO, the date of mailing shown on the ISO must be the same as the date of mailing shown on the ISR - Search Report and Notification Form Completion.

Applicant's or agent's file reference

PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file is created. This data is pre-populated on the PCT Forms when using the Intelledox template. Any subsequent change made by an attorney such as addition of initials etc is not required to be entered on the Forms by the examiner.

Note: If the file reference is significantly different from the original e.g. a totally different number then the new reference should be used, and the change should be communicated to the PCT unit. The PCT Unit will inform IB of the change. Additions of initials at the end of the original file references are not considered a significant change.

Reply due date

In international preliminary examination for PCT applications, a second IPEO is required (the ISO being considered to be the first IPEO - see 1.3.5 First IPE action). Complete form PCT/IPEA/408 and set the time limit for response at two months.

For subsequent opinions set the time limit to one month.

International application number

When entering data using the Intelledox template, the application number initially entered automatically appears in all relevant places in the notification and report forms after all the dialog boxes for data entry have been completed.

International filing date

The PCT Unit upon receipt of the PCT application assigns this date. This date is recorded on the PCT Request Form.



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Priority date

This information is given in the PCT Request form (PCT/RO/101) in Box VI. This data is initially captured by the PCT Unit and automatically appears in the template when entering the application number in the Intelledox template. The Examiner must check that the correct priority date has been captured. Even if the file indicates that there has been a request by the applicant to restore the right of priority under PCT Rule 26bis.3 – see 3.11.4 Restoration of the Right of Priority under the PCT - and the request for restoration has been refused, the priority date shown in the application details should still be whichever date is given in the PCT request.

Note: Inform the PCT Unit if an error in the priority date is found.

IPC symbols

All IPC symbols are to be validated on the date of completion of search reports and examination reports. For intermediate reports (i.e. examination opinions) that do not have a date of completion, the IPC symbols are to be validated for the system date (i.e. today's date) and the Intelledox template will print this date as the "Action Date" below the IPC symbols. The validation and the ST.10/C display will be used wherever the IPC symbols are presented (in the IPC box) in any report.

Applicant [Ad. Inst. 105]

PCT Unit captures this data and, when the application number is entered into the Intelledox template it appears in the template.

When there is more than one applicant indicated in the Request, only the first mentioned of these has to be indicated in the International Search Report. The other applicants, if any, are indicated by the words "et al" following the first applicant's name. The first mentioned applicant is indicated in Box II of the PCT Request form, a second applicant is listed in Box III, further applicants will be listed on the continuation sheet if there are more than two applicants.

Example (a) AMERICAN EXPLOSIVES INC. et al.

Example (b) SMITH, John Doe



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Annexes [Rule 46.5, Rule 66.8, Rule 70.16, Rule 91.2, Ad Inst 607]

The following sheets are required to be annexed to the IPRPII (PCT/IPEA/409):

• sheets of description, claims and/or drawings which have been amended (Article 19, Article 34 amendments) and/or sheets containing rectifications authorised by the IPEA, and any accompanying letters, unless those sheets were superseded or cancelled;

Note: Only those letters which draw attention to the differences between the replaced and the replacement sheets and/or provide basis/reasons for the amendments should be annexed. Where the letter does not identify the differences, the marked up copies should be included with the annexes.

• sheets containing rectifications that the IPEA decided could not be taken into account and any accompanying letters; and

• superseded sheets and any accompanying letters where the IPEA either considers that the superseding sheets contain an amendment that goes beyond disclosure or the superseding sheets were not accompanied by an applicant's letter indicating the basis for amendments.

Examiners should note that when claims are amended under Article 19 or 34, the applicant is required to file replacement sheets containing a complete set of claims. In this situation, all replacement sheets must be annexed to the report even though there may not be an amendment on each sheet. Where the replacement sheets do not include a complete set of claims, examiners should contact the PCT Unit who will send an invitation to the applicant to submit replacement sheets containing a complete set of claims.

Any "Substitute Sheets (Rule 26)” or “RECTIFIED SHEETS (Rule 91.1)” filed before the Demand is filed (that is, are not authorised by the IPEA) are not to be included as annexes to the IPRPII. These are considered to be part of the application as filed.

INTESS Case File

Examiners do not need to add annexes to their reports in INTESS. The PCT Unit will use the Basis of the report (Box I) to determine which replacement sheets should be annexed to the report and will assemble a PDF copy of the report and any annexes before sending the document to WIPO.

Examiners will need to ensure that they have correctly identified:

1. The Basis of the report at Item 2 of Box I;

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2. Any amended sheets which go beyond the original disclosure at Item 4 of Box I.

Note: Examiners are not required to enter the number of sheets comprising the annexes at Item 3a of the first page of the IPRPII in INTESS case files. This task will be performed by the PCT Unit.

Note: Where the annex consists of replacement sheets which the examiner has found go beyond the disclosure, the examiner must put a comment for the PCT Unit in the Remarks box of the ~PCT EXAM object to draw their attention to this situation as the PCT Unit will need to mark sheets which have been superseded by such sheets as “SUPERSEDED REPLACEMENT SHEET (RULE 70.16(b)).

Sequence Listing

If a sequence listing is provided the examiner is also required to enter at Item 3b of the first sheet of the IPRPII the type and number of electronic carriers annexed to the IPRPII. Such electronic carriers will have been furnished subsequently to the filing of the application for the purposes of search and/or examination, or received as Article 19 or 34 amendments. The electronic carrier(s) is(are) to be sent to the IB by the PCT unit.



Substitute pages or sheets, filed in response to an invitation by the receiving Office to correct defects in the international application, are deemed to be part of the international application "as originally filed". If the applicant responds to the invitation to correct defects by substituting sheets of the application, these sheets are identified with "SUBSTITUTE SHEET (RULE 26)" stamped on them.

Rectified sheets filed as Rule 91 amendments (obvious mistakes (or, pre 1 April 2007, obvious errors)) are also regarded “as originally filed” sheets and are identified in Box I “Basis of the Opinion”/ “Basis of the Report” (they are transmitted as “RECTIFIED SHEET (RULE 91)” amendments to the IB by PCT unit once the examiner has accepted them).

A) Basis of Opinion for an ISO - Box I



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Note: Box I of the ISO "Basis of the Opinion" must always be included in the ISO. (Note: in the ISO template, the “Box I (Basis of Opinion)” sheet is automatically included).

Item 1:

For language considerations refer to the PCT Rules (in practice, problems in this area rarely occur). [Rule 23.1(b) Rule 48.3(b) Rules 55.2 &/or 55.3]

Item 2:

Where there is an indication on the file that the rectification of an obvious mistake (or “obvious error” where the rectification has occurred before 1 April 2007) has been authorized the international report shall indicate this and the report should be established on the basis of this rectification. See 1.3.9.4 for information regarding obvious mistakes.

Item 3:

The considerations for nucleotide and/or amino acid sequence listings may be found in 1.1.18.1 Nucleotide and/or Amino Acid Sequence Listings.

Note: A sequence listing is a separate part of the description that is presented in a specific format (Annex C of the Administrative Instructions under the PCT). Nucleotide or amino acid sequences that appear in the figures or drawings, or in the text of the description, do not constitute a sequence listing.

Where a nucleotide or amino acid sequence listing is provided and the search and opinion are conducted in respect of this sequence listing, examiners should complete item 3 and item 4 (if appropriate) of Box I.

Where a sequence listing is provided, but the search and opinion are not conducted in respect of this sequence listing, items 3 and 4 of Box I are left blank. Examiners should indicate under item 5 of Box I (Additional comments) that:

“There was a sequence listing originally filed but it was not used for the purposes of this search and opinion.”

Where sequences are present in the drawings or figures, or in the text of the description (but not in the form of a sequence listing), and the search and opinion are conducted in respect of these sequences, items 3 and 4 of Box I are left blank. Examiners should indicate under item 5 of Box I that:

“A sequence listing was not filed, however the sequences depicted in (Figure 1, Table 3 etc.) were used for the purposes of this search and opinion.”

Item 4:



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Check this item box to indicate that the applicant has submitted the required statements that the information in any subsequent or additional copies is identical to that in the application as filed or does not go beyond the application as filed.

The considerations for nucleotide and/or amino acid sequence listings may be found in 1.1.18.1-3 Nucleotide and/or Amino Acid Sequence Listing.

Item 5:

Additional comments for example see Item 3 above.

B) Basis of Opinion for IPEOs and IPRPs - Box 1

Item 1:

See Item 1 of the “Basis of Opinion for an ISO” above.

Item 2:

Where all documents examined are as originally filed, only the first check box (i.e. "the international application as originally filed") in Item 2 of Box I should be marked.

In response to an opinion an applicant may file amendments with a covering letter. On receipt of these amendments, PCT Unit will indicate on the top right hand corner of the Amended sheets the application number and the date of receipt. Note that the date stated on the covering letter may differ from the filing date. [PCT/GL/ISPE/8 at para 18.03 et seq]

Where amendments to the claims have been made under Art 19, they should be referred to in Box I Item 2 as "Nos....as amended (together with any statement) under Art 19". Note that under Article 19 only claims may be amended. These sheets are usually identified by "AMENDED SHEET (ARTICLE 19)"

Where amendments have been made to the description or drawings under Art 34,these should be referred to in Box 1 Item 2 as "pages....received by this Authority on....with the letter of ....". Where amendments have been made to the claims under Art 34, these should be referred to in Box 1 Item 2 as "Nos....received by this Authority on....with the letter of ....".

The latter should indicate the dates placed on the amendments by the IPEA as the "received by this Authority on" dates and the associated applicant's correspondence date as the "with the letter of" date. For all PCT applications, superseded amendments are to be included as well as superseding amendments if and only if the superseding amendments go beyond the disclosure.



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In relation to the final checkbox of Item 2, which references a Supplemental Box Relating to a Sequence Listing, the considerations for nucleotide and/or amino acid sequence listings may be found in 1.1.18.1-3 Nucleotide and/or Amino Acid Sequence Listing. See Item 3 of the “Basis of Opinion for an ISO” above, for details on the level of reporting required for sequence listings in the Supplemental Box (taking note that the relevant item numbers in Box I of the ISO differ to the relevant item numbers found in the Supplemental Box).

Item 3:

Where amendments under Art 19 or 34 have been made which result in cancellation or gaps in the numbering sequences of the description pages, claim numbers, and/or drawing sheets, these must be referred to in Item 3 of Box I of the IPEO/IPRP [PCT/GL/ISPE/8 at para 17.22]. Cancellation of claims that result in gaps in the numbering sequence of claim numbers must be indicated in Item 3. However, if the claims have been cancelled but there are no gaps in the numbering sequence of claim numbers, Item 3 is not to be used. More importantly, the report in Box V (the reasoned statement) must reflect the claims reported upon.

Refer to 1.3.9.1 Article 19 or Article 34(2)(b) Amendments for further Art 19/34 considerations.

Item 4:

Where amendments have been made which go beyond the original disclosure, this is indicated in Item 4 of Box I of the IPEO or IPRPII. The particular amendments are identified and brief reasons given in a Supplemental Box sheet(s). [Rule 70.2(c)]

For all PCT applications replacement sheets which are superseded by replacement sheets all of which go beyond the disclosure as filed are required to be annexed to the IPRPII, along with the superseding replacement sheets. (If there is more than one version of these superseding replacement sheets, then only the later or latest version is to be annexed.) The second checkbox at Item 3a of the IPRPII cover sheet is to be marked, and the total number of replacement sheets annexed is to be indicated. [Rule 70.16(b)]

See 1.3.8.1 Completing ISO IPEO and IPRPII Forms/Annexes for further details of the procedures in respect of annexes to be followed by examiners when amendments go beyond the disclosure.

In the case of abstracts, they cannot be amended under Article 34 and consequently if an applicant includes an amended abstract with their Article 34 amendments it should not be included in any Annex to an IPRPII. Examiners should ensure that a note stating that ‘the amendments to the abstract are of no effect since the abstract cannot be amended under Article 34’ is inserted after item 2 on the IPRPII cover sheet.

Item 5:

1.3.8.3 Box II Priority


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Where there is an indication on the file that the rectification of an obvious mistake (or “obvious error” where the rectification has occurred before 1 April 2007) has been authorized the international report shall indicate this and the report should be established on the basis of this rectification. See 1.3.9.4 for information regarding obvious mistakes.

Item 6 of IPEO (Item 7 of IPRPII):

Where a supplementary international search report has been taken into account in establishing an opinion/report, the name of the Authority which conducted the supplementary international search shall be noted here. See 1.3.5.2 for information on Supplementary International Search Report.

Item 6 of IPRPII

Details of Top-up search shall be noted here. See 1.3.4.1 Demand and Top-up Search



Note: In the following circumstances checking the validity of the EPD and completion of Box II is not required: 1. Where all citations mentioned in the ISR were published prior to the EPD. 2. Where the only citations mentioned in the ISR that were published after to the EPD are A category (i.e. P,A or T)

Where any of the citations of the ISR were published after the EPD (i.e. P or E category citations), and none of these documents was categorised as A, then the validity of the EPD requires checking (see the PCT ISPE Guidelines para 17.29).

Validation of the right of priority requires the following:

1. the determination that the PCT application was filed within 12 months of the claimed priority document, or is otherwise entitled to the associated priority. If it is determined that

i. the PCT application has NOT been filed within the 12-month priority period, (taking into account whether the 12-month priority period expired on a non-working day or official holiday and the international filing date has been determined using Rule 80.5) AND

ii. a Restoration of Right of Priority under PCT Rule 26.3bis: (see 3.11 Extensions of Time and Restoration of the Right of Priority),:



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a. HAS NOT been requested OR priority granted then the checkbox at item 2 must be marked.

b. HAS BEEN requested AND granted, then this must be noted at item 3. and the opinion should proceed on the basis that the priority claim is valid.

c. HAS BEEN requested, but has NOT YET been determined, then this must be noted at item 3, including the following comment:

“The applicant has requested a restoration of right of priority under Rule 26bis.3 which is yet to be determined.” and the opinion should proceed on the basis that the priority claim is valid.

2. an assessment as to whether the priority document contains an adequate disclosure of the invention which is the subject of the PCT application and to which the citation relates. In order to be able to do this, the examiner should:

• where the priority document is an Australian document (e.g. AU provisional), view the document on PAMS;

• where the priority document is a foreign document (this will most likely be the case when the application was originally filed with RO/NZ) and it is not already in the file, examiners should first check whether the document is available from PatentScope. If the document is present, a copy should be downloaded and placed in the case file. Where the priority document is not available, examiners should request a copy of the document together with a translation where appropriate from the PCT Unit via email. If timing considerations (i.e 3 months to establish ISR/ISO) require the issuance of an opinion before the priority document has been obtained, then, in the case of an ISO, the ISO should be issued with the checkbox at item 1 of Box II marked without waiting to obtain the priority document. In the case of an IPEO an appropriate comment should be made under the heading "Additional observations, if necessary:" in item 3 of Box II of the IPEO.

