4.4.2.4 Reserving the Search

Date Published

Key Related Chapters:

Where there is an objection of lack of unity, the search should generally be undertaken in respect of the first-claimed invention only unless the only FERs available are directed to a later invention, in which case examination would normally be carried out in respect of this later invention, and no search and examination would be done in respect of the first claimed invention. The applicant should be advised accordingly that the search of the other inventions is reserved (see also 5.6.3.2 Claims are directed to a Single Invention (Unity); 6.1.4 Unity of Invention).

However, there may be cases where this general approach is not followed and search or examination of all inventions is reserved to avoid wasted effort; see 3.3.1 Use of FERs (earlier search and examination reports).

Where a search has been made in respect of some claims, but not in respect of other claims, examiners must clearly indicate in their report which claims have been searched and examined and that opinion is reserved in respect of the other claims. For lack of unity considerations with regard to national best practice and the level of detail required in a report (see also 5.6.3.2 Claims are directed to a Single Invention (Unity)).

If the search that is conducted locates prior art relevant to some of the claims for which a search is not being conducted, then examiners should raise an objection to the effect that while a search has not been conducted with respect to certain claims, those claims are anticipated by the prior art.

If it is impossible to determine the ambit of the invention claimed (see 3.3.1 Use of FERs (earlier search and examination reports) and 3.3.3 Reserving Opinion and Restricting Search), or if the invention is clearly not in respect of a manner of manufacture, it will often be practical not to conduct a search, and to reserve opinion against all claims on novelty and inventive/innovative step (although this may not be appropriate in the case of a private applicant - see 3.4 Assisting unrepresented (private) applicants).

However in those instances where the invention may not be in respect of a manner of manufacture, it may avoid protracted arguments if that objection is supplemented with an objection to the effect that the invention has been anticipated. For this reason, and depending on the facts of the case, when raising an objection of manner of manufacture, a search should also be considered.

A search may also be reserved under the circumstances set out in 4.5.2 Cessation of Search.

PCT-specific considerations are set out in 6.1.4 Unity of Invention, and 6.1.7 Claim Interpretation, Broad Claims, PCT Articles 5 and 6.