Independent Claims

Date Published

An original search should focus on the independent claims and, insofar as possible, described or claimed features that might reasonably be expected to be the subject of amended claims and which relate to the inventive concept.

Examiners should assume that all features in the independent claims are essential, unless the claim includes a feature which is inessential (for example, when there is no working interrelationship between the feature and the other features of the claim).

When performing a search, examiners should, as a primary consideration, look for documents which disclose all features of the independent claims. However, it is also necessary to have regard to closely related documents which differ from the independent claims, since these documents may still disclose all the essential features of the claim (and thus establish lack of novelty), provide disclosures which as a matter of routine would lead to the claimed invention (and thus establish lack of an inventive step), or provide disclosures which differ insubstantially from the claimed invention (and thus establish lack of an innovative step). Where examiners consider that a search for novelty is unlikely to reveal any prior art rendering the claimed invention not novel, but that a search for inventive/innovative step is likely to uncover prior art which is citable for inventive/innovative step purposes, they should contemplate doing the latter search rather than the former.

When searching broad claims, examiners should initially carry out a search of the claimed subject matter to the extent that it is disclosed in the description and drawings (if any), such as exemplified embodiments. Often it will be possible at the same time to identify other documents which may be cited against the broader scope of such claims. If no relevant prior art is retrieved, examiners should, if necessary, consult with the three person team or another technical expert, and attempt to quickly locate representative examples of prior art that fall within the broad scope of the claims. If examiners are unable to quickly retrieve any relevant prior art, the three person team should assess whether continuing the search is warranted.

  • See also Search Considerations