• where such a copy of the priority document or a translation thereof is not available because of non-compliance with Rule 17.1 by the applicant, the IPRPII may be established as if the priority had not been claimed and this is to be indicated in the IPRPII. [Rule 66.7 Ad. Inst. 421]

If as a result of this check, it is determined the priority document associated with the EPD does not contain an adequate disclosure of the invention of the PCT application, as claimed in any of the claims, the right to priority is assessed invalid, and the



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checkbox at item 2 of Box II of the ISO, IPEO or IPRPII must be marked. (see PCT/GL/ISPE/8 at para 17.28 to 17.30 Rule 64.1) If any one of the claims of the PCT application is adequately supported by the priority document, checkbox at item 2 must not be marked.

Where the right to priority is assessed and is found to be valid, an observation to this effect should be included in item 3 "Additional observations".

Note 1: "Additional observations" relate to priority considerations only and not to clarity, descriptive support, defects or any other consideration relevant to Box VIII. Note 2: Partial Priorities: Where 1. the right to priority is assessed as above and is found to be valid, but 2. there are nevertheless some claims or parts thereof (i.e. embodiments) directed to invention(s) for which the priority document associated with the EPD does not contain an adequate disclosure, then (i) these claims or embodiments are to be attributed, for the purposes of assessment of novelty and inventive step, the priority date of the oldest priority document that does disclose the embodiment claimed, or the filing date of the international application, as appropriate, and (ii) an observation to this effect included in item 3 "Additional observations". When assessing the relevance of cited documents in such cases, documents which are categorised X for some claims or embodiments, but P,X for other claims or embodiments, should be raised and the citations discussed as appropriate to the relevant claims, in Boxes V and VI respectively, using supplemental boxes as necessary.

Example – PCT Application based on AU Complete / AU Provisional

One situation where the validity of right to priority may require consideration is when the priority document is an AU complete application which itself is associated with an AU provisional and only the complete was made within the 12 months before the PCT filing date. A claim in the PCT application to material disclosed in the provisional and the complete application would only have a priority of the PCT filing date. The provisional and/or complete application then may also be citable against that claim; most probably as either an "E", "L" or "P" document.

1.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability


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1.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability

Rule 67.1 establishes that no International Authority shall be required to examine the subject matter of a PCT application to the extent that it is any of items i – vi below. The agreement between WIPO and Australia further qualifies this by excepting from exclusion any subject matter which is examined under national grant procedures. [Art 17(2)(a)(i) Rule 67 PCT/GL/ISPE/7 para 17.32]

For Rule 67.1 subject matter that is not excluded under Australian law (e.g. methods of treatment of humans), examiners should disregard Box III ("Non-establishment of opinion...") of PCT/ISA/237, PCT/IPEA/408 or PCT/ISA/409 and establish the written opinion or IPRPII with regard to novelty, inventive step and industrial applicability in the usual way.

The subject matter specified in Rule 67.1 is:

i. scientific and mathematical theories

ii. plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes

iii. schemes, rules or methods of doing business performing purely mental acts or playing games

iv. methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods

v. mere presentations of information

vi. computer programs

Where excluded subject matter under Australian law has not been claimed, go to 1.3.8.5 Box IV Unity of Invention

Where some or all claims define excluded subject matter, this observation must be included in Box III checkbox 3 of an ISO (form PCT/ISA/237) and Box III checkbox 3 of an IPEO and IPRPII (forms PCT/IPEA/408 and PCT/IPEA/409, respectively). Additionally, checkbox 6 in Box III of the above forms will need to be checked to record the fact that no international search has been established for the specified claims.

Where the description, the claims, or the drawings are so unclear, or the claims are so inadequately supported by the description that no meaningful opinion can be formed on the questions of novelty, inventive step, or industrial applicability of the claimed invention, then the ISO and IPEO may be restricted to those claims that are sufficiently clear and supported

1.3.8.5 Box IV Unity of Invention


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by the description to enable an opinion to be prepared (4th and 5th checkboxes). [Rule 66.2(a) PCT/GL/ISPE/7 para 18.13, 18.18, 19.22(vi), 17.09, 17.32, 17.34, 17.60]

Applicants must be given at least one opportunity to consider these observations (the ISO counts as at least one opportunity) before an IPRPII is established see 1.3.5 First IPE action.

The issues of clarity and descriptive support of claims may be raised separately to considerations of novelty, inventive step and industrial applicability at Box VIII of the written opinion or IPRPII. See Box VIII Certain Observations.

Where the ISA has not established an ISR (for all or some of the claims) and instead issued a declaration under Art 17 (relating to excluded subject matter, clarity or full support), the questions of novelty, inventive step and industrial applicability cannot be addressed since there are no documents to consider under Art 33(6), and such reasoning is added to the 'non-establishment' Box of the ISO, IPEO and IPRPII form (Note that this applies even where Art 34 amendments may have overcome consideration under Art 34(4)(a)(ii)). [Art 33(6) PCT/GL/ISPE/7 at para 19.25]

For those claims of the nature described above, the questions of novelty, inventive step and industrial applicability will not be addressed. [PCT/GL/ISPE/7 at para 17.60]

Note: Box III of the ISO, IPEO and IPRP should NOT be filled out when no international search report has been established due to lack of unity of invention. Instead, item 3 of Box IV of the ISO, IPEO and IPRP is to be filled out in these circumstances – see 1.3.8.5 Box IV Unity of Invention.

A failure to supply nucleotide and/or amino acid sequence listing information, or have it complying with the Administrative Instructions standards, will preclude any meaningful international preliminary examination being carried out (see Box III checkbox 7 for the IPEO and IPRPII form). [Ad. Inst. Annex C].

For instructions on completing Box III in respect of Omnibus claims see 1.3.8.8 Box VII Certain Defects and see Annex O for example.



Where lack of unity of invention is evident, it may, depending on the circumstances, be appropriate to issue an "Invitation to Restrict or Pay Additional Fees" (form PCT/ISA/206 and PCT/IPEA/405). It should be noted that separate invitations apply during International Search and Preliminary examination stages. Due to the strict time limits for establishing the ISR/ISO and IPRPII this issue should be considered at the earliest possible opportunity. [Rule 13 Rule 66 Rule 68 Ad. Inst. 206 PCT/GL/ISPE/6 at Chapter 10]



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The requirements for unity of invention are specified in Rule 13 and discussed fully in 1.1.4 Unity of Invention.

An invitation to pay additional fees should not be issued by an IPEA (the circumstances in which an ISA should issue an invitation are discussed in 1.1.4.9 Issuing the Invitation to Pay Additional Search Fees) where:

• the ISA has not raised the issue of lack of unity; note that international preliminary examination is not applicable to claimed inventions that were not the subject of the ISR.

• the ISA raised the issue of unity and additional fees were not paid; in this case examination is to proceed in respect of those claims which were searched, the IPEO or IPRPII clearly specifying for the other claims that no ISR is available and thus no meaningful opinion can be given [PCT/GL/ISPE/6 at para 17.62]. This should be done by inserting a comment similar to PERP [T25] following the observations on lack of unity in item 3 of Box IV.

In relation to a PCT application undergoing international preliminary examination, an invitation to pay additional fees may be issued where:

• the ISA raised the issue of lack of unity and the applicant paid additional search fees for further searching and examination, or

• the ISA found there was lack of unity but did not invite additional search and examination fees for additional inventions.

The decision on whether to issue an Invitation in these circumstances is somewhat discretionary, and should be based on likely additional effort involved and hence costs incurred in considering the additional invention(s). The following may be relevant to the decision:

• the number of citations relevant to each invention,

• whether citations are common to different inventions,

• the number and nature of claims for each invention, and

• the perceived effort needed to deal with each invention through the examination stage (opinions and report).

As a guide, if the overall additional effort involved to examine an additional invention is estimated to require more than about 2 hours of time over the first invention then an invitation should be issued.

Where it is considered that an invitation to pay additional fees should issue, the examiner will complete form PCT/IPEA/405, gain approval from their Supervising Examiner and upload the finalized invitation to pay to the eCase following the procedures listed in MPP 4.9.6.2.



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The Supervising Examiner is the authorised officer for an invitation to pay and the time limit for a response to an invitation is one month. [Rule 68.2].

The invitation must include a logically presented, technically reasoned statement setting out the basis for the finding of lack of unity. The requirements in this regard are the same as specified in 1.1.4.9 Issuing the Invitation to Pay Additional Search Fees. The invitation must also include at least one possible restriction of the claims which would avoid the objection of lack of unity. The invitation should also include the basis for the number of additional examination fees invited and, where applicable, indicate which inventions can be examined with another without requiring a separate examination fee.

Example as in: Annex F - invitation to restrict/pay additional fees-unity illustrates the required level of detail.

As the applicant's response will determine which of the claimed inventions will be examined, the international preliminary examination should be largely deferred until a response is filed or the time limit for response expires.

Where an invitation issues, the time limit for establishing the report does not alter.

If the applicant fails, within the time allowed, to restrict the claims or pay the additional fees, the international preliminary examination should proceed in relation to the main invention or where this is not readily apparent the invention first mentioned in the claims. Otherwise, the examination is to be carried out for those claimed inventions for which fees are paid or for the invention defined in the restricted claims. [PCT/GL/ISPE/6 at para 10.75]

Where the applicant pays the additional fees under protest, the PCT unit will forward the case to the Assistant General Manager (AGM) with responsibility for the section where the protest occurred. The AGM will arrange for the protest to be reviewed by an independent supervising examiner. Based on this review and the examiner’s comments, the AGM will decide whether the applicant’s protest should be upheld. The international preliminary examination should proceed in relation to all the claimed inventions for which fees are paid. [PCT/GL/ISPE/6 at para 10.78]

A protest may be upheld and the fees refunded (fully or in part), for several reasons including:

• that, having regard to the facts of the case and the PCT Rules, there is no lack of unity,

• the invitation fails to give either sufficient or substantially correct reasons for the finding of lack of unity and the lack of unity is not manifestly obvious from the claims themselves,

• that the amount of the additional fees, in the circumstances, is excessive.

1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability


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Irrespective of whether an Invitation has been issued, where unity of invention is lacking this observation must be included in the ISO, all IPEOs and the IPRPII for which that is the case. The ISO, IPEO and IPRPII do not require an observation on lack of unity in Box IV if no lack of unity has been found, except if any entry in Item 1 of Box IV of IPEO or IPRPII has been required to be made. As a corollary to this checkbox IV in Item 2/3 at the front page of the opinion/report, respectively, should only be crossed if Box IV of the opinion or report contains an observation. [Rule 68.1 PCT/GL/ISPE/6 at para 17.38, 17.39].

It should be noted that in cases whereby the ISA found lack of unity in establishment of the ISR/ISO and issued an invitation to pay additional fees, there is no requirement to check Item 1 of Box IV (relating to a response to an invitation to pay) of the IPEO or IPRP unless the IPEA also issued a further (i.e. separate) invitation to pay additional fees. If the IPEA did not issue a further invitation for additional fees, this item should be left blank.




In completing Box V of an ISO, IPEO or IPRPII form examiners must:

• follow the major formatting requirements as detailed in 1.3.10 Annexes

• indicate at item 1 (“Statement”) whether the claims reported on do, or do not, meet the requirements for Novelty (N), Inventive Step (IS) and Industrial Applicability (IA)

• provide explanations under Box V item 2 in support of the indications in Box V Item 1. Item 2 must:

• list all relevant documents that are discussed under item 2 “Citations and Explanations” of Box V Documents in the list can be cited in shortened form except when a new citation is raised (see PCT Administrative Instruction 503)

• Address all claims with positive and/or negative explanations, under each of the headings “NOVELTY (N)”, “INVENTIVE STEP (IS)” and “INDUSTRIAL APPLICABILITY”

• Provide the required level of consideration and discussion for each heading

Further guidance:



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NOVELTY & INVENTIVE STEP

Choosing citations

Required level of consideration and discussion

• Conciseness

• Discussion of citations against the criteria

• Citation references

• Dependent and independent claims

• Grouping of claims

• Positive explanations

• Cross reference to Box VII

INDUSTRIAL APPLICABILITY

OPINION RESTRICTION

NOVELTY AND INVENTIVE STEP

CHOOSING CITATIONS

ISR

In the ISR examiners should not cite more documents than necessary. Documents should be chosen to cover as much of the scope of the claims (including any alternatives within the claims and amendments that can be anticipated) as reasonable / practicable. Less relevant documents should only be cited when they concern aspects or details of the claimed invention not found in the documents already selected for citation.

ISO/IPEO/IPRPII

Documents listed in the ISO will usually be the same as those cited in the ISR. As a rule “X” and “Y” category documents selected for citation in the ISR are all relevant documents and should be listed and discussed until they are overcome. Where the ISR cites “X” and/or ”Y” as well as “A” category documents, the “A” category documents may be omitted from the ISO if they merely represent background art. However, this does not apply to “A” category documents cited in the ISR as evidence of the common general knowledge.



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During IPE examiners may add additional documents to Box V. Normally these will be documents known to the examiner from previous search or examination work. In general further searches should not be conducted, however, a limited additional search can be done where the examiner has reason to believe that highly relevant documents exist and can be located in a short time from material available to them - see also 1.3.5.1 First IPE Action.

In general, documents cited in the ISR need only be cited in the IPEO/IPRPII when they are considered to be relevant to negative findings in the opinion /report. Thus, documents that are no longer relevant (e.g. where Art 19 / 34 amendments or rebuttals have overcome any negative indications) need not be listed in the opinion/report or identified as the closest prior art document(s) and explained in a positive statement.

Note: Where all claims are novel and inventive, the examiner should provide a positive statement in the form indicated below (see Positive explanations), referencing at least one document, as appropriate.

In general, where an IPEO/IPRPII contains negative findings, only those documents cited in the ISR considered to be relevant to such negative findings need to be cited in the opinion/report. Thus, an IPEO/IPER that contains negative findings regarding novelty/inventive step in respect of at least one of the claims, need not list nor identify any documents that were cited in respect of novelty or inventive step in a previous opinion/report, but no longer deprive the application of novelty or inventive step (as a result, for example, of Art 19 / 34 amendments or rebuttals overcoming previous negative indications). Where the opinion/report contains no such negative findings, however, relevant prior art documents do need to be listed / identified as the closest prior art document(s) and explained in a positive statement in the opinion/report.

“P, X”, “P, Y”, E documents and non-written disclosures

• Where priority claim is found invalid, “P,X” or “P,Y” documents cited in the ISR become “X” and “Y” documents and are to be discussed in Box V of the ISO, IPEO and IPRPII as such.

• Non-written disclosures (e.g. exhibitions, use, oral disclosure or other non-written means) before the relevant date, “P, X”, “P, Y” and “E” patent documents are to be included at Box VI.

REQUIRED LEVEL OF CONSIDERATION AND DISCUSSION

Examiners can vary the content and style in reports as appropriate to achieve the most effective way of communicating the issues however the following should be noted:

Conciseness



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• Section 604 (b) of the Administrative Instructions requires explanations to be concise and preferably in the form of short sentences.

