4.4.1 Three Person Team (3PT)

Also in this Chapter:

• 4.4.2 Search Strategy Considerations
• 4.4.3 Search Area

Related Chapters:

• 4.7 Annex P
• 5.4.2 Search Strategy Considerations

On this Page:

In conducting original searches of national and international applications, the search examiner allocated the case is to convene a 3PT 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 into account 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.

An overview of the search process/role of the 3 person team is provided in 4.7 Annex P.

Why three person teams

The primary reason for adopting the use of the Three Person Team (3PT) is to improve search results. Research has consistently shown that a cooperative group of people with the right mix of knowledge and skills will generally come up with better solutions to a problem than a single person on their own.

A successful search requires understanding of:

• the technical subject matter;
• relevant databases and the tools to access those databases effectively; and
• patent law knowledge and practice, namely construction and unity, clarity, descriptive support, etc.

It will often be the case that the searching examiner is not the expert in all three aspects. In these circumstances a properly constituted 3PT will make up for the missing knowledge or skills.

With respect to searching, the proper formation and use of the 3PT should lead to working out the best way to identify the most relevant art while making effective use of resources, given the different perspectives of each team member. This includes such things as:

• better identification of the inventive concept;
• understanding of the CGK/trivial features;
• different perspectives to the construction of terms and claims; and
• identifying appropriate search terms, search logic, search areas, and databases.

Aside from searching, the 3PT provides an important forum for learning between examiners. The 3PT allows examiners to share their technical understanding and explore effective ways to using search tools such as EPOQUE and to otherwise share knowledge and skills in all aspects of searching.

The 3PT also has an important role to play in improving communication and collaboration within the section and across the business groups.

Composition of the Three Person Team (3PT)

An appropriate search strategy must be developed by the 3PT involving:

• the search examiner; and
• two “consultant” examiners, including at least one examiner having relevant searching experience in the technology involved.

A 3PT must always comprise of at least three people, but could comprise more than three examiners, for example, to help pass on knowledge or experience.

Consultant examiners should be drawn from examiners experienced in the relevant technology regardless of examiner location. Examiners need to be aware of, and receptive to, the need to create and participate in 3PTs that span different technologies and/or sections. It is expected that examiners from sections other than the search examiner will be part of the 3PT if the technology or scope of the search is expected to extend into subject matter of other sections.

Note that in some examination sections there are examiners specialising in specific technologies, while in some examination sections all examiners equally specialise in all technologies. The list of examiners specialising in specific technologies for each examination section can be found in MPP 4.3.1 to 4.3.15 where applicable.

If the search examiner is an examiner experienced in the relevant technology, then an examiner unfamiliar with the technology may be included to ensure experience in the technology is passed on. Examiners are encouraged to use a range of examiners from their section in order to maximise learning.

Role of the Three Person Team (3PT)

It is expected that each member of the 3PT will provide independent and constructive input into the search strategy (see 5.4.2 Search Strategy Considerations for questions that may need to be considered to formulate the strategy). This means that each member of the 3PT is expected to independently consider issues of construction, unity, classification and, at least broadly, what the search strategy should look like. This should include relevant combinations of classification symbols and keywords as well as different approaches for carrying out the searches. All 3PT members are not necessarily expected to consider truncation or EPOQUE syntax. When convened, the members of the 3PT are expected to discuss the above issues and agree on a consolidated search strategy for the case.

The key issue is independent and constructive thinking and input from each 3PT member. It is expected that the non-search examiners on the team will provide input to the search strategy as though they were developing a search strategy for their own search.

Whilst an in-person 3PT meeting provides the optimum opportunity for discussion, the actual convening of the 3PT is not prescriptive and can vary depending on the location of examiners and the needs of the section. Convening the 3PT through the use of videoconference and the use of email followed by a phone conversation are acceptable options, provided the key principle of prior independent and constructive consideration of construction, unity, classification, as well as the search strategy is provided and that the 3PT discuss all these issues.

As searching is an iterative process it is expected that the 3PT may need to reconvene a number of times during the search as well as upon completion of the search. This allows the 3PT to validate the search findings, provides support to the search examiner on revising their search strategies, and to facilitate learning amongst the 3PT members. See Reconvening of Three Person Team (3PT) - Review of Search Strategy and Search Results below for further guidance.

After completion of the search a member of the 3PT may perform quality assurance of the search and report, however the use of quality assurance within examination sections is at the discretion of the examination sections.

Reconvening of Three Person Team (3PT) - review of search strategy and search results

Searching is an iterative process and the 3PT should reconvene during the search to ensure strategies are appropriate and that any learning from one search can be applied to subsequent searches. For example, the 3PT can discuss re-formulating or developing new search strategies in the light of any citations found from the first and earlier searches.

Specifically, the 3PT should discuss whether there were any unexpected results, the search locating only A category documents, locating weak X category documents, and not locating documents for dependent claims that include non-trivial features.

In addition to making use of the 3PT, it is expected that a senior examiner, supervising examiner, a subject matter expert or expert searcher will be consulted to provide further guidance on extending the search, if the 3PT judge that the subject matter warrants it.

Moreover, it is mandatory, upon completion of the search, for the 3PT to meet to:

• review and validate the search strategy adopted;
• discuss the search findings achieved; and
• thereby facilitate learning amongst the 3PT members.

This review / validation discussion step is required regardless of the number of documents identified and/or whether or not there are one or more citations that deny all claims novelty and/or inventive step, this requirement may necessitate that the 3PT reconvene (where the search which is conducted in the absence of all 3PT members).

However, in view of the different searching practices adopted in different sections, where a 3PT conducts the search together as a team, there is no need to specifically reconvene as such review/validation discussions occur during the searching process.

Note that validation of the search may involve discussing the citations found from the search (such as to identify why a particular search identified particular art). It is not intended for the 3PT to review the prior art from the search to determine if any citations were missed or to review the citations raised to determine if they are relevant, which is the role of the primary examiner.

The emphasis at the end of the search is to get the most learning from the 3PT and the search. For example, the 3PT can discuss what aspects of the search worked well such as useful keywords or classification symbols whether a certain database was more effective, and whether opinion changed as to whether features in dependent claims are genuinely trivial.