6.2.5 Subjects to be Excluded from the Search

Date Published

The considerations described in International Searching - 6.1.6 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 senior examiner and confirmed by the supervising examiner.

The examiner should then issue a non-establishment letter (see guidance RIO Manual Non-establishment of the International-type Search Report)

The letter must be sent to a Supervising Examiner (as they are the “Authorised Officer”) to approve the task. Once the Supervising Examiner has approved the International Type Search (QA) task, they must email CEG to process the partial refund of the Article 15(5) search fee (the refund may be up to 75% of the search fee).

Any additional issues relating to fee waivers including requests for refunds over 75% of the search fee should be referred to the Assistant General Manager (Electrical).

Partial Non-establishment

As indicated in 6.1.6 Subjects to be Excluded from the Search, the search is done where practicable. In instances where the substance of the claimed invention is such that there is a high likelihood of patentability issues arising in national prosecution, a comment should be provided in the Supplemental Box under Other Observations (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. 

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 (see guidance in RIO Partial Non-establishment of the International-type Search report).

Note: A similar procedure to the above is to be followed where a meaningful search is not possible – see 6.2.6 Obscurities, Inconsistencies or Contradictions.