Discussion of citations against the criteria

• As a general rule, it is not necessary to specify whether the N / IS criteria are met for every combination of citation and claim. Where a number of documents are raised to cover different claims and/or criteria, consideration against each claim may be limited to the strongest argument and citation against the claim under each criteria.

• It may be more effective to report against the claims rather than the citations where a citation based approach would result in excessive categorization of each citation against each claim. A citation based approach may be useful where there are a large number of claims to consider. However, both approaches are equally valid and examiners should try to use the most effective approach.

• Where close documents of equal value to a document already discussed (i.e. redundant documents) are included in an opinion or report, these documents may be noted and no detailed explanation will be necessary (e.g. “Similar observations apply to D2 and D3”). These additional documents may be grouped as appropriate.

Citation references

• For the purposes of reporting against novelty, it is sufficient to identify for each claim, the document relied on and, to the extent necessary, the location in the document of the relevant disclosure.

• In general, it is not necessary for examiners to provide a specific individual reference for every feature of the claimed invention, and extensive lists of references to features disclosed in cited documents should therefore be avoided. Thus, for example, an indication of location need not be provided where a feature of the claims is immediately apparent on the face of the document. Referring to figures, structures, tables etc which unambiguously disclose features of the claimed invention is encouraged where this would avoid unnecessary detailed explanation.

• Examiners must, however, provide appropriate detail where features are not readily apparent from a document (e.g. due to interpretation/construction issues, inherency, complex technology or features hidden in a lengthy specification). When it is appropriate to provide such detail, this should be done in an effective and succinct manner. In particular, copying a large number of claims into the opinion/report to draw a correspondence between claimed features and the disclosure location should be avoided.

• Where it is readily apparent that a more detailed approach is likely to be superfluous and inefficient, for example where a lack of novelty and inventive step will be



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overcome by resolving a clarity issue, it is appropriate to comment as such and provide only brief explanations against novelty and inventive step for the claims.

Dependent and independent claims

• Examiners should primarily focus on the independent claims and generally report more broadly on the dependent claims.

• However, more detail along the lines of examples shown in 1.3.10 Annex I should be provided where the specification indicates (or it is otherwise clear) that the features of a dependent claim are substantial e.g. features related to the inventive concept.

Grouping of claims

• Multiple claims with the same or similar features can be grouped. Any dependent claims that lack an inventive step (because either they add features that are prima facie trivial / generally well known in the art or they add features that are disclosed in an “X” (IS) citation raised against the claims they are appended to) should be grouped together and summarily dealt with.

Positive explanations

Any positive explanations must summarily identify:

• any novel claims (usually no detailed explanation is necessary to show an absence of a feature in a citation but this can depend on the circumstances of the case); and

• any novel and inventive claims, identifying the inventive advance over prior art

Where there are multiple advances over the prior art defined in a number of dependent claims, a general statement indicating that “the features defined in claims x, y and z distinguish the invention from the cited documents” will suffice.

If all the claims are novel and inventive, the examiner should either discuss only the closest prior art document or make a general statement referring to “the cited documents” and identify the advance over the prior art with respect to either the closest prior art document or with respect to all the prior art documents. Annex E - IPRPII Clear Novel and Inventive Box V Only illustrates the level of explanation required. This will facilitate completion of the report as a full reconsideration of the citations at that stage should not be necessary.

Cross references

Where Box VI is included in the opinion/report, a cross-reference must be made in Box V Item 2, at a place considered appropriate by the examiner. See 1.3.10 Annex D as well as 6.17.17.1 International for the level of detail required.

See 1.3.8.6.1 Novelty

See 1.3.8.6.2 Inventive Step

1.3.8.6.1 Novelty


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INDUSTRIAL APPLICABILITY

Where the indication in item 1 of Box V in relation to industrial applicability for one or more claims is negative, an explanation as to why must be supplied. If the indication in relation to industrial applicability is positive, a statement to this effect is to be included (see PERP code T644). [Art 35(2) Rule 70.6(b) Rule 70.8]

See 1.3.8.6.3 Industrial Applicability

OPINION RESTRICTION

Where no meaningful opinion can be formed on the questions of novelty, inventive step or industrial applicability of the claimed invention, then the ISO, IPEO and IPRPII may be restricted to those claims that are sufficiently clear and supported by the description to enable an opinion to be prepared.

See 1.3.8.4 Box III Non-establishment of Opinion

See 1.3.8.8 Box VII Certain Defects

See 1.3.8.9 Box VIII Certain Observations


1.3.8.6.1 Novelty

A claimed invention shall be considered novel if it is not anticipated by the prior art. The prior art is defined as "everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations)" before the priority or international filing date of the international application. [Art 33(2) Rule 64 PCT/GL/ISPE/6 at Chapter 12]

A document takes away the novelty of any claimed subject matter when every element or step is explicitly or inherently disclosed within the prior art defined in Rule 64.1 (see paragraph 11.01 of the PCT International Search and Preliminary Examination Guidelines), including any features implicit to a person skilled in the art (see paragraph 13.11 of the Guidelines for a definition of the "Person Skilled in the Art") (see paragraph 12.01 of the Guidelines).

In considering novelty (as distinct from inventive step) it is not permissible to combine separate items of prior art together (see paragraph 13.12 of the PCT International Search and Preliminary Examination Guidelines). However, if the document refers explicitly to another document to, for example, provide more detailed information on certain features, the teaching of this latter document may be regarded as incorporated into the relevant document, to the extent indicated in the primary document.

1.3.8.6.1 Novelty


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Also, a dictionary or the like may be used to interpret special terms used in the document. However, it is not correct to interpret the teaching of the document such that well-known equivalents, which are not disclosed in the document, are included. This is a matter for obviousness.

Novelty and obviousness are different criteria. Novelty does exist if there is a difference between the claimed invention and the prior art, and this difference could not have been considered part of the common general knowledge at the time of publication of the prior art (note, however that some authorities have a different approach on this - see the Annex to Chapter 12 of the PCT International Search and Preliminary Examination Guidelines).

However, the prior art disclosure must be an enabling disclosure (see paragraph 12.02 of the PCT International Search and Preliminary Examination Guidelines). A chemical compound, the name or formula of which was mentioned in a document, is not considered as known unless the information in the document, together, where appropriate, with knowledge generally available on the effective date of the document, enable it to be prepared and separated or, for instance in the case of a product of nature, only to be separated.

In considering novelty, it should be borne in mind that a generic disclosure does not usually take away the novelty of any specific example falling within the terms of that disclosure, but that a specific disclosure does take away the novelty of any generic claim embracing that disclosure, for example, a disclosure of copper takes away the novelty of metal as a generic concept, but not the novelty of any metal other than copper, and one of rivets takes away the novelty of fastening means as a generic concept, but not the novelty of any fastening other than rivets.

In the case of a published document, the lack of novelty may be apparent from what is explicitly stated in the document itself. Alternatively, it may be implicit in the sense that, in carrying out the teaching of the prior document, the skilled person would inevitably arrive at a result falling within the terms of the claim. Lack of novelty of this kind should be raised by the examiner only where there can be no reasonable doubt as to the practical effect of the prior teaching.

In interpreting claims for the consideration of novelty, the examiner should have regard to the guidance given in paragraphs 5.20 to 5.41 of the PCT International Search and Preliminary Examination Guidelines. In particular, the examiner should remember that statements in the claim reciting the purpose or intended use must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or in the case of process claims, a difference in the process steps) between the claimed invention and the prior art. Non-distinctive characteristics of a particular intended use should be disregarded (see paragraphs 5.21 to 5.23 of the PCT International Search and Preliminary Examination Guidelines). For example, a claim to a substance X for use as a catalyst would not be considered to be novel over the same substance known as a dye, unless the use referred to implies a particular form of the substance (for example, the presence of certain additives)

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which distinguishes it from the known form of the substance. That is to say, characteristics not explicitly stated but implied by the particular use should be taken into account. For example, if a claim refers to a "mould for molten steel", this implies certain limitations for the mould. Therefore a plastic ice cube tray with a melting point much lower than that of steel would not come within the claim which would thereby be considered as being novel.

When interpreting ‘product by process’ claims, the approach to be followed is given in Appendix A5.26[1] of the PCT International Search and Preliminary Examination Guidelines. That is, a product is not rendered novel merely by the fact that it is produced by means of a new process.



This issue may arise in one of the following ways [Art 33(3) Rule 65]:

• where lack of novelty has been raised against a particular claim, an inventive step objection relying on the same citation will be automatically applicable. In such instances it will generally be unnecessary for examiners to undertake a detailed analysis of the inventive step issue with regard to that claim.

• where a claim is considered to be novel, but is considered to lack inventive step in view of a particular citation in combination with common general knowledge, appropriate explanation will be required.

• where a claim is considered to lack an inventive step in view of an obvious combination of two or more citations, appropriate explanation will be required.

The issue of inventive step, in relation to any claim defining the invention, is whether in light of one or more prior art documents it would have been obvious to the person skilled in the art to arrive at something falling with the scope of the claim. The word “obvious” suggests that it does not go beyond the normal progress of technology, but merely follows plainly or logically from the prior art.

When assessing whether the requirement of inventive step or non-obviousness is met, individual documents or combinations of such documents may be considered.

Note: Examples of inventive step objections are provided in Annex I and further information regarding the appropriate categorisation of documents used in inventive step objections is provided in 1.1.12.5.2 Citation Category



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Document Plus Common General Knowledge - No Documentary Evidence Required (single source of information)

An inventive step objection may be taken in view of the disclosure of a single prior art document. Examples of this situation include:

i. where a technical feature known in a technical field is applied from its original field to another field and its application therein would have been obvious to a person skilled in the art;

ii. where a difference between the document’s content and the claimed matter is so well known that documentary evidence is unnecessary;

iii. where the claimed subject matter relates to the use of a known product, and the use would have been obvious from the known properties of the product;

iv. where the claimed invention differs from the known art merely in the use of equivalents that are so well known that the citation of documentary evidence is unnecessary.

In determining whether a feature is so well known that documentary evidence is unnecessary, examiners should consult with the 3 person team (see 1.1.8.4 Search Considerations). Note however that where the feature can be readily found in a text book or other document, then this source should be cited.

For further information see PCT/GL/ISPE/8 at Appendix A13.13.

Document Plus Common General Knowledge – Documentary Evidence Required (the document/s used to support an assertion of CGK are categorised as “A”)

An inventive step objection may be taken in view of the disclosure of a single prior art document combined with common general knowledge where documentary evidence is used to demonstrate the common general knowledge. This case arises in situations similar to those noted above in items i – iv, where the difference between a document’s content and the claimed matter is considered to be obvious in light of common general knowledge but further support for this assertion in the form of documentation is warranted.

In determining whether a feature is so well known that documentary evidence is required, examiners should consult with the 3 person team (see 1.1.8.4 Search Considerations).



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Combining Documents (Mosaicing multiple documents where all documents are categorised as “Y”)

In considering whether there is inventive step as distinct from novelty, it is permissible to combine the teachings of two or more prior art references, for example, different published patents, or several teachings contained in the same prior art reference, such as one particular book, but only where such combination would be obvious to the person skilled in the art. In determining whether it would be obvious to combine the teachings of two or more distinct documents, the examiner should have regard to each of the following [PCT/GL/ISPE/8 at para 13.12]:

i. whether the nature and content of the documents are such as to make it likely or unlikely that the person skilled in the art would combine them;

ii. whether the documents come from similar or neighboring technical fields and if not, whether the documents are reasonably pertinent to the particular problem with which the invention was concerned.

In regard to item i. above, if two documents could not in practice be readily combined because of an incompatibility in the disclosed features essential to the invention, then combining the documents should not normally be regarded as obvious. For example, the incompatibility could be if a proposed combination, substitution or modification of a prior art document would render the prior art unsatisfactory for its intended purpose, or would change the principle of operation of the prior art invention.

It is noted that combining teachings of documents does not necessarily involve an ability to combine their specific or physical structures. The important consideration is what the combined teachings of the documents would have suggested to the person skilled in the art.

Furthermore, the combining of old elements in the prior art without changing their functions, or to take advantage of their known functions, can be regarded as obvious. The prior art would implicitly suggest this and therefore the claimed invention would not be inventive.

Paragraph 13.13 of the PCT ISPE Guidelines specifies the practices of combining teachings for inventive step considerations:

“The combination, substitution or modification of the teachings of one or more items of prior art may only lead to a lack of inventive step/obviousness where a person skilled in the art would have been motivated by the prior art or his general knowledge, with a reasonable likelihood, to combine, substitute or modify one or more items of prior art.

Conversely, where such combination could not have been expected from a person skilled in the art, the requirement of inventive step (non-obviousness) would be met, even if each single item would have been obvious if taken individually.

The combining of two or more parts of the same document would be obvious if there is a reasonable basis for the person skilled in the art to associate these parts with one another. It



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would normally be obvious to combine with other prior art documents a well-known text book or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art. It would, generally speaking, also be obvious to combine the teachings of two documents, one of which contains a clear and unmistakable reference to the other. It should be noted that the motivation to modify the prior art teachings need not be the same as the applicant’s. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the applicant. The prior art may suggest the claimed invention, but for a different purpose or to solve a different problem.”

In relation to the phrase “would have been motivated by the prior art or his general knowledge”, there are three main sources for a reason, suggestion, motivation or desire to combine documents:

i. the nature of the problem to be solved;

ii. the teachings of the prior art that either explicitly or implicitly suggest the claimed invention in the documents themselves; or

iii. the knowledge generally available to one of ordinary skill in the art. That knowledge cannot come from the applicant’s invention itself or by hindsight analysis by reading the applicant’s own invention into the prior art.

The phrase “with a reasonable likelihood” indicates that there is a reasonable expectation of success, or at least some degree of predictability. For example, whether the prior art reveals that in making or carrying out the claimed invention, those of ordinary skill would have a reasonable expectation of success.

When taking an inventive step objection based on a combination of documents (mosaic), examiners must provide detailed reasoning as to why it would be obvious to the person skilled in the art to combine the teachings of the documents. Examples of an appropriate level of detail are given in Annex I.

Problem-Solution Approach According to PCT Guidelines

Inventive step may also be assessed using the problem-solution approach, which consists of the following stages:

1. Determine the closest prior art. The closest prior art is that combination of features derived from a single reference that provides the best basis for considering the question of obviousness. In practice, the closest prior art generally relates to a similar product or process and requires the minimum of structural or functional modifications to arrive at the claimed invention.

2. Establish the objective technical problem to be solved. This involves studying the claimed invention, the closest prior art and the difference between the two in terms of

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features (structural and functional), and then formulating the technical problem. The technical problem derived in this way may not be what the application presents as “the problem,” as the objective technical problem is based on objectively established facts, in particular those appearing in the relevant prior art, which may be different from the prior art that the applicant was aware of at the time the application was filed. The objective technical problem must be formulated without pointers to, or elements of, the technical solution offered by the invention. To do so would necessarily result in ex post facto analysis. In some instances, the objective technical problem can be viewed as an aggregation of a plurality of partial problems. Where the invention is a solution to a plurality of independent “partial problems”, then it may be necessary to separately assess, for each partial problem, whether the combination of features solving the partial problem is obvious. In each separate assessment a different document can be combined with the closest prior art for each partial problem.

