Frequently applicants and/or inventors have worked for some time in the field to which an application relates and have parallel applications or other applications directed to closely related technology. These applications may either be undergoing search and examination, or awaiting it. Moreover, closely related past applications by the same applicant or inventor may also be highly technically relevant to the current application either as a source of citations themselves (such as P or X) or as providing search strategies that have proved successful in identifying relevant art. It is therefore important that such documents are located as early as possible in the searching process to allow as appropriate, simultaneous search and examination, assisted drafting of an effective search strategy, or to identify what will undoubtedly be closely related art.

Principles

The general principle to be applied by all 3PT is that applicant/inventor name searches are likely to be useful and therefore should be considered for all original searches on PCT and national applications (for both standard and innovation applications).

Consequently, searching of the applicant and/or inventor name of all original searches is mandatory except where, in the judgement of the three person team, either:

such a search would serve no useful purpose (for example, where the application clearly identifies cross-references to other cases of the applicant’s own); or
to conduct the search would give rise to non-viable results.

Note that in such a circumstance, the 3PT should consider other strategies that might be used to further limit the results (such as inclusion of keyword, IPC etc.). For example, a very active applicant / inventor or very common name (such as Smith, or Gupta), or applications in which there are many inventors.

It is recommended that these searches be conducted before commencing a comprehensive search, so that the results may assist in the development of the search strategy using, as appropriate:

internal databases (that is, those only accessible to staff within IP Australia), primarily to locate unpublished (non-OPI) material, including:
- Parallel applications, that is, cases relating to similar applicant/inventor being examined by different staff;
- AU applications by the same applicant/inventor which would be potential P, or X documents.
external databases (that is, those accessible outside IP Australia), these databases are limited to identifying published (OPI) material including:
- Applications filed in other jurisdictions; and
- OPI applications filed in Australia.

Searching should be conducted efficiently. The decision as to the appropriateness of conducting these searches in individual case(s) and the selection of the most relevant database(s) (whether internal or external as defined above, or specific choices of databases within these groups) is therefore at the discretion of the 3PT in consideration of the specific circumstances of the case being assessed.

Considerations

In deciding whether the search strategy to be adopted in a specific case should include an applicant and/or inventor name search, and if so which internal and/or external databases should be searched, a number of factors should be considered by the 3PT, including:

The date of search relative to the filing date

Applications in which the filing date is close to the date of the search will normally require an applicant/inventor name search to be conducted on internal (non-OPI) databases to identify parallel applications. As a broad rule, where the search is conducted within 2 years of the filing date, an applicant and/or inventor search of internal databases has the potential to uncover useful results and must be conducted except where one of the above exceptions apply. Such circumstances may arise, for example, where the applicant for a national application has requested expedited examination close to the filing date. Where the date of the search is more than 2 years after the filing date, a search of the non-OPI material is less likely to glean useful results but should still be considered by the 3PT in the light of the specifics of the case (see below).

If there is considered to be a large time difference between filing date and search date (for example, 5 years), a search of an internal database of non-OPI material is unlikely to find useful material and an applicant and/or inventor search of an external database may uncover any relevant material.

Divisional applications

In general, where a divisional application is being examined, an applicant and/or inventor search should be conducted to identify related applications based on the same parent. Where the application under examination is one of successive divisional applications, a further factor is whether the invention is able to derive from the original priority date or not.

The known prevalence of the technology in the Australian patent literature

A technology that is known to be common in the Australian patent literature may be more likely to glean relevant art and especially parallel application. Whilst this information is sometimes already part of the knowledge base of experienced search examiners, the 3PT are free to conduct a short, informal search purely for validation, see 4.7 Annex D - Search Information Statement.

The national source of the technology

If the material on-file (including the specification and the correspondence) teaches that the technology in question has been developed within Australia, the likelihood of finding relevant applications via a search of the internal databases is increased. Conversely, if the available information states that the technology was recently developed outside Australia, there is increased likelihood that that any relevant material would only be present as in the Australian patent literature as a national phase entry.

Process

Where the three person team determines that the above exceptions do not apply, an applicant and/or inventor name search must be conducted, and the 3PT shall determine the scope of the search to be conducted and the databases to be interrogated.

In determining the scope of the search the 3PT should note that, in order to be effective, the search strategy should generally comprise at least a search of APST (Automated Preliminary Search Tool) as it allows examiners to consider National and PCT-OPI and non-OPI applications related to the Applicant and/or Inventors for the National or PCT application being examined. APST ranks results by relevance through comparing the abstract of the application with results from the search and the user can refine the search input with keywords or IPC and/or CPC symbols.

Examiners may also benefit from applicant and/or inventor searches in NPL databases such as Google, Google Scholar, STN, or PubMed.

OPI patent material may also be searched in public/commercial databases. Many such databases provide specific fields where applicant/inventor names can be entered and searched, for instance, “Applicant(s)” or “Inventor(s)” fields in Espacenet. In EPOQUE, applicant/inventor names may be searched with field qualifiers /PA and /IN.