1.3.4.1 Demand and Top-up Search

The International Preliminary Examining Authority is required to conduct a top-up search in each case on which a Demand has been filed, except where it is considered that the proposed search would “serve no useful purpose” i.e. where the prior art that might be found would be superfluous in light of the documents already identified, or the art to which the application relates is such that the finding of better citations is considered very unlikely.

No top-up search is required to be conducted for cases where the Demand for International Preliminary Examination was filed prior to 1 July 2014.  For cases where the demand was filed on or after 1 July 2014, a top-up search would be conducted only once before carrying out the International Examination.

Objective of a top-up search

• The objective of a top-up search is to discover prior art which was published after the date of International Search and is relevant to the determination of whether the claimed invention is lacking in novelty or an inventive step.

Decision to conduct a top-up search

• The primary responsibility for making a decision to carry out a top-search lies with the examiner conducting the international preliminary examination.
• In making a decision, examiners should exercise their judgement mainly based on the results of the International Search and their knowledge of the technology in question. If the International Search has already discovered category X citations against most of the claims, there may be little benefit in conducting a top-up search. A top-up search may also not be appropriate for slow changing technologies. On the other hand, if the documents found during the International Search are category A only or the technology in question is fast changing, a top-up search may discover relevant citations.
• If the examiner decides against conducting a top-up search for a particular case, the decision should be confirmed by discussion with a Senior Examiner. The examiner should then record their decision by adding a note to the INTESS case file. Detailed reasoning is not required.

Method for a top-up search

• Top-up searching should be predominantly performed by using the earlier search strategy for the period one month prior to the date of International Search until the date of filing the demand.
• There is no requirement to form a three person search team for conducting a top-up search.
• Examiners should follow the instructions provided in MPP 1.3.4.2 to determine the cost of each top-up search for the purpose of data collection.

Note: EPOQUE counters must be reset PRIOR to conducting the search.   

Note: A top-up search should not be confused with an additional search which is conducted when an earlier search is considered to be inadequate and /or the scope of the claims has changed substantially due to amendments. In most cases, an additional search would require the formation of a three person team.

Completing SIS, Written Opinion-IPEO and IPRPII

• A Search Information Statement (SIS) is required to be completed whenever a top-up search is carried out regardless of the relevance of the documents discovered in the search.
• Where a top-up search has been performed using the earlier search strategy either directly or by a simple modification thereof, a truncated SIS may be completed rather than a complete SIS.
• A truncated SIS will, identify the nature of the search strategy performed by referring to the earlier SIS, any modifications to the search terms, and indicate the restricted period of the top-up search.
• No indication that a top-up search has been conducted is required when completing the Written Opinion of the International Preliminary Examining Authority (Form PCT/IPEA/408) However, if any useful documents are found in the top-search, they must be raised in Box V of the opinion as new citations.
• Item 6 of Box 1 of the International Preliminary Report on Patentability (Form PCT/IPEA/409), will be completed to indicate whether a top-up search was carried out by the examining authority and whether any relevant documents were discovered in that search.

Note: Where a top-up or additional search is conducted and a Search Information Statement (SIS) generated with the second opinion, no further SIS relating to this search action is required accompanying third and higher opinions or the related IPRPII.  (see 4.11.6.2 Creating an IPE Written Opinion (PCT408) and 4.11.6.3 Creating an International Preliminary Report on Patentability (IPRPII) (PCT409))

Data Collection

It has been decided to collect data relating to top-up searches to inform us of the effect of these searches and considerations flowing therefrom in terms of time taken, online costs etc.

The examiners are required to complete a questionnaire through “Survey Monkey” each time they consider conducting a top-up search regardless of whether the top-up search was conducted or not.  The “Survey Monkey ” can be accessed by clicking on the following link:

https://www.surveymonkey.com/s/TTYDFB6

Privacy Statement

IP Australia does not intend to collect any personal information via this survey. The results of the survey will only be used to identify the following:

i. % of cases where top-up search was conducted;

ii. technological areas in which the top-up searching was found to be useful;

iii. relevance of the documents found; and

iv. resource requirements, such as examiner time/on-line costs.

If, however, you choose to provide information that may identify you, such information will be handled in accordance with the Privacy Act 1988 and IP Australia’s Privacy Policy.