3. Consider whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the person skilled in the art. Particular consideration should be given to whether there is any teaching in the prior art as a whole that would (not simply could) prompt the skilled person, faced with the technical problem, to modify or adapt the closest prior art, thus arriving at the claimed invention.

Note: The requirement of technical progress is not a requirement for the problem-solution approach. Nevertheless, an objective problem can always be formulated using the problem-solution approach (“finding an alternative”, “making it easier to manufacture”, “cheaper to manufacture”) even in the case where there is no technical progress.

See also PCT/GL/ISPE/8 at Appendix to Chapter 13.

For further guidance on inventive step see also:

• Chapter 13 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/8)

• 1.1.11.1 Overview

• 1.1.11.2 Inventive Step


1.3.8.6.3 Industrial Applicability

A claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. "Industry" shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property. Industry therefore includes any physical activity of a technical character, that is, an

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activity which belongs to the useful or practical arts as distinct from the aesthetic arts; it does not necessarily imply the use of a machine or the manufacture of an article and could cover a process for dispersing fog, or a process for converting energy from one form to another.

Focusing on the general common characteristics of the industrial applicability requirements, an invention that is inoperative, for example, an invention which is clearly non-operable in view of well-established laws of nature, does not comply with either of the industrial applicability requirements. This type of invention is considered either as having no application in industry or as not being useful for any purpose because it does not work.

For the assessment of industrial applicability, the following steps shall be applied:

• determine what the applicant has claimed, and

• determine whether a person skilled in the art would recognize the claimed invention to have industrial applicability.

It should also be noted that the term ‘industrially applicable’ is synonymous with the term ‘utility’. Thus an invention will meet the requirements for industrial applicability if it has a utility that is:

a. specific – the use is specific to the subject matter of the invention and not a generic use;

b. substantial – no further research is required in order to identify a ‘real’ or specific use; and

c. credible – the use is logical and consistent with the state of the art.

Inventions that contravene well-established laws of nature and are therefore non-operable (e.g. perpetual motion machines, cold fusion, and “spiritual DNA” ), do not comply with either the industrial applicability requirement or the utility requirement. These types of inventions are considered either as having no application in industry or as not being useful for any purpose, because they do not work (refer to Rules 43bis, 66.2(a)(ii), 70.8)

“One situation where an assertion of utility would not be considered credible is where a person skilled in the art would consider the assertion to be “incredible in view of contemporary knowledge” and where nothing offered by the applicant would counter what contemporary knowledge might otherwise suggest.”

Further information on industrial applicability is given in Appendix A14.01[1] of the PCT International Search and Preliminary Examination Guidelines.

Where the claimed invention has industrial applicability, a positive statement to this effect is to be included (see PERP code T644).




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Where the claimed priority is valid, list all "P" category patent documents which are relevant for novelty or inventive step purposes (except category “A” documents) along with their citation category or categories in Box VI, Item 1, but only on the proviso that the cited document has an earlier priority date than a claim of the application subject to IPE, [Rule 33.1(c) Rule 64.3 Ad. Inst. 507(b)]. The relevance of the citation - that is, whether it be to novelty or inventive step - should also be indicated, to the extent of specifying the particular claims to which the citation is relevant in these respects. If the relevance is to novelty, then the particular passages or drawings in the cited document which are relevant should be specified. This applies particularly if this information would be potentially useful to Australian applicants in regard to "whole of contents" issues in the national phase in Australia. [Rule 64.3 Rule 70.10]

Where Box VI contains an indication, a cross-reference to Box VI must be made in Box V (even if there is no other document cited in Box V) PERP code for P & E documents.

Occasionally citations indicate a divisional (AU) or continuation-in-part (US) priority claim in the Bibliographic data (Usually beside INID code (60)). In this situation enter the earliest declared priority date of the citation in Box VI. An assumption of validity is given to priority claim.

Where the claimed priority is valid, P,X or P,Y NPL documents cited in the ISR are not to be listed in Box V or Box VI of the ISO, IPEO and IPRPII. See Rule 64.3 Rule 70.10 of the PCT. Only P,X and P,Y patent documents should be listed in Box VI, and on the proviso that the cited document has an earlier priority date than a claim of the application subject to IPE. For P, X patent documents, the level of details for novelty and inventive step as shown in Box VI of 1.3.10 Annex A and 1.3.10 Annex D respectively will suffice. It may also be noted that there is no need to provide positive statements in respect of Novelty and inventive step for the above documents. In a rare circumstance, if it considered necessary to cite P, A patent documents, they should be discussed in Box V without listing them in Box VI.

However if the claimed priority is invalid, both NPL and patent documents cited in the ISR as P,X or P,Y are to be discussed in Box V of the ISO, IPEO and IPRPII as these documents can be treated as published X and Y documents.

It should be noted that regardless of whether a claimed priority is valid or not, E, patent documents cited in the ISR should always be listed in Box VI of the ISO, IPEO and IPRPII, but only on the proviso that the cited document has an earlier priority date than a claim of the application subject to IPE and the claim is not novel in light of the cited document. The same level of detail as mentioned above for P,X patent documents will suffice.

Any public disclosures (e.g. exhibitions, use, oral disclosure or other non-written means) before the relevant date are indicated in Box VI Item 2. [Rule 64.2 Rule 70.9]

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1.3.8.8 Box VII Certain Defects

This part of the opinion or report deals with defects in the form or contents of the international application (for example, failure to comply with one or more of the requirements specified in Rules 5 to 11). Whilst most of the aspects relating to formalities will have been checked by PCT Unit prior to examination, there will be some formality matters which ought to be reported upon by the examiner. These include matters covered in Rules 5.1, 6.1 (Ad. Inst. 205), 6.2, 6.3, 6.4, 9 and 10. [Rule 66.2(a)(iii)]. The following is a discussion on some of the matters which may be encountered by an examiner.

All claims relying on references to the description or drawings (in particular, omnibus claims), except in those cases where it is absolutely necessary, will fail to meet the requirements of Rule 6.2(a). Hence, no search or opinion is to be established for these claims. Under these circumstances the ISR, ISO, IPEO or IPRPII is required to include the following information:

ISR (see Annex O for example) / INTERNATIONAL TYPE SEARCH:

Box II: ensure that Box 2 is checked, the claim no(s) identified and the following text (or similar) appears directly below:

“The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.” (or similar) in the space directly below."

Note: For Citations Box C : “Documents Considered to be Relevant”: The claim number(s) of any omnibus claim(s) which have not been searched, will not be included in the “Relevant to claim No.” column.

ISO (see Annex O for example):

Box III: ensure that

a. The second box is checked and the claim(s) indicated;and

b. The sixth box is checked and the claim(s) identified (Note that this is facilitated by ticking the box in Doc-Gen stating:

"No international search report has been established for said claims Nos. because they relate to parts of the international application that do not comply with the prescribed requirements to such an extent that no meaningful international search can be carried out")

in each case indicating the claims which have not been examined.

Box V: Claims that fail to meet the requirements of Rule 6.2(a) and thus have not been searched, should be omitted from Items 1 or 2;

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Box VII: Regardless of whether the omnibus claims have been searched or not, ensure that the claims that fail to meet the requirements of Rule 6.2(a) are indicated in this box. The text such as “The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.” (or similar) will suffice.

IPEO / IPRPII:

Box III: Ensure that second and sixth boxes are checked, and the claims which have not been examined are indicated.

Box V: Claims that fail to meet the requirements of Rule 6.2(a) and thus have not been searched, should be omitted from Items 1 or 2;

Box VII: Regardless of whether the omnibus claims have been searched or not, ensure that the claims that fail to meet the requirements of Rule 6.2(a) are indicated in this box. The text such as “The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.” (or similar) will suffice.

INTERNATIONAL TYPE SEARCH:

Written Opinion Sheet: Claims that fail to meet the requirements of Rule 6.2(a) and thus have not been searched, should be omitted.

Supplemental Box: Regardless of whether the omnibus claims have been searched or not, ensure that the claims that fail to meet the requirements of Rule 6.2(a) are indicated under “Other Observations”. The text such as “The claims do not comply with Rule 6.2(a) because they rely on references to the description and/or drawings.” (or similar) will suffice.

In those cases where it is absolutely necessary for the claims to rely, in respect of the technical features of the invention, on references to the description or drawings, then they would be searched and reported upon. Such searching and reporting would be done in accordance to the PCT ISPE Guideline 16.27. (PCT ISPE Guideline 5.10 provides examples of claims where reference to the description is absolutely necessary.)

According to Rule 6.4(a) multiple dependent claims shall not serve as a basis for other multiple dependent claims, except where this matter of claiming satisfies the national law of a designated state. Since our national law allows multiple dependant claims it is not necessary to comment on these aspects in the opinion/report. [Rule 6.4(a)]

Other issues such as the numbering of claims after amendment and reference to non-existent drawings are not defects in the form or content and need not be mentioned in Box VII (see 1.3.9.2 Formalities).




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Box VIII is used only for the specific issues of clarity of claims, description and drawings and whether the claims are fully supported by the description.

The issues of lack of clarity (including inconsistencies between the claims and description) and lack of descriptive support can be raised irrespective of whether they bear on the questions of novelty, inventive step and industrial applicability. However, if unrelated to the last mentioned criteria, issues of clarity should only be raised in the written opinion when they are regarded as significant issues dealing with the overall scope of the monopoly, and a claim should be regarded as supported by the description unless, exceptionally, there are well-founded reasons for believing that the skilled person would be unable, on the basis of the information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed by using routine methods of experimentation and analysis or otherwise that there are serious inconsistencies between the claims and the description. See 1.1.7.3 PCT Articles 5 and 6 [Rule 66.2(a)(v) PCT/GL/ISPE/1 at para 5.31 et seq]

Where the issue is raised, based on an applicant's admissions of prior knowledge, that a claimed invention is inadequately defined, the observation should clearly state the dependency on the applicant's admissions.

It is not possible to precisely define hard and fast guidelines as to what constitutes a significant issue, and whether any observations should be made is a matter for an examiner's discretion.

Observations concerning clarity and descriptive support should not be raised in an IPRPII unless first notified in an IPEO (see Rule 66.2(a)(v)).

1.3.9 General Considerations


1.3.9.1 Article 19 or Article 34(2)(b) Amendments

The standard for the marking of replacement and substitute sheets is:

"SUBSTITUTE SHEET (RULE 9.2)" correction of expressions used in description filed before RO

"SUBSTITUTE SHEET (RULE 26)" formal defect corrections filed before RO

"AMENDED SHEET (ARTICLE 19)" Article 19 amendments filed before the IB

"AMENDED SHEET" Article 34 (and Article 19 - see Admin Inst



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602(c)) amendments filed before IPEA

"SUPERSEDED REPLACEMENT SHEET (RULE 70.16(b)"

Replacement sheet which has been replaced by another replacement sheet which goes beyond the disclosure

"RECTIFIED SHEET (RULE 91)" Obvious error rectification under Rule 91

Article19 amendments need to be verified as having been received by the IB. If the applicant includes alleged Art 19 amendments with the Demand, a check of the correspondence file should be made to see if the IB have transmitted these amended sheets to the IPEA. If not, then a check of the published WO pamphlet on ESP@CE can be done to see if it has been published with amendments (and these checked against the amendments on file). If not then a check with PCT Unit should be made. PCT Unit will send a query to the IB.

If Article 19 amendments are not confirmed as received within the applicable time limits by the IB then the examiner should first consult the applicant/attorney regarding the amendments before deciding to consider the amendments as Art 34 amendments. [Ad. Inst. 602(c)]

Article 19 amendments are to be filed within 2 months from the date of mailing of the ISR or 16 months from the priority date, whichever time limit expires later. It should be noted, however, that the amendments will be considered as having been received on time if they are received by the IB after the expiration of the applicable time limit but before the completion of the technical preparations for international publication (Rule 46.1).

If the applicant indicates that any amendments under Article 19 are to be disregarded, the IPEA treats any such amendments as cancelled and marks the relevant sheets of amendments accordingly.

Where the applicant has marked the appropriate check box in Box No. IV of the Demand that amendments under Article 19 and any accompanying statement are to be taken into account, the IPEA indicates on the last sheet of the Demand whether a copy of such amendments and any accompanying statement were actually submitted with the Demand. Where amendments under Article 19 were submitted with the Demand to IB, a copy of such amendment and any accompanying statement will be transmitted by the IB promptly after the IB receives the Demand. If no amendments under Article 19 have been made at the time when the Demand is received by the IB, the IPEA is so informed by the IB.

"Any amendment", where new claims are substituted for old, is interpreted as "any individual claim". Where amended claims have been received then these should have been numbered in accordance with Administrative Instruction 205. [Ad. Inst 205]

Where the international preliminary examination is to take into account amendments under Article 34, but the applicant failed to submit them with the Demand, the IPEA shall invite the applicant (Form PCT/IPEA/431) within a reasonable time limit fixed in the invitation to submit



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the amendments. Whether the amendments are submitted with the Demand or subsequently, they shall be marked in accordance with Section 602(a)(i) to (iii) and (b) before the file is then forwarded to the examiner. [Ad. Inst. 602, PCT/GL/ISPE/7 at para 18.04]

Where amendments insert claims for which the search report is not appropriate (for example, claims for which the ISA requested additional fees which were not paid), the question of novelty, inventive step, and industrial applicability cannot be gone into since there are no documents to consider under Art 33(6), and such reasoning is added to the "Non-establishment" Box III of the opinion/report form. [Art 33(6) PCT/GL/ISPE/7 at para 19.25].

Note: If the amended pages are not numbered, then the file should be sent to the PCT Unit with a note to ask the agent for numbered pages.

New Subject Matter

Amendments to the description and drawings, as well as the claims, must not go beyond the disclosure of the international application as originally filed.

An amendment should be regarded as introducing subject matter which extends beyond the content of the application as filed, and therefore impermissible, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which was not expressly or inherently presented in the application as filed. The term “inherently” requires that the missing descriptive matter is necessarily present in the disclosure, and that it would be recognised by persons of ordinary skill. Inherency cannot be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.

The subject matter newly presented may be introduced by explicitly mentioning matter which was either not previously mentioned at all or only implied. For example, if in an application relating to a rubber composition comprising several ingredients the applicant seeks to introduce the information that a further ingredient might be added, then this amendment should normally be regarded as going beyond the disclosure in the application as originally filed.

If, however, the applicant can show convincingly that the subject matter in question would, in the context of the claimed invention, be so well known to the person skilled in the art that its introduction could be regarded as an obvious clarification and, therefore, as not extending the content of the application, it is permissible.

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Alteration or excision of text, as well as the addition of further text, may introduce new subject matter. For instance, suppose a claimed invention related to a multi-layer laminated panel and the description included several examples of different layered arrangements, one of these having an outer layer of polyethylene, amendment either to alter the outer layer to polypropylene or to omit this layer altogether would not normally be regarded as permissible. In each case, the panel disclosed by the amended example would be quite different from that originally disclosed and hence the amendment would be considered as introducing new subject matter.

Amendment by the introduction of further examples should always be carefully considered since prima facie any further example to illustrate a claimed invention may extend the disclosure of the application as originally filed.

For further guidance see PCT/GL/ISPE/7 20.10 et seq.

Note: The above provisions do not apply where a change to the application is for the purpose of rectifying an obvious mistake – see 1.1.17 Rule 91 Obvious Mistakes in Documents.

Where at least some claims go beyond the disclosure, this observation must be included in a written opinion (form PCT/IPEA/408) and IPRP (form PCT/IPEA/409) at Box 1 Item 4, with reasoning in the Supplemental Box of the last sheet.

• Where only some claims go beyond the disclosure, no further consideration is made of these claims or other claims in so far as they are appended thereto. [Rule 66.2(a)(iv)]

• Where all claims are considered to go beyond the disclosure the file is to be referred to the supervising examiner forthwith to obtain the supervising examiner’s agreement.

Note: It seems that, in any opinion, novelty and other questions should only be addressed to allowable or original claims. This course is not particularly useful where, as is likely, further amendment could overcome the problem. Some discretion may be desirable but it must be remembered that: • further amendments might not be filed, and the examination report can be established only with respect to allowable claims • at least one opinion addressing the allowability of the claims should precede the ultimate report.


1.3.9.2 Formalities

1.3.9.3 General Notes on Form Completion


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Whilst most of the aspects relating to formalities will have been checked by PCT Unit prior to examination, there will be some formality matters which may be reported upon by the examiner. These include matters covered in Rules 5.1, 6.1 (Ad. Inst. 205), 6.2, 6.3, 6.4, 9 and 10. [Rule 66.2(a)(iii)]


1.3.9.3 General Notes on Form Completion

When completing forms [PCT/GL/ISPE/6 at para 17.10, 17.13, 17.51 et seq, 17.64, 17.67, 17.68]:

• if there is insufficient space in any Box provided use a Supplemental Box sheet(s).

• inapplicable parts of the form are left blank; blank sheets may be omitted from the opinion but the first, second and sixth sheets, at least, will always be included; when electronically prepared, blank portions of the opinion may be shrunk; Intelledox will enter a sheet total for the printed version of the opinion.

The date on all documents emanating from International Authorities relating to the international application shall be indicated by the Arabic number of the day, by the name of the month, and by the Arabic number of the year, for example, 02 February 1991. Dual format for dates is not required on any document except the request. [Ad. Inst. 110]

Matters raised in opinions should be as comprehensive and detailed as possible and to a standard consistent with Australian national examination. For example, issues relating to the clarity of claims, description, and drawing or on the question whether the claims are fully supported by the description will be reported under "Certain Observations on the International Examination". The report will not address any other discretionary matters, e.g. multiple dependent claims, and independent claims in the two-part form. [PCT/GL/ISPE/6 at para 17.35, 17.50]

Explicit (as opposed to implicit) suggestions or recommendations of possible amendments which would avoid a negative statement in the report must not be made. This is because:

• the very act of doing so may cause the applicant to feel restricted to responding as suggested, thereby denying to itself other, possibly better, options;

• the suggestion or recommendation could be wrong; and

• the examiner, for these suggested amendments, takes over the role of an attorney thereby vacating his or her own role. This results in the public and the applicant being without the services of an objective examiner.

However, it may sometimes be useful, for example, where an applicant is proceeding without professional assistance (such as a patent attorney), if the examiner suggests, in general terms, an acceptable form of amendment; but if the examiner does so, he or she should

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make it clear that the suggestion is merely for the assistance of the applicant and that other forms of amendment will be considered. It is always the applicant's prerogative to amend how it thinks best.

If the examiner who performs the examination is not the responsible examiner then he or she should pass the opinion/report and file to the responsible examiner for supervision.

If the responsible examiner is satisfied with the opinion/report then he or she should indicate their name as "Authorised Officer" and clicks SUBMIT in Intelledox to automatically send the document templates to the PCT Unit.

Examination sections have prime responsibility for eliminating the errors occurring in reports. They must aim to eliminate errors in reports with effective quality assurance procedures.

A preliminary examination checklist is provided at Form IPE Quality Checklist.


1.3.9.4 Rule 91 Obvious Mistakes in Documents

Rule 91.1 provides that obvious mistakes may be rectified. A request for rectification will be in the form of a letter from the applicant. Where rectification in respect of any document other than the request form is sought before the IPRPII is established, PCT Unit will forward the request for rectification, the relevant file and necessary forms to the relevant examination unit for consideration. [Rule 91.1 PCT/GL/ISPE/6 at Chapter 8]

The search examiner considers whether the mistakes are rectifiable under Rule 91.1 and gains agreement from a senior examiner. The examiner then completes form PCT/IPEA/412 inserting the name of the senior examiner consulted as "Authorised Officer" and the examiner clicks Submit in Intelledox, see MPP 4.9.6.6.

Note: 1. Obvious mistakes in the description, claims or drawings, abstract, or any paper submitted to the IPEA are rectifiable before the IPEA (Rule 91.1 is not appropriate, before the IPEA, for rectifications to the request form, which are considered under Rule 92 bis). [Rule 91.1] 2. Rule 26.4 specifies the manner in which rectifications are requested. [Rule 91.2] 3. Where rectifications authorised by the IPEA involve a replacement sheet, copies of the replacement sheets must be annexed to the IPE Report. [Rule 66.8(a) Rule 70.16 Ad. Inst. 607]. The cover sheet of PCT/IPEA/409 is to indicate the presence of the annex or annexes. Box 1 of PCT/IPEA/409 is to indicate as “originally filed/furnished”.

Annex H - IPE Quality Checklist


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4. Rule 91.1(c) to (g) is the only source of instruction when considering requests for rectification i.e. case law does not exist. 5. Although Rule 91.1(h) allows the IPEA to invite rectifications it is not envisaged that such invitations will be issued since any mistakes which can be rectified under Rule 91 will not cause any problems in establishing the IPRPII.

For guidance on the nature of an “obvious mistake”, see 1.1.17 Rule 91 Obvious Mistakes in Documents.

1.3.10 Annexes


Annex H - IPE Quality Checklist

Address for correspondence is that on the latest correspondence from the applicant or agent. MPP 1.3.8.1 Front Page and Notification Application Details

Applicant's/agent's reference number is from the latest correspondence from the applicant or agent must be used. Note that the latest correspondence from PCT will not necessarily indicate the latest reference number. MPP 1.3.8.1 Front Page and Notification Application Details

Basis of report. All amendments filed with demand, Art 19 or 34 have been considered. MPP 1.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs

Filing date is automatically entered when the International Search Report Intelledox template is used. This information is on the front page of the PCT Request Form.

Priority date is automatically entered when the International Search Report Intelledox template is used. This information is also in PCT Request Form Box VI. MPP 1.3.8.1 Front Page and Notification Application Details

IPC marks are valid in the current edition of the IPC. MPP 1.3.8.1 Front Page and Notification Application Details

Demand date is correct.

Final date of establishing IPRP II is correct

Annex I - Examples of Inventive Step Objections


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No. of sheets is correct

All relevant Boxes crossed and related explanation given.

Citation/s are correctly identified.

Reasoned statement for novelty and inventive step (Box V)- the claim numbers in the statement and explanation are consistent.



Note: Examiners are reminded that negative explanations should clearly indicate, with reference to the documents listed in Box V Item 2 under “Citations and Explanations” that are relevant to the issue being discussed, the reasons supporting a conclusion that the criterion of inventive step has not been satisfied – see 1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability. Consequently, if not explicitly discussed in any of the following examples, examiners should assume that the disclosure of the primary citation (D1) has been discussed in detail earlier in the ISO, IPEO or IPRPII (such as in a reasoned explanation regarding novelty).

X Category Document Plus Common General Knowledge - No Documentary Evidence Required (single source of information)

Example 1

Claim 17 is not inventive in light of D1. Claim 17 defines an antibody that binds to the protein of SEQ ID NO: 1. D1 discloses SEQ ID NO: 1, but does not disclose the production of antibodies that bind to this protein. However, the generation of antibodies against a known protein is a standard technique and would be considered common general knowledge in the art. Therefore the production of antibodies, as defined by this claim, is not inventive in light of D1.

Example 2

Claim 3 does not involve an inventive step in light of D1 or D2 and common general knowledge. These documents each disclose a container made from a plastic material (see page 2, lines 10-15 in D1 and page 3, lines 5-8 in D2). Claim 3 differs from D1 and D2 in



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that the material of the container is made from polyethylene. The properties of polyethylene are so well known that the use of this material in the manufacture of the container, because of its known properties that make it suitable for this purpose, does not involve an inventive step. Therefore claim 3 is not inventive over D1 or D2 in view of common general knowledge.

Example 3

Claims 1 and 11 do not involve an inventive step in view of D1 and common general knowledge. The substitution of high-voltage electrical conductors by utilising the existing conductors as draw wires to pull the new conductors into position is very well known in the art, particularly in the substitution of underground power transmission conductors installed in conduit. It is noted that the claims have not been limited to the substitution of high-voltage power conductors of only over head high-voltage transmission lines and therefore include the substitution of high-voltage power conductors installed in conduit within their scope. Thus the subject matter of claims 1 and 11 does not meet the criteria set out in Article 33(3) of the PCT.

X Category Document Plus Common General Knowledge – Documentary Evidence Required (the document/s used to support an assertion of CGK are categorised as “A”)

Example 1

Claim 28 is not inventive in view of D1 and common general knowledge. Claim 28 defines the protein of claim 1 which has a PEG group attached. D1 discloses the protein of claim 1, but does not teach or suggest PEGylation. However it is well known in the art that PEG groups can be attached to proteins in order to improve their pharmacokinetic properties, and that this process has previously been used with many pharmaceutical proteins. For example, the following documents disclose PEGylated proteins and are representative of the state of the art: D5 (page 7, lines 23-28), D6 (column 10, lines 4-10) and D7 (page 1543, second paragraph). Claim 28 is therefore not inventive in light of D1 when combined with the common general knowledge in the art as represented by any one of D5, D6 and D7.

Example 2

Claim 1 does not involve an inventive step in view of the disclosure of D1 and common general knowledge. D1 teaches all of the claimed features with the exception of at least two equally distributed flow plates arranged on the cap of the forward propeller. The provision of equally distributed flow plates on the cap of a propeller, to achieve enhanced flow performance characteristics of the propulsion system, is considered to amount to common general knowledge within the marine propulsion art. For example, D2 teaches a propeller hub cap with two equally distributed flow plates to enhance flow performance characteristics



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(see the relevant text under heading of “Propeller Designs” on page 10 and figure 3 on page 11 from the Boat Design Handbook). Hence claim 1 does not involve an inventive step over D1 in view of common general knowledge as indicated in D2.

Example 3

Claims 2, 3 and 11 do not involve an inventive step in light of D1 and common general knowledge. D1 does not disclose the features of producing a printed pattern on a contact lens that is the result of overlaying a first and a second pattern, or a printed pattern of a single colour, or where the printed pattern is non-uniform. However these features are considered to be well-known in the art (see, for example, D2: paragraphs 17, 18 and 23 and D3:,paragraphs 4 and 5, one-colour Knapp lenses and the multiple-colour Jahnke lenses). Therefore the subject matter of these claims is considered to lack an inventive step with respect to the combination of D1 with common general knowledge as indicated in D2 and D3.

Y Category Documents (Mosaicing multiple documents where all documents are categorised as “Y”)

Example 1

Claim 1 is not inventive in light of D1 when combined with D2.

Claim 1 defines a method of treating ovarian cancer by using antibodies that bind to the protein of SEQ ID NO: 1.

D1 discloses the protein of SEQ ID NO: 1, but does not suggest that it is involved in cancer, nor does it suggest the use of antibodies against this protein to treat cancer. However, this document discloses that SEQ ID NO: 1 is the ligand for a membrane-bound receptor (MBR-a) that is known in the art (see page 20, lines 10-15). D2 discloses this receptor and indicates that signalling via this receptor causes certain types of cancer (including ovarian cancer) (see page 5, lines 1-25). D2 further discloses the production of antibodies against the MBR-a receptor, and the use of these antibodies as a therapeutic treatment for cancer (see page 6, lines 24-31).

Thus D1 and D2 each demonstrate a biological pathway that involves the protein of present claim 1 (SEQ ID NO: 1). Furthermore, D2 teaches that inhibition of this pathway (using, for example, antibodies against the corresponding receptor, MBR-a) can be used to treat cancer. The person skilled in the art would therefore be motivated to combine the teachings of D1 and D2 in order to provide new methods for treating ovarian cancer by inhibiting additional proteins involved in the pathway (such as the ligand of SEQ ID NO: 1). Consequently, claim 1 is not inventive in view of an obvious combination of these documents.

Annex J - Examples of Objections under PCT Articles 5 and 6


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Example 2

Claim 6 does not involve an inventive step when the disclosure of D1 is combined with the disclosure of D2.

Claim 6 defines a masonry block in which insulating foam is sandwiched between two load bearing outer concrete layers.

D1 discloses a building block in which insulating foam is sandwiched between two outer glass layers (see page 3, lines 20-25 and figures 1-3). D2 discloses a structural beam with an insulating foam sandwiched between two outer concrete layers (see page 4, lines 15-18 and figures 4-6). The concrete layers in D2 perform the same load bearing function as the glass layers in D1 when utilised in a composite building or structural element comprising insulating foam.

It is considered that a person skilled in the art would, in seeking a solution to the problem being addressed, be motivated to combine the disclosures of D1 and D2 by substituting the glass layers of D1 with the concrete layers of D2 and thereby arrive at a solution that is the same as the claimed invention. Hence claim 6 does not involve an inventive step over the combination of D1 and D2.

Example 3

Claim 3 is not inventive in view of D3 when combined with D4.

D3 discloses that tungsten selenide is a known thermoelectric compound. However, D3 fails to disclose that the layers are substantially randomly oriented.

D4 discloses that building layers in disorder and/or forming superlattice structures decreases the thermal conductivity (see column 1, lines 34–52).

In view of D4, the problem to be solved is to decrease the thermal conductivity of thermoelectric materials. The person skilled in the art would have been motivated to combine the disclosures of D3 and D4 because of the advantages obtained from reduced thermal conductivity and thereby arrive at the claimed invention. Hence the subject matter of claim 3 is considered to lack an inventive step with respect to the combination of D3 and D4.



Example 1 (objections under Articles 5 & 6)

Claims



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1. A method of identifying a compound that inhibits a nematode secretion pathway comprising steps of:

providing a nematode, wherein the nematode produces a secretion product;

contacting the nematode with a test product; and,

detecting a decrease in the activity or amount of the secretion product when the test compound is present versus when the test compound is absent.

2. A compound identifiable according to the method of claim 1.

3. A pharmaceutical composition comprising:

a compound identifiable according to the method of claim 1; and,

a pharmaceutically acceptable carrier.

4. An anti-nematode agent for use in preventing or reducing nematode infestation of a plant comprising:

a compound identifiable according to the method of claim 1; and

an agriculturally acceptable carrier.

Background

The only compound disclosed in the specification as inhibiting a nematode secretion pathway is 4,7-phenanthroline.

Objection under Article 5.

Present claims 2 to 4 relate to a compound defined by reference to a desirable characteristic or property, namely that it inhibits a nematode secretion pathway. The claims cover all compounds having this characteristic or property whereas the description only discloses one compound with this property, 4,7-phenanthroline (example 10, figure 8).

PCT Article 5 requires that the description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. The PCT Guidelines state that the disclosure of the claimed invention is considered sufficiently clear and complete if it provides information which is sufficient to allow the invention to be carried out by a person skilled in the art as of the international filing date, without undue experimentation.

Although a reasonable amount of trial and error is permissible, a person skilled in the art must, on the basis of the disclosure of the claimed invention and the general knowledge, be able to carry out the invention across the entire scope of the claim without undue experimentation.



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While it may be possible to predict that particular compounds are likely to inhibit a nematode secretion pathway, there will still remain a large number of compounds where it cannot be predicted if they will or will not inhibit the secretory pathway. These may be screened to test for this ability, however the extremely large number of compounds to be screened means that not all possible compounds with the desired characteristic or property could be identified without undue experimentation. Therefore, based on the unpredictable nature of the invention and the extreme breadth of the claims, one skilled in the art could not carry out the invention across the entire scope of the claims without undue experimentation

Therefore the description does not meet the requirements of Article 5 of the PCT with regards to it being sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

Objection under Article 6

Present claims 2 to 4 relate to a compound defined by reference to a desirable characteristic or property, namely that it inhibits a nematode secretion pathway. The claims cover all compounds having this characteristic or property whereas the description only provides support within the meaning of Article 6 of the PCT for one compound, 4,7-phenanthroline (example 10, figure 8).

The claims are considered to go beyond the scope of the disclosure of the specification as it is not reasonable to predict all possible compounds that are covered by the claims, nor could all possible compounds falling within the scope of the claims be identified through routine experimentation or analysis alone. As the claims are considered to lack enablement for all compounds thereby embraced, they are not fully supported across their entire scope as required by Article 6 of the PCT.

Restriction of search.

This lack of disclosure/support means that a meaningful search over the entire scope of claims 2 to 4 cannot be conducted. Consequently the search has been carried out for those parts of the claims which appear to be supported/disclosed, namely those parts relating to 4,7-phenanthroline.

Note - unity:

In situations such as this with “reach through” claims the examiner should also consider if unity of invention is lacking and object where appropriate.

Claiming by result.

Note: claims should also be objected to as lacking clarity (see PCT/GL/ISPE/5 paragraph 5.35).

US objection under the PCT (for contrast).



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Present claims 2 to 4 relate to a compound defined by reference to a desirable characteristic or property, namely that it inhibits a nematode secretion pathway.

The claims cover all compounds having this characteristic or property, whereas the application provides support within the meaning of Article 6 PCT and disclosure within the meaning of Article 5 PCT for only one compound. In the present case, the claims so lack support, and the application so lacks disclosure, that a meaningful search over the whole of the claimed scope is impossible. Independent of the above reasoning, the claims also lack clarity (Article 6 PCT). An attempt is made to define the compound by reference to a result to be achieved. Again, this lack of clarity in the present case is such as to render a meaningful search over the whole of the claimed scope impossible. Consequently, the search has been carried out for those parts of the claims which appear to be clear, supported and disclosed, namely those parts relating to the compound 4,7-phenanthroline (example 12, figure 8).

Example 2 (objection under Article 5)

Claims

1. A solid detergent composition comprising from 8 to 60 wt % of a surfactant system and having a Grand Compatibility Index of at least 0.5.

Background

The Grand Compatibility Index parameter is unknown in the prior art. It turns out to be a function of a large number of other parameters, many of which are not quoted in the prior art. Several pages of the application are taken up with an explanation of an elaborate testing procedure, using highly specialised laboratory equipment, which will, when followed, compute the grand compatibility Index of a given detergent. There are five worked examples of detergent compositions satisfying the parameter in the description.


Article 5 of the PCT requires that the description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. The PCT Guidelines state that the disclosure of the claimed invention is considered sufficiently clear and complete if it provides information which is sufficient to allow the invention to be carried out by a person skilled in the art as of the international filing date, without undue experimentation.

Although a reasonable amount of trial and error is permissible, a person skilled in the art must, on the basis of the disclosure of the claimed invention and the general knowledge, be able to carry out the invention across the entire scope of the claim without undue experimentation.



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The claims are directed to a detergent composition characterised by the Grand Compatibility Index (GCI) parameter, which is a parameter that is not standard in the art and is calculated from other non-standard parameters in the art which an require elaborate testing procedure, using highly specialised laboratory equipment. Accordingly it is considered that the GCI parameter does not form part of the common general knowledge of the person skilled in the art, and that it would not be possible for the addressee to predict which detergent compositions possess the specified parameter at the specified level. Given the use of parameters which are unusual in the art, it is considered that the skilled addressee could not, on the basis of the disclosure, determine which compositions will have a GCI of at least 0.5 without undue experimentation. Hence it is considered that the specification does not disclose the invention of claim 1 in a manner sufficiently clear and complete for the invention to be carried out by the skilled addressee and that the description therefore does not meet the requirements of Article 5 of the PCT.


Claims

1. A cloned non-human mammal.

2. A method of cloning a non-human mammal comprising:

i. fusing a non-human mammalian differentiated cell with an unactivated, enucleated metaphase II arrested oocyte to reconstruct an embryo;

ii. maintaining the reconstructed embryo without activation for sufficient time to reprogram the nucleus;

iii. activating the reconstructed embryo;

iv. transferring said reconstructed embryo to a non-human host mammal such that the reconstructed embryo develops to term.


Claim 1 does not meet the requirements of Article 6 of the PCT because it is not fully supported by the specification. Claim 1 is considered to be broader than is justified by the disclosure of the specification and lacks enablement across its entire scope.

Claim 1 is directed to a cloned non-human mammal and encompasses cloned mammals produced by any possible means. This is a problem which others have attempted to solve and is a desired result in the art, as evidenced by:

D1; WO 1996/007732 (ROSLIN INSTITUTE);



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D2; Liu L et al, “Nuclear remodelling and early development in cryopreserved, porcine primordial germ cells following nuclear transfer into in vitro-matured oocytes” The International Journal of Developmental Biology, 1995, 39(4):639-644.

Accordingly, it is considered that more than routine experimentation would be required to determine each and every possible method of producing a cloned non-human mammal, and that methods beyond those disclosed in the description would be required to achieve the desired result. Therefore claim 1 is considered not to meet the requirements of Article 6 of the PCT, as it extends beyond the disclosure of the specification.

[Documents cited to be included in the ISR.]


Claims

1. A compound of general formula R’—O—Sn(R)2—O—R’ wherein each R’ individually represents hydrocarbyl, alkyl, cycloalkyl, aryl or aralkyl; and each R individually represents a hydrocarbyl group, e.g., alkyl, cycloalkyl, aryl or aralkyl.

2. The novel di-sucrose mono-tin intermediates,

3. (sucrose-6-ester) – O – Sn(R)2-O- (sucrose-6-ester).

4. A process of production of a compound of claim 1 when the compound is of general formula (sucrose-6-ester)-O-Sn(R)2-O-(sucrose-6-ester), comprising, sequentially:

a. Dissolving sucrose and a di(hydrocarbyl)tin catalyst, preferably dibutyltin oxide in appropriate molar proportions, preferably around 1:0.5 with respect to moles of sucrose taken, in a solvent, preferably N,N-dimethylformamide (DMF),

b. Allowing reaction to occur for a period of time ranging from 6 to 18 hours, preferably for about 10-13 hours under conditions facilitating continuous removal of water, preferably involving continuous heating of the reaction mixture at elevated temperature preferably at around 80-85 degrees celcius.

Background:

A regioselective method of producing a sucrose ester via a particular mono-tin intermediate, wherein two sucrose molecules are attached to a tin core, is disclosed.

Citation:

D1 discloses a process for producing a di-tin adduct from sucrose and a tin catalyst using methanol as solvent.


1.4.1 Introduction


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Claim 1 is not fully supported. The claim defines a compound of general formula R’—O—Sn(R)2—O—R’ wherein R’ individually represents hydrocarbyl, alkyl, cycloalkyl, aryl or aralkyl, thus encompassing non-sucrose based stannylene adducts. However, the invention relates to a process for the regioselective synthesis of a sucrose-6-ester via a sucrose based stannylene adduct, which is the product of the organo-tin catalyst and sucrose (see paragraph 1 page 5). All the examples are directed to processes involving sucrose, and there is no indication that the reaction mechanism will be identical for non-sucrose adducts. In the absence of any information regarding the use of non-sucrose adducts in the specification as filed, the person skilled in the art would be unable to extend the teaching of the description to the whole of the field claimed by using routine methods of experimentation or analysis. Therefore, insofar as it defines a non-sucrose based stannylene adduct, the subject matter of claim 1 is not fully supported by the specification as required by Article 6 of the PCT.

Claim 4 is not fully supported for the purposes of Article 6 of the PCT. This claim recites a process of producing a specified sucrose mono-tin adduct involving the use of “a solvent”. D1 teaches that if methanol is used as the solvent, a different di-tin adduct results, thus establishing that it is not reasonable to expect that any solvent will produce the specified sucrose mono-tin adduct. Therefore, insofar as claim 4 does not identify the solvent, or class of solvents, necessary to produce the sucrose mono-tin adduct specified in the claim, this claim lacks full support.

1.4 Fiji Applications


1.4.1 Introduction

As a result of an initial agreement reached between the Australian Patent Office and the Administrator-General of the Government of Fiji in 1979, this Office undertook to do patent searching on behalf of the Fijian Government.

In view of the fact that the Fijian Administrator-General may not have access to expertise to consider the results of such a search, it will be necessary, in addition to the search, to provide an advisory opinion on the patentability (to the extent of manner of manufacture) and novelty under Australian patent law concepts, of the Fijian application. This opinion must be comprehensive since it is assumed that no further opinion will usually be issued and that the Fijian Administrator-General has no detailed knowledge of patent law.

Under Fijian law the Administrator-General determines whether the application is prima facie entitled to protection. If so, a provisional certificate is issued and the application is published. In the absence of opposition, letters patent are granted. Thus the purpose of the Australian

1.4.2 Completion Time and Priority


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Patent Office performing a search and giving an advisory opinion is to assist the Administrator-General in his determination of the application's prima facie registrability.

Since these searches are based on applications filed according to Fijian law the specification is not required to contain claims, however the specification is required to describe and ascertain the nature of the invention and the manner in which it is performed. To assist in elucidating the invention, drawings should also be filed. In addition, Fijian law requires an invention to be for a manner of new manufacture, a new process of manufacture, a new method of applying a known process or improvements in known processes and letters patent in Fiji can only be granted for one invention. Thus, except for the absence of claims, the requirements of the Fijian Patents Act are similar to the requirements of our Act, but not as well developed.



The search examiner should aim to despatch Fijian searches within 9 weeks of request date and, along with Thai and WIPO searches, have the lowest priority of all international searches. The priority for searches within this category of Fijian, Thai and WIPO searches is by request date order. (See Customer Service Charter Timeliness Guidelines for apology time limits).


1.4.3 Initial Processing

Upon receipt in this Office such requests are forwarded to PCT Unit who will:

• acknowledge receipt to the Fijian Administrator-General,

• allocate an identification number using the Fiji application number and scan the documents in INTESS,

• update the applicant’s details in Applicant object,

• update the search request date in Search object which will be the date of receipt in this Office,

• fill the search report and advisory opinion completion date as 10 weeks (See Customer Service Charter Timeliness Guidelines for apology time limits) from the request date in Search object in INTESS,

• create a Fijian application folder for each new application in the International Folder on the V:\ Drive,

• make an alias and place it in the appropriate technology Tech Sort sub-folder in INTESS.



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A Tech sorter will now perform the tech sort and forward the ECase to an examination section.



The search examiner will:

• classify the invention

• prepare a written search statement defining the scope of the invention to be searched. If plurality of invention exists then the search statement must encompass all the inventions disclosed as each invention is to be searched.

Note: The need to prepare a written search statement is essential since Fijian applications do not require claims. Also, since it is not possible to communicate with the applicant, the examiner must attempt to define the invention by the search statement. Where claims are present these can be used as a basis for the search statement.

Where a meaningful search cannot be made, then an advisory opinion is prepared on that basis. However, a search is done where practicable.

• indicate a proposed search

• carry out an "original" search in accordance with 4.1.4 Development of the Search Strategy

In performing the search, the documents which are relevant are those which destroy the novelty of the invention as defined in the search statement. A search for obviousness is not required.

The priority date of the Fijian application is taken as the date of the petition. The petition should be on the documents accompanying the Fijian application.

The Examiner will download and store all citations relating to the Fijian application in the respective International application folder on the V:\ Drive.


All details of the search must be recorded on the Search Information Statement (SIS), which is generated by the template in Intelledox. This includes details of all patent and non-patent literature searches, as well as searches conducted on the internet. The names of the members of the three person team should also be recorded. See 4.1 Annex F for

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information on when a SIS must be completed. Further information on the SIS and instructions for its use are provided at 4.1.6 Recording the Search Details and 4.1 Annex D - Search Information Statement (Instructions for completing the SIS).


1.4.5 Search Report and Advisory Opinion

On completing the search the examiner will complete a Search Report and Advisory Opinion form (see completed example(s) at Annex A). The report and opinion is completely of an advisory nature.

The report and opinion will be offered under Australian patent law concepts.

Patentability opinion will be limited to the manner of manufacture consideration of Section 18(1)(a). This limitation should be established in the written opinion - note the expression "...patentable to the extent that it satisfies Section 18(1)(a) of the Patents Act 1990" at item 1 of Annex A.2.

Novelty opinion will be based on the considerations for Section 18(1)(b)(i), of the Patents Act 1990. This should also be established in the written opinion - note the expression "...novel, as required by Section 18(1)(b)(i) of Patents Act 1990" at item 2 of Annex A.2

It is important that the essence of both expressions above is included in the opinion in order that the Fijian Administrator-General, who has been forwarded a copy of the Australian Patents Act 1990, understands precisely the scope of the opinion offered.

In preparing the opinion it will be necessary to fully explain each objection since the Fijian Administrator-General may not have ready access to other sources of technological or patent law advice. The quoting of case law should be avoided; instead there should be a clear statement of the principles involved and their application in the present situation.

It should be clearly stated in the opinion that the invention as defined by the search statement (which may draw on suitable claims, if any) is the subject of the opinion.

Where:

• the subject matter or the nature of the application is such that it is not possible to arrive at a meaningful search statement or to conduct a meaningful search, then this will be fully explained in the opinion.

