1.2.5 Subjects to be Excluded from the Search

The considerations described in International Searching - 1.1.6 Subjects to be Excluded from the Search apply equally to International-type searches. However, form PCT/ISA/203 is not applicable to international-type searches and is not to be used.

Where the examiner considers that the application relates to excluded subject matter to the extent that it is inappropriate to conduct the search, the matter should be discussed with a senior examiner and confirmed by the supervising examiner. The examiner should then write a letter addressed to the applicant advising that an international-type search report will not be established on the application, and give the reasons. The letter should also state the following:

"In view of our finding that your application contains no patentable subject matter, you may, if you wish, withdraw the application. Please note that IP Australia is unable to refund the full fee paid for the filing of the request under regulation 3.14A - see IP Australia's Refund Policy.  However, IP Australia will provide a partial refund of $750 of the applicable fee. This will be processed in due course.”

The supervising examiner is the "Authorised Officer" for this letter and must add a case note to the file i.e.:

Partial refund - Article 15(5) search fee

In accordance with the Commissioner’s practice I approve a partial refund of the Article 15(5) search fee:

Amount: $750

Reason: Application unfit subject matter for a search and/or is unsearchable:

Supervising examiner’s name

Position title

Date

The examiner should then complete the exam corro task, print and dispatch the letter, and reassign the edit Ecase task to CEG.  When reassigning the task to CEG (see 5.12.9 Reassigning the Art 15(5) Tasks to CEG) a comment needs to be included indicating that a partial refund of the Art 15(5) fee is required.

COG will process the refund.

Any additional issues relating to fee waivers including requests for refunds over $750 should be referred to the Assistant General Manager (Electrical).

As indicated in 1.1.6 Subjects to be Excluded from the Search, the search is done where practicable. In instances where the substance of the claimed invention is such that there is a high likelihood of patentability issues arising in national prosecution, a comment should be provided in the Supplemental Box under Other Observations (for example, see PERPs T60-T61). It is noted however that such comments are only appropriate when neither the claims nor the entire description, from which an amendment to the claims is possible, contain material that is considered patent eligible under Australian law. If the search is conducted for some of the claims or aspects of the application but not for others because they relate to excluded matter, the reason for non-establishment of the report in relation to those claims or aspects should be detailed in Box No. II.

Note: A similar procedure to the above is to be followed where a meaningful search is not possible – see 1.2.6 Obscurities, Inconsistencies or Contradictions.