1.2.3 Classification and Search Indication

Date Published

National applications on which an international-type search is requested will usually be:

  • a provisional application, but could be

  • a complete application for a standard patent, or

  • an innovation patent application.

Note: From 15 April 2013 applicants will only be able to file a request for an Article 15(5) search on a provisional application.

All examination details for PAMS cases are found in 5.12 International Type Searching.  The search procedure to be followed is similar to that outlined in 1.1 International Searching. See also 4.1 Searching for information on developing search strategies and the 3PT.

Upon receipt in this Office such requests are forwarded to COG who will:

  • acknowledge receipt to the applicant/attorney along with any query relating to search fees

  • create an Edit Ecase task corresponding to the Australian application to which the request for an international-type search relates

  • check that the search request was made by the applicant

  • establish a search request date which will be the date of receipt in this Office where sufficient material exists for the search file to be assigned to the examination branch and full fee payment has been made

  • establish the search report completion date as 6 weeks from request date

  • assign the Edit Ecase task to the preliminary sorter for reassignment to an examination section.


Basis of Search

On being assigned the Edit Ecase task [see 5.12.1 Overview International Type Searching and 5.12.2  – Entering Art 15(5) Examination Details] the search examiner should check to see that the person requesting the Article 15(5) search is the patent applicant. If this is not the case, the search cannot proceed. The underlying cause when this situation occurs will usually be a clerical error somewhere in the process.

An international-type search shall be carried out on the basis of the claims, with due regard to the description and the drawings (if any). However, if the applicant makes (i) a specific request to search a search statement when both the search statement and the claims are filed together or (ii) files a later search statement the search is to be carried out on the basis of the search statement – see 1.2.8 Search Report. A provisional application which does not include claims may be the subject of an international-type search based only on the description and drawings. In this situation the applicant will usually provide a search statement with the search request.

Where a search is carried out on the basis of a search statement provided by the applicant, the search is not to be conducted on the basis of the search statement in isolation. In formulating the search, the search statement must be considered in the context of the specification as a whole.

Where there is difficulty in determining the subject matter area which the applicant desires to be searched, examiners must avoid the temptation to perform a search simply because they can and thus provide a search report that cites documents from a range of technologies and/or cites documents that read onto the search statement but none of the embodiments.  Examiners should not commence the search but should, following consultation with a senior examiner, advise the applicant of the situation and request them to provide a written search statement (see 5.12.3 Requesting a Search Statement).

If no reply is received within one month, the examiner in consultation with a senior examiner, will send a reminder letter to the applicant. If after a further month there is still no reply, or the reply does not indicate any likelihood that a search could be undertaken in the near future, then the examiner, with the supervising examiner's concurrence, will send a letter to advise the applicant that no search will be carried out and although IP Australia is unable to refund the fee paid for the filing of the request under regulation 3.14A - see IP Australia's Refund Policy - they may request a partial waiver of the fee, which will be considered in light of the particular circumstances and will not generally exceed 50% of the applicable fee. Once the letter has been sent, the examiner can then complete the Edit Ecase task in PAMS. Upon a request of a partial waiver of fee being made, the case will be referred to AGM (ELEC) for consideration.


Product by Process Claims

These types of claims are for the purposes of an international-type search report to be interpreted in accordance with the PCT guidelines – see 1.1.7.1.1 PCT Guideline References and Flow Chart.


Recording Search Details

All details of the search must be recorded on the Search Information Statement (SIS), which should then be placed on the file.  This includes details of all patent and non-patent literature searches, as well as searches conducted on the internet. The names of the members of the three person team should also be recorded. See 4.1 Annex F for information on when a SIS must be completed.  Further information on the SIS and instructions for its use are provided at 4.1.6 Recording the Search Details and 4.1 Annex D Search Information Statement (Instructions for Completing the SIS).