Additional Searching

Date Published

Where earlier search results are available but are considered unsuitable or inadequate, examiners may need to conduct an additional search to address the subject matter not covered by the previous search. Note that previous search results may be deemed unsuitable or inadequate for a number of reasons, which may include deficiencies in the previous search strategy or amendments to the scope of the claims such that the previous search did not adequately cover the newly claimed subject matter (eg. due to lack of unity considerations). The scope of an additional search may be equivalent to an original search, or alternatively may focus on a particular aspect that was not covered in a previous search.

However, where earlier search results are available and cover the subject matter of the claims being examined, additional searching should not be undertaken unless examiners suspect that better citable art might be found.

A citation is "better" if it would invalidate claimed subject matter not anticipated by the citations raised in the earlier search reports, and/or is more closely related to the inventive concept. Consequently, such a document would lead to the claims being restricted further than would otherwise be the case. Examiners should note that disclosure of a small number of trivial features does not necessarily imply a citation is better.

When deciding whether a better citation might be found, the claimed invention should first be assessed against the earlier search results. Only those aspects of the invention which are not anticipated by the earlier search results need to be considered for an additional search.

Therefore, the only question to answer is whether a citation disclosing matter not already anticipated might be found. This question will be answered in the affirmative if examiners have specific knowledge of better citations, or (based preliminary searching or their experience and knowledge of the art) consider such documents are likely to exist. In either case, an additional search must be carried out.

If it is considered that additional citations would be found, but the citations would be merely provide similar disclosures to the citations already raised in the earlier search reports, then an additional search is not justified.

The following should be noted when considering an additional search:

•  An additional search is treated as the equivalent of an original search (and credited as such) if it requires the formation of a three person team and the team concludes that an additional search is warranted.

•  For National phase applications, the decision to perform an original or additional search at the first report stage will generally lie with the consensus of the 3PT, although when doubt exists the examiner should seek advice from a senior examiner.

•  Examiners are to consult with a senior examiner before conducting an additional search (that would require the formation of a three person team) at further report stage. The senior examiner is to record the decision of whether the additional search is warranted by adding a QA form to the PAMS file.

•  The details of all searches must be fully documented in the SIS (see 4.1.6 Recording the Search Details).