6.1.2.3 General Procedures - International Search and Opinion

Also in this Chapter:

• 6.1.2.1 Overview -International Searching

• 6.1.2.2 Overview - International Search Opinion (ISO)

• 6.1.2.4 Extent of Search

• 6.1.2.5 Minimum Documentation

• 6.1.2.6 Examination Section Procedures

• 6.1.2.7 Searching Examiner

• 6.1.2.8 Other Considerations

• 6.1.2.9 Copending Applications

Key Legislation:

Patent Cooperation Treaty:

• Article 15 The International Search

Regulations under the PCT:

• Rule 33.1 Relevant Prior Art for the International Search​​​​​​​

Related Chapters:

• 6.1.7.1.1 Claim Interpretation

• 6.1.7.2.1 Broad Claims - Introduction

• 6.1.7.3 PCT Articles 5 and 6

On this Page

• When international search and opinion procedures apply

• The nature of International Search and Examination

• Restricting search due to lack of support

When international search and opinion procedures apply

The procedures in the following chapters are for the following scenarios:

• Where Australia (AU) is the Receiving Office (RO) for the international application to be searched.

• Where the Receiving Office is another Office (such as New Zealand [NZ] or Singapore [SG]) and AU is the specified International Searching Authority (ISA).

• When 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 goal of an international search by an ISA is to discover relevant prior art. It is important that International Search Reports (ISRs) be of high integrity because:

1. They are made available to the applicant before the applicant encounters the expense of entering the national phase in the designated states.

2. 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), and PCT/GL/ISPE/12 at paragraph 15.01). 

The nature of International Search and Examination

The PCT International Search and Preliminary Examination Guidelines describe the aims and nature of an international search in the following (see Art 15(4), Rule 33, and PCT/GL/ISPE/12 at paragraph 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.’ (PCT/GL/ISPE/12 at paragraph 2.02)

'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/12 at paragraph 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/12 at paragraph 15.26)

Restricting search due to lack of support

When one or more claims clearly do not comply with PCT Article 6 or Rule 6 — especially when claims are not supported by the description — it is appropriate to limit or truncate the search. Further instruction is provided in:

• 6.1.7.1.1 Claim Interpretation

• 6.1.7.2.1 Broad Claims - Introduction

• 6.1.7.3 PCT Articles 5 and 6