• more than one invention is present this will be identified in the search statement and in the opinion. Citations found, if any, in each search will be discussed in relation to each relevant invention.

• there is no objection to patentability, as is expected in most cases, a simple statement to this effect is sufficient.

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• there is an objection to patentability, full explanation is required.

• there is no objection to want of novelty, sufficient explanation should be given for an understanding of why novelty does exist, e.g. by showing the integer of a combination of the present invention not found in the closest prior art or a discussion of other differences.

• there is an objection to want of novelty, the completed examples of the annexes indicate the level of explanation required.

• the search examiner is not an authorized officer, upon completing the report and opinion form, the search file is referred to the responsible officer for supervision.

The search examiner (and/or the authorised officer) will closely check the report for any errors before SUBMIT is clicked in Intelledox and the template is automatically sent to the PCT Unit for final processing (see 1.4.7 Final Processing). There is no requirement for reports to be signed, and to avoid any confusion in the mind of the applicant resulting from differing practices, reports should not be signed.

A Search Information Statement (SIS) will be generated by the template in Intelledox.


1.4.6 Further Advisory Opinion

The Fijian Administrator-General may have conveyed to the Fijian applicant the results of the search report and advisory opinion prepared by this office. This will almost certainly be the case where the Administrator-General makes an adverse determination in respect of the Fijian application. The applicant may respond by making submissions and/or proposing amendments. The Administrator-General may convey these submissions/amendments to this office for a further advisory opinion.

Upon receipt of any submissions/amendments in this office the PCT Unit will:

• acknowledge receipt to the Fijian Administrator-General,

• scan the documents in the ECase,

• make an alias and place it in the examiner’s alert folder who originated the search report and advisory opinion.

The search examiner will prepare a further advisory opinion (completed example(s) see Annex B). This will not involve any further searching regardless of the introduction of new subject matter or any broadening in scope to the invention as previously established. The opinion will follow Annex B in levels of explanation and subject matter, i.e. in again addressing patentability (to the extent of manner of manufacture) and novelty, under Australian patent law concepts. The opinion will also recognise and discuss the submissions/amendments.

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The sole fresh consideration of a further opinion is that of allowability of amendments, as would prevail under the Australian patent law concepts. The Fijian Act allows amendments "provided that no extension or enlargement of any exclusive privilege before acquired shall be affected by such amendment." This implies that no broadening of the scope of the monopoly is allowable.

Allowability of amendments should be based primarily on the considerations for Section 102(1) of the Australian Patents Act 1990. At the first opinion stage a search statement will have been drafted drawing on the description, drawings and suitable claims, if any, of the specification as filed. Amendments will be considered not allowable if, as a result of amendment, the specification would claim matter not in substance disclosed in the specification as filed. A contrast of the search statement of the first opinion with a notional search statement following amendment may assist the determination. A full explanation of amendments not considered allowable, and a brief explanation for allowable amendments, will be made. Again the scope of the opinion will be indicated by an expression such as "...allowable under Section 102(1) of the Patents Act 1990" as shown at item 1 of Annex B.

Where the search examiner is not an authorized officer, upon completing the further opinion form the search file is passed to the responsible officer for supervision.

Following preparation of the search report in Intelledox the examiner (and/or the section quality controller) will closely check the report for any errors before the examiner clicks SUBMIT in Intelledox and the templates are automatically sent to the PCT Unit for final processing.



Upon receiving a search report and advisory opinion template through Intelledox the PCT Unit will:

• access the stored documents relating to the Fiji application from the International application folder on the V:\ Drive,

• print one copy of each citation and one copy of the report and opinion form and despatch to Fiji under a covering letter to the Fijian Administrator-General,

• update the Search object with the date of mailing to the Fijian Administrator-General.

Upon receiving a further advisory opinion the PCT Unit will:

• make one copy of the further opinion,

• despatch the further opinion, under a covering letter, to the Fijian Administrator-General,

• update the search object with the date of mailing to the Fijian Administrator-General.

1.5.1 Introduction


225

1.5 Thai Applications


1.5.1 Introduction

The Australian Patent Office has agreed to assist the Department of Intellectual Property of Thailand by searching a small number of applications made under the Thai Patents Act. Both Thai nationals and non-Thai nationals are required to pay the current search fee for this assistance. (Any fee payable is arranged by the PCT Unit on completion of the search.)

The Thai Office will usually provide, as minimum search documentation, an English language translation of the abstract and the broadest claim together with a copy of the drawing(s) where applicable of each application to be searched.



Thai searches should be completed within 9 weeks of request date and have a lower priority than the establishment of International Search Reports (ISRs). The priority for all searches other than that for ISRs is by request date order.

Search Reports should, under normal circumstances, be transmitted to Department of Intellectual Property of Thailand within 9 weeks of receipt of the request but in all cases are to be transmitted to the Thai office within 12 weeks of the date of receipt of the request for a search by this Office. It is important that this latter time limit be met, as it is set down in our Memorandum of Understanding with the Thai office. (See Customer Service Charter Timeliness Guidelines for apology time limits).


1.5.3. Initial Processing

Upon receipt in this Office such requests are forwarded to the PCT Unit who will:

• acknowledge receipt to the Department of Intellectual Property of Thailand,

• allocate an identification number using the Thai application number and scan the documents in INTESS,





226

• Update the search report completion date as 10 weeks (See Customer Service Charter Timeliness Guidelines for apology time limits) from the request date in Search object in INTESS,

• create a Thai application folder for each new application in the International Folder on the V:\ Drive,





The search examiner will:

• classify the invention

• indicate a proposed search which will be a standard international search. The agreement between IP Australia and the Department of Intellectual Property of Thailand stipulates that “IP Australia will discover as much of the relevant prior art as our facilities permit and will, in any case, consult the documents specified in the PCT minimum documentation in accordance with Rule 34 of the Regulations under the PCT”.

• conduct an international-type search, using the procedures set out in 1.2.1 Procedural Outline - International Type Search, but modified as follows:

• The Thai application is treated as though a provisional in that the examiner will determine the classification.

• The application has to meet the PCT unity of invention requirements. If the application does not meet these requirements, IP Australia shall establish the search report on those parts of the application, which relate to the invention first mentioned in the claims (“main invention”). If there is a lack of unity then the main invention will be searched and reported on (give an indication at checkbox 2 of the first sheet and full explanation in Box II continued on the extra sheet if necessary, modelled on 1.1.19 Annex E Completed Invitation to pay additional fees). There is no requirement that either the Thai office or the applicant be advised of lack of unity other than in the search report, and in particular no invitation to pay additional fees will be issued.

• where a meaningful search cannot be made (e.g. multiple inventions, obscure claims) the search examiner in consultation with a senior examiner should write

1.5.5 Search Report


227

to the Thai Office explaining precisely the nature of the problem and requesting a proposed course of action to it e.g. to more clearly define the invention or to limit the scope of the claim. The letter should be forwarded to the PCT Unit (together with the case file) for despatch. This may result in a justifiable delay to the search completion date.

• Download and store all citations relating to the Thai application in the respective International application folder on the V:\ Drive


All details of the search must be recorded on the Search Information Statement (SIS), which is generated by the Intelledox template. See 4.1 Annex F for information on when a SIS must be completed. Further information on the SIS and instructions for its use are provided at 4.1.6 Recording the Search Details and 4.1 Annex D - Search Information Statement (Instructions for completing the SIS).


1.5.5 Search Report

The completed search report form must include a written search statement if there are no claims. The examiner should use an extra sheet to indicate the search statement if necessary.

The following document templates:

• the search report, and

• a Search Information Statement (SIS).

are sent to the PCT Unit by clicking SUBMIT.

*Note: There is no requirement for reports to be signed, and to avoid any confusion in the mind of the applicant resulting from differing practices, reports should not be signed.



Upon receipt of the Intelledox template the PCT Unit will:

• access the stored documents relating to the Thai application from the International application folder on the V:\ Drive,

1.6.1 Introduction


228

• print one copy of each citation and the report,

• prepare an invoice for the cost of the search. This invoice is costed to the Department of Intellectual Property of Thailand and not the applicant,

• despatch the report, one copy of each citation and the invoice, if any, under a covering letter to the Thai Office,

• update the Search object with the date of mailing to the Thai Office.

1.6 WIPO Searches


1.6.1 Introduction

In agreement with WIPO this Office has undertaken to prepare a small number of state-of-the art search reports for the benefit of developing countries, preferably in our region of the world. Requests are allocated by WIPO to one of several national Offices (AT, EP, FI, SE, DE, AU) participating in this program.

Under the program the extent of the search is normally PCT minimum documentation. For this reason these procedures are modelled on our International and International-Type search procedures. However, a search covering the whole period from 1920 may not always be required. Truncation of this period may be inherent in the nature of the request or the requestor may have indicated a limitation as to the period, countries, languages or IPC areas to be searched, and to this extent the search strategy adopted may vary from our normal PCT search. One truncation strategy could be to search back to 1975 then assess the merits of searching prior to that date.

In the situation that a foreign search result is available, the search required will be a top-up search only and will be performed from the date of the ISR until any date specified in the request, or until the date of filing of the request.



The search examiner should aim to despatch WIPO searches within 9 weeks of request date and, along with Fijian and Thai searches have the lowest priority of all international searches. The priority for searches within this category of Fijian, Thai and WIPO searches is by request date order. (See Customer Service Charter Timeliness Guidelines for apology time limits).




229


Upon receipt in this Office such requests are forwarded to PCT Unit who will:

• acknowledge receipt to WIPO,

• allocate an identification number using the WIPO application number and scan the documents in INTESS,



• update the search report completion date as 10 weeks (See Customer Service Charter Timeliness Guidelines for apology time limits) from the request date in Search object in INTESS,

• create a WIPO application folder for each new application in the International Folder on the V:\ Drive,





The objective of the search is to discover the state of the art i.e. within the art specified in the request, those documents which are representative of the various trends of inventions during the period searched.

WIPO have suggested that on average 20 documents would show this.

Since these requests have no "priority date", regard must be had to any document published at the time of doing the search, being available and accessible to the examiner.

An international-type search is required.

PCT unit will create a WIPO application folder for each new application in the International Folder on the V:\ Drive.

In brief, WIPO searches involve the steps:

1.6.5 Search Report


230

• the search examiner, in consultation with a three person team, will indicate an appropriate classification and limitations of the search in relation to period, language or country.

• where there is insufficient information in the search request to enable the search examiner to undertake a proper search, the examiner is to write to WIPO seeking a more detailed description of the invention. The letter should be forwarded to the PCT Unit (together with the case file) for despatch (an example of the letter may be found at Annex C). This may result in a justifiable delay to the search completion date.

• Conduct search using EPOQUE

• Search non-patent literature (NPL) as required and order relevant non patent literature from library

• Search AU documents as required

• Download and store all documents relating to a WIPO application in the respective International Folder on the V:\ Drive. Storage of documents is to be in accordance with the guidance provided at 5.7.4 Guidelines for Using the V: Drive in Examination.

• Prepare a Search Information Statement (SIS) as part of the template in Intelledox.


1.6.5 Search Report

Following completion of the search, the search report is compiled. WIPO Guidelines including sample reports are found at Annex A.1, A.2 and A.3. An example of a completed Australian report form is shown at Annex B.

In completing this form,

• delete any country not searched

• patent documents are referred to by at least country and publication number

• comments are normally required, the only exception being where the requestor is an Industrial Property Office.

• where comments are made they are to be limited to what the document discloses i.e. why it has been cited - see the completed example report(s)

• where space is insufficient, add a further sheet.

The Intelledox template including:

• the search report, and



231

• a Search Information Statement (SIS).

is automatically sent to the PCT Unit when you click SUBMIT in Intelledox.

*Note: There is no requirement for reports to be signed, and to avoid any confusion in the mind of the applicant resulting from differing practices, reports should not be signed.



Upon receiving the Intelledox template the PCT Unit will:

• access the stored documents relating to the WIPO application from the International application folder on the V:\ Drive,

• print one copy of each citation and the report and despatch to WIPO with covering letter,

• update the Search object with the date of mailing to WIPO.

1.6.7 Annexes


WIPO search request guidelines

WORLD INTELLECTUAL PROPERTY ORGANIZATION

GENEVA

PROGRAM FOR FREE-OF-CHARGE PATENT INFORMATION AND DOCUMENTATION SERVICES

GUIDELINES FOR THE SUBMISSION OF SEARCH REQUESTS

1. Each search request should:

a. specify the government department or other national authority, institution or organization making or endorsing the search request;

b. indicate the title of the subject matter of the search request; the title should be a brief designation of that subject matter; the subject matter itself should be a well-defined single technological problem;

c. be signed by the requestor and/or the director or other responsible official of the government department, national authority or institution making the search request.

WIPO search request guidelines


232

2. Each search request should be accompanied by:

a. a full and detailed description of the subject matter of the search request;

b. a summary of the description in no more than 150 words;

c. any drawing necessary for the understanding of the description;

d. the request specifying the type of information desired.

3. The search request and the papers accompanying the request have to be written in either one of the following languages: English, French, German or Spanish.

4. When possible, a search request should also be accompanied by an additional statement, designed to assist in carrying out the search concerning the purpose of the request, any limitation of the search (e.g. by date, country, language or by International Patent Classification units).

5. The DESCRIPTION in a search request may describe either a solution to a technical problem or a technical problem itself. The description could, for example, be the terms of reference of a laboratory team in respect of one of their specific assignments.

In drafting the description, the purpose of the request and the intended use of the report should be borne in mind.

When a solution is described, the search request may help in evaluating the solution particularly by referring to other solutions for the same problem shown in the state of the art.

When a technical problem is described without a solution, the search request may be helpful in indicating what solutions are already known; in this case, particular care may be necessary in drafting the description of the problem, in order to enable a search of the state of the art to be carried out.

The problem should be of limited technical scope and explained in sufficient detail to enable the relevant documents to be found.

In the case of some search requests, it may be possible for the solution or the problem to be described with sufficient precision in less than 150 words. Even in these cases, it is requested that a SUMMARY be also provided.

6. The SUMMARY should restate the most important aspects of the description in abbreviated form.

7. The REQUEST should specify the type of information desired, bearing in mind that the information must be available from patent documentation. Prices, cost/benefit estimates and other more economically oriented information do not belong to this category.

WIPO search request


233

EXPLANATORY NOTE

8. The search report will contain:

a. the date on which the search was actually completed

b. the classification symbols of either the International Patent Classification or the National Patent Classification of the fields searched identifying the States and the periods to which the report is extended

c. the citations of the documents considered to be relevant with copies of these documents.

Examples of search requests (and search reports pertaining thereto) are attached to these Guidelines. (see Annex A.2 and Annex A.3).


WIPO search request

APPENDIX 1

Model No.1

SEARCH REQUEST

Title: Knives for cutting and Preparing Sugar Cane for its After-Processing

Description:

Our grinding mills for initial preparation comprise knives for cutting sugar cane, consisting of a cylindrical hollow shaft of large diameter with a series of discs, acting as knife holders, fixed to the shaft by appropriate means, and a series of knives fixed to wide discs. Furthermore, there are defibrator knives with one or two curved edges coated with hard welding. At present, special attention is directed to equipment for initial preparation in order to eliminate design defects and frequent breakages, as well as bottlenecks, appearing in the crushing and cutting of cane, and to find out the optimal parameters for the exploitation or operation of the knives.

In general, special attention has been given to trends for the application of:

Special shredding of defibration knives (serrated tooth) Double-edge revolving cane knives Swinging hammers Dollies

WIPO search request


234

Reversing mechanisms

The introduction of heavy and light hammers, as well as heavy defibrators, is also being investigated.

Summary:

In order to improve the initial preparation and to avoid any insufficiencies (such as breaking of the shaft or knife support, or defibration elements, wear of the knife material. etc.) occurring in the crushing and cutting of cane, investigations for applying the above-mentioned equipment are being made.

Request:

Patent documents and possibly other relevant literature -especially of recent date- concerning equipment for crushing or cutting the fibers of sugar cane, as well as progressive methods for initial preparation, are requested.

SEARCH REPORT

a. Field of Search (IPC): C 13 B

b. Pertinent Literature:

1.

2.

3.

4.

5.

6.

7.

8.

9.

10.

DE-AS

DE

US

US

DE-AS

DE

DE

DE

DE

DE

1 191 310

646 980

1 994 051

1 217 326

1 016 200

968 558

377 512

365 779

363 444

360 561

11.

12.

13.

14.

15.

16.

17.

18.

19.

20.

DE-OS

AU

US

GB

GB

US

US

DE-AS

GB

US

1 532 298

48 456

3 225 803

1 192 084

1 138 081

3 567 510

3 424 612

1 963 944

1 066 793

3 351 295

c. Comments:

The listed patent documents DE-AS 1 191 310 to US 1 217 326 relate to devices for cutting sugar cane. The patent documents DE-AS 1 016 200 to DE 360 561 deal with sugar cane

WIPO search request


235

crushers. The documents DE-OS 1 532 298 to GB 1 138 081 describe examples of various devices for disintegrating sugar cane. US patents Nos. 3 567 510 and 3 424 612 describe methods and apparatus for separating the components of sugar cane stalks. The remaining patent documents describe devices for preparing sugar cane with the aim of removing the sugar by diffusion.

The above-mentioned patent documents do not necessarily give information about the advantages and disadvantages (such as wear of knife material, etc.) of the devices so described. In view of the request for information disclosing more progressive methods than those mentioned in the application, old patent specifications have not been cited.


WIPO search request

Model No. 2

SEARCH REQUEST

Title: Yellow Coloring of Citrus Fruits

Description:

Yellowing techniques with the corresponding fruit-waxing are used in order to ensure the preservation of the fruit and the improvement of its appearance. It is known that the degreening parameters are dependent on climatic conditions. The use of the continuous venting method renders the operation of the degreening chamber more economical and more readily automated. In this respect, ethylene manometer dosers permit wide-range dosage of gas, in addition to allowing for flow adjustment by means of valves.

Summary:

Yellowing techniques with the corresponding fruit-waxing are widely used in order to ensure the conservation of citrus fruit and the improvement of their appearance.

Request:

We would like to know the latest methods developed for yellowing of citrus fruits, as well as the latest improvements.

SEARCH REPORT

a. Field of Search (IPC): A 23 B 7/00; A 23 L

b. Pertinent literature:

WIPO search request


236

Patent documents

1.

2.

3.

4.

5.

6.

7.

US

US

US

US

US

US

US

2,062,903

2,072,022

2,425,073

2,503,664

2,503,665

2,507,438

2,582,868

8.

9.

10.

11.

12.

13.

14.

US

US

US

US

US

US

US

3,458,627

1,475,938

1,846,143

1,920,540

2,577,421

3,034,903

3,522,057

Non-Patent Literature

15. Chemical Abstracts 1970, Vol. 72, 120152j

16. Chemical Abstracts 1972, Vol. 76, 111807g

17. Chemical Abstracts 1973, Vol. 79, 39264v

18. Chemical Abstracts 1973, Vol. 79, 90616p

19. Chemical Abstracts 1974, Vol. 81, 36659h

c. Comments:

Patent documents (1) to (8) relate to coloring citrus fruit by means of dyes.

According to patent document (1) an oil-soluble, water-insoluble, dye is used. Patent document (2) describes a process which involves mixing a coloring matter soluble in the natural wax present in the peel of the fruit with a dry, solid carrier, and applying the mixture to the surface of the fruit.

Patent document (3) relates to a process for treating whole fruit and vegetables, which involves forming an aqueous dispersion of a way containing an oil-soluble dye and applying that dispersion to whole fruit.

According to the processes described in patent documents (4) and (5), the dye is suspended in the solution of a salt of an amine, the amine having at least one hydrocarbon chain of at least 10 to 20 carbon atoms.

According to patent document (6), the fruit is flooded with an aqueous emulsion of edible dye.

1.7 Other Countries


237

Patent document (7) deals with a non-aqueous concentrate and a process of coloring citrus fruit with the said concentrate.

In patent document (8), a composition for preserving gathered fruit and vegetables is described which also improves the color of the treated matter.

Patent documents (9) to (14) deal with coloring citrus fruit by means of coloring gases.

In patent document (9) and (11) ethylene gas is used.

Patent document (10) relates to a process for coloring citrus fruit which involves spreading a thin coating of protective material over the surface of the fruit and subjecting the coated fruit to the action of a coloring gas.

Patent document (12) describes degreening by treatment with an atmosphere containing a member of the group consisting of ethylene oxide, trichlorethane and ethylene dichloride.

According to patent document (13), fresh oranges are subjected to the action of the vapors from a liquid mixture consisting of substantially equal portions of 1,1,1,trichlorethane and methylenechloride.

Patent document (14) deals with a process for degreening and ripening fruit by treating stored fruit with a circulating airstream maintained at a selected fruit processing temperature.

The abstracts found in 'Chemical Abstracts' describe the following:

(15) modified atmosphere for ripening fruit and vegetables in chambers.

(16) Carotenoids in citrus fruit.

(17) Process for post-harvest-ripening and degreening of bananas and citrus fruit.

(18) Optimum temperature and ethylene concentrations for post-harvest development of carotenoid pigments in citrus.

(19) The influence of refrigeration on the commercialization of citrus fruit.


1.7 Other Countries

Examiners should contact OEP for assistance in preparing search and/or examination reports on low volume applications from countries such as Tonga and PNG.


1.8 (reserved)


238

1.8 (reserved)

This topic is reserved for future use


1.9 PCT Articles, Regs and Guidelines et al

PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/1)

List of WIPO Standards, Recommendations and Guidelines (incl ST14)

Administrative Instructions Under the PCT

PCT Minimum Documentation

• Inventory of Patent Documents

• List of Periodicals

Regulations under the PCT

Articles under the PCT

1.10 Miscellaneous


1.10.1 Current Allocation of PCT Related Duties

Duty & Responsible Officer Contact Officer Phone

PCT Law and Practice

AGM (OEP)

Steve Barker 6283 2294

PCT Administration Unit

incl. current fee schedule

OIC PCT Unit

Uththarai Vigneswaran

Andrew Clearwater

Ashlea Kinkade

6222 3637

6283 2752

6283 2188

1.10.2 International Online Specialists


239

ISR, IPE Complaints

AGM for section

Jagdish Bokil

Les McCaffery

Roger Howe

6283 2371

6283 7925

6283 2159

Unity of Invention Protest

AGM for section

Jagdish Bokil

Roger Howe

6283 2371

6283 2159

Individual case action

Supervising Examiner (OEP)

Greg Powell 6283 2308

Manual Editor

Supervising Examiner

Julie Gale 6283 2098

International Search Technical Team

Supervising Examiner

Kevin Restrick 6225 6116

IPC Classification Arbiter John Ho

Leopold Filipovic

6283 2329

6283 2105

IPC Revision Manager Matthew Forward 6283 2606


1.10.2 International Online Specialists

Some examination sections designate a particular examiner as being their “primary searcher”, whilst other sections do not utilize a primary searcher, but rather all examiners in the section, or at least those with the acceptance delegation, are familiar with all procedures relating to international and on-line searching. Where an examiner requires on-line searching expertise for a technology outside their section, they should approach the supervising examiner, or a senior examiner, of the other section to ascertain an appropriate source of that expertise.

A primary searcher is responsible for providing advice on the section's international search strategies and on-line database searching, and normally does the bulk of the advisory work. The primary searcher is also responsible, particularly when going on leave, for ensuring that a designated back-up searcher is familiar with all procedures relating to international and on-line searching in the section.

1.10.3 Authorised Officer


240

The back-up searcher acts for the primary searcher when the latter is not available. The back-up should be an experienced searcher and should be familiar with all procedures relating to international and on-line database searching in the sub-section.


1.10.3 Authorised Officer

The responsibility for this function is detailed in the earlier parts of this volume. The APO examiner levels for the most commonly met responsibilities are summarized below.

They are minimum levels of responsibility and represent no impediment to section practices such as actually performing or reviewing such tasks at a lower level e.g. for development purposes or at a higher level e.g. for performance-feed back purposes, whether periodic or continuous. The Administrative Instructions at Section 514 (ISA) and 612 (IPEA) establish that the Authorised Officer means the person who actually performs the work or another person who was responsible for its supervision. Sections are to ensure that adequate quality control mechanisms are in place in relation to international actions. The fact that a person who performs the work is also responsible for it does not exempt them from being subject to quality control.

PCT Rules 43.8 (ISR) and 70.14 (IPRP) require that the responsible officer will be indicated in the reports. There is no requirement for the reports to be signed and Australian practice is not to sign (see the Annexes International Searching and International Examination).

Where the search, or examining, examiner is the responsible examiner, he or she will indicate as the date of completion of the ISR or IPRP, the date of its actual completion.

Where the search, or examining, examiner is not authorised then the day upon which the responsible examiner concurs with the search examiner is to be indicated as the date of completion.

The date of completion of the IPRP should not be after the date "by which the IPRP will be established" as shown on the IPEO first sheet, if a preceding opinion was issued.

It is to be noted that OEP staff are the authorised officer for a request for restoration of priority under PCT.


1.10.4 Minimum Levels of Responsibility

Supervising Examiners and the Chief of PBR are authorised officers at the minimum level of responsibility for:

ISA ISA

Unity of Invention (form PCT/ISA/206) Unity of Invention, additional fees outside time

1.10.5 Examiners with Foreign Language Capabilities


241

ISA ISA IPEA Art 15(5)

Refund of international search fees (forms PCT/ISA/213 and 224) Excluded subject matter (form PCT/ISA/203) Unity of Invention (form PCT/IPEA/405) Excluded subject matter

Senior Examiners and Examiners are authorised officers at the minimum level of responsibility for:

ISA ISA ISA IPEA IPEA IPEA THAI WIPO FIJI FIJI

International search report/opinion (forms PCT/ISA/210, PCT/IPEA/237) Notification of Transmittal of ISR (form PCT/ISA/220) International-type search report IPE Opinion (form PCT/IPEA/408) IPE Report (form PCT/IPEA/409) Notification of Transmittal of IPRP (form PCT/IPEA/416) Search report Search report Search report and Advisory opinion Further advisory opinion


1.10.5 Examiners with Foreign Language Capabilities

The following is a list of examiners with translation skills sufficient to meet the requirements of a translator for examination purposes.

German

Examiner Name Section

Rajeev Deshmukh MXT

Kurt Tobler ELEC 1

Frank Detering ELEC 1

Marc Kloth MXT

French


1.10.6 Current Status of APO as an RO ISA and IPEA


242

Rajeev Deshmukh MXT

Frank Detering ELEC 1

Chinese


Weifeng Cheng MECH 2

Mu-en Tien ELEC 2

Japanese


SuMei Van MECH 5

Russian


Eva De Kool ELEC 1

Viara Van Raad MECH 4

Spanish


Karen Violante MECH 4

Korean


Tom Choi RPET

Jae-Hak Kim ELEC 2



243



AUSTRALIA (AU)

• became a PCT contracting state on March 31, 1980

• APO is the competent ISA and IPEA for filings before RO/AU i.e. search requests to RO/AU pass to ISA/AU

• demands for preliminary examination are made to IPEA/AU

GHANA (GH)

• became a PCT contracting state on February 26, 1997

• APO is a competent ISA and IPEA for filings before RO/GH

INDIA (IN)

• became a PCT contracting state on December 7, 1998

• APO is a competent ISA and IPEA for filings before RO/IN

INDONESIA (ID)

• became a PCT contracting state on September 5, 1997

• APO is a competent ISA and IPEA for filings before RO/ID

KENYA (KE)

• became a PCT contracting state on June 8, 1994

• APO is a competent ISA and IPEA for filings before RO/KE

LIBERIA (LR)

• became a PCT contracting state on August 27, 1994

• APO is a competent ISA and IPEA for filings before RO/LR

MALAYSIA (MY)


• APO is a competent ISA and IPEA for filings before RO/MY

PAPUA NEW GUINEA (PG)




244

• APO is a competent ISA and IPEA for filings before RO/PG

NEW ZEALAND (NZ)

• became a PCT contracting state on December 1, 1992

• APO is a competent ISA and IPEA for filings before RO/NZ i.e. 7 search requests to RO/NZ may pass to ISA/AU

• demands for preliminary examination may be made to IPEA/AU

PHILIPPINES (PH)


• APO is a competent ISA and IPEA for filings before RO/PH

REPUBLIC OF KOREA (KR)


• APO is a competent ISA for filings before RO/KR

SINGAPORE (SG)

• became a PCT contracting state on February 23, 1995

• APO is a competent ISA and IPEA for filings before RO/SG

SOUTH AFRICA (ZA)


• APO is a competent ISA and IPEA for filings before RO/ZA

UNITED STATES OF AMERICA (US)

• became a PCT contracting state on January 24, 1978

• APO is a competent ISA and IPEA for certain filings before RO/US

VIETNAM (VN)


• APO is a competent ISA and IPEA for filings before RO/VN

ZIMBABWE (ZW)


• APO is a competent ISA and IPEA for filings before RO/ZW

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245

INTERNATIONAL BUREAU (IB)

• became an alternative competent RO for applicants from all contracting states on January 1, 1994

• APO is a competent ISA and IPEA for filings before RO/IB for United Arab Emirates (AE), Australia (AU), Saint Lucia (LC), Sri Lanka (LK), Nigeria (NG), Saint Vincent and the Grenadines (VC) applicants. The international bureau's two letter code (IB) will be used in the international application number.

The WIPO publication "PCT Applicant's Guide" contains general information for users of the PCT, including international and national phase procedures before designated and elected Offices; fees; particular RO, ISA and IPEA relationships; etc. The PCT Gazette published by the IB of WIPO shows interim changes to fees; RO, ISA and IPEA relationships; etc. The PCT Regulations (Rules 15.2(d), 16.1(d) and 57.2(d)) provide directives given by the PCT Assembly for the establishment of new equivalent amounts of certain fees in certain currencies. These publications can be found on the WIPO website.

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