6.2.5 Subjects to be Excluded from the Search

Also in this Chapter:

• 6.2.1 Procedural Outline International Type Search Report

• 6.2.2 Introduction - International Type Searching

• 6.2.3 Classification and Search Indication

• 6.2.4 Unity of Invention​​​​​​​

• 6.2.6 Obscurities, Inconsistencies or Contradictions

• 6.2.7 Abstract and Title

• 6.2.8 Search Report

• 6.2.9 Completing Search Report and Opinion Form

• 6.2.10 Annexes

Related Chapters:

• 6.1.6 Subjects to be Excluded from the Search

• 6.2.6 Obscurities, Inconsistencies or Contradictions

• 9.17.10 Certain Observations (IPE Box VIII)

• RIO Partial Non-establishment of the International-type Search report

On this Page

• Introduction

• Full non-establishment of a search

• Partial non-establishment

  • Claims that may be unpatentable at national phase

  • Reporting on partial non-establishment

• See also

• Examiner process flowchart

Introduction

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.

A flow chart detailing the examiner process is provided at the end of this page.

Full non-establishment of a search

Where the examiner considers that the application relates to excluded subject matter to the extent that it is inappropriate to conduct the search, the examiner should discuss the matter with a senior examiner and confirm with the supervising examiner.

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

The letter will be sent to a Supervising Examiner (as the ’Authorised Officer‘) to approve the task. Once the Supervising Examiner has approved the International Type Search (QA) task, they must email Customer Experience Group (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

Claims that may be unpatentable at national phase

The examiner should carry out the search where practicable (as indicated in 6.1.6 Subjects to be Excluded from the Search). In instances where the substance of the claimed invention is such that there is a high likelihood of patentability issues arising in national prosecution, the examiner should provide a comment in the Supplemental Box under ‘Other Observations’ (for example, see PERPs T60 – T61). 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. 

Reporting on partial non-establishment

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).

See also

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

Examiner process flowchart