Search Considerations

Date Published

Claim Interpretation

Terms and phrases in a claim should be interpreted in accordance with the PCT guidelines.  1.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6 provides guidance on this issue.

Searching Broad Claims

When searching broad claims the following steps should generally be followed:

i. An initial search of the general inventive concept with reference to the examples and description should be carried out (see PCT/GL/ISPE/7 para 15.22).  The search should not be restricted to specific examples unless no other search is possible.

ii. If no relevant citations are retrieved, further search(es) of embodiments within the scope of the claims should be performed.  The examiner, in consultation with the 3 person team or another technical expert, should attempt to identify potentially relevant subject matter that can be accessed quickly.

iii. If additional searching fails to quickly retrieve any relevant prior art, the 3 person team should assess whether further searching is useful.

iv. Any additional inventive step searches are then considered by the 3 person team (as outlined below).

Note: The initial meeting of the 3 person team should attempt to anticipate alternative search strategies in order to deal with all aspects of the search at the one time.  Inventive step searching should only be considered where the initial search fails to uncover any citations disclosing one or more features of a claim.

Determining Whether Claimed Features are Substantial, Common General Knowledge or Well Known in the Art

The examiner is required to search the substantial features as defined in the entire claim set, including both independent and dependent claims.  Where it is determined that a feature is substantial or significant, then documentary evidence will be required in order to prove obviousness.  Similarly citations should be provided to support an assertion that a feature is common general knowledge, unless the feature is so well known in the art that documentary evidence is unnecessary.

The 3 person team should be involved in determining whether any feature within the claim set is so well known, insubstantial or trivial that documentary evidence is not required to prove obviousness.  The principles of the following procedure should generally be followed:

i. The 3 person team should individually consider the claims and decide which features/claims may be regarded as so well known, insubstantial or trivial that no additional searching effort is required.

ii. The 3 person team should then convene to discuss their individual points of view and any findings regarding insubstantial features/claims. If there is general consensus that these features/claims are insubstantial, then the examiner should be able to demonstrate obviousness without the need for documentary evidence. Thus no specific search for these features/claims should be required where they are subsequently found to be novel.  Note however that where the feature can be readily found in a text book or other document, then this source should be cited.

iii. Where there is no general consensus amongst the 3 person team regarding which features/claims are insubstantial, then the features/claims in question are considered to be substantial and therefore documentary evidence is required to prove obviousness.

For further guidance see also [PCT/GL/ISPE/7] at para 15.28, 15.55 and 15.61.

Inventive Step Searching

All initial searches should be constructed to cover both Novelty and Inventive Step.  After conducting an initial search, an additional or ‘inventive step’ search should be undertaken for any claim/feature found to be novel and not disclosed in documents that can be combined for an Inventive Step argument.  The principles that should be followed in devising the additional search are these:

i. The results of the initial search should be assessed in order to establish the closest prior art.

ii. The differences (if any) between this art and the novel claims/features should then be determined.  An additional search is not required for differences/features deemed to be insubstantial in (ii) above.

iii. The examiner should then conduct an additional search in order to find documents that disclose these differences.

These documents would be used as Y category citations in combination with the closest prior art.  The additional or inventive step search may involve searching the relevant databases using specific targeted keywords that relate to the different features, or may require reconvening of the 3 person team to determine a new search strategy.

See also Inventive Step.

Searching Dependent Claims

All dependent claims that are considered to define substantial features should be searched in accordance with the procedures outlined above.  When initially determining the search strategy, the 3 person team should additionally consider all substantial or significant features defined in the dependent claims, or those features that the application might reasonably be expected to be directed towards following amendment.  Where the features defined in the dependent claims are considered to be insignificant, the search strategy may be formulated to exclude those features, to ensure that the search is targeted to the most relevant prior art.

Where a significant feature cannot be found in the prior art, the examiner, in consultation with the 3 person team, should use his or her professional judgement to determine whether continuing the search is warranted.

Where the examiner believes there are too many dependent claims (or too many additional features defined by those claims), the case should be discussed with the 3 person team in order to determine which claims, or groups of claims, should be searched in detail.

For further guidance see also [PCT/GL/ISPE/7] at para 15.25, 15.27, 15.28 and 15.31.