Discussion of Citations

Date Published


1. Where citations are identified from a Foreign Search Report (FSR) or Foreign Examination Report (FER) and the citation details are downloaded to PAMS/DocGen using Open Patent Services (OPS), there is no requirement to check, alter or update either the citation details or format of the citation details as downloaded.

2. Citation details downloaded through OPS will automatically populate the source of the citation.  

See also FER Retrieval; 5.19 Citation Manager and Identifying Citations.  

When selecting documents for citation, examiners should attempt to cover as much of the scope of the claims (including any alternatives within the claims and amendments that can be anticipated) as reasonable/practicable. However, examiners should not cite more documents than necessary. Generally speaking, less relevant documents should only be cited when they concern aspects or details of the claimed invention not found in the documents already selected for citation.

Where there are one or more “best citations” available, examiners should provide a comprehensive discussion of the “best citation(s)” against the independent claims. Depending on the circumstances, the “best citation(s) may be sourced from a single FER or may need to be sourced from multiple FERs (see also Objections Based on FER). If other citations of close or equivalent disclosure are also available and, where this would assist the applicant, examiners may also refer to a representative selection of these citations in a more general manner.

Where all citations are of close or equivalent disclosure and there is no “best citation”, examiners should provide a comprehensive discussion of one citation and can refer to the remaining citations in a more general manner.  

In either instance, the other citations may be grouped as appropriate (e.g. “A similar objection applies to citations X, Y and Z”).

Examiners should concentrate on providing citation references for core features of the independent claims. Extensive lists of references to features in citations are not desirable. Examiners should, however, