6.1.2.3 General Procedures- International Search and Opinion

Also in this Chapter:

• 6.1.2.1 Overview -International Searching
• 6.1.2.2 Overview - International Search Opinion (ISO)
• 6.1.2.4 Extent of Search
• 6.1.2.5 Minimum Documentation
• 6.1.2.6 Examination Section Procedures
• 6.1.2.7 Searching Examiner
• 6.1.2.8 Other Considerations
• 6.1.2.9 Copending Applications

Key Legislation:

Patent Cooperation Treaty:

• Article 15 The International Search

Regulations under the PCT:

• Rule 33.1 Relevant Prior Art for the International Search​​​​​​​

Related Chapters:

• 6.1.7.1.1 Claim Interpretation; Broad Claims; PCT Articles 5 and 6

The following procedures are to be used both where Australia (AU) is the receiving Office (RO) for the international application to be searched or where the RO is another Office such as New Zealand (NZ), Singapore (SG) and AU is the specified International Searching Authority (ISA).

Also, IP Australia acts as an ISA for international applications filed with the USPTO. These applications are to be treated in the same way as any other international application for which AU is the ISA.

The objective of an international search by an ISA is to discover relevant prior art. It is very important that ISR's be of high integrity because they are made available to the applicant before encountering the expense of entering the national phase in the designated states, and because the various designated states will be relying to a varying extent on the ISR before deciding on any grant. See general guidance on searching. [Art 15(2) Rule 33.1(a) PCT/GL/ISPE/12 at para 15.01]

The PCT International Search and Preliminary Examination Guidelines describe the nature of the international search in these terms [Art 15(4) Rule 33 PCT/GL/ISPE/12 at para 2.02]:

“The objective of the international search is to discover the prior art which is relevant for the purpose of determining whether, and if so to what extent, the claimed invention to which the international application relates is or is not novel and does or does not involve an inventive step."

“In principle, and in so far as possible and reasonable, the international search should cover the entire subject matter to which the claims are directed or to which they might reasonably be directed after they have been amended." [PCT/GL/ISPE/12 at para 15.25]

"No special search effort need be made for searching unduly wide or speculative claims, beyond the extent to which they are supported by the description." [PCT/GL/ISPE/12 at para 15.26]

Where a claim or claims clearly do not comply with PCT Art 6 or Rule 6 and in particular are not supported by the description it is appropriate to limit or truncate the search as provided in 6.1.7.1.1 Claim Interpretation; Broad Claims; PCT Articles 5 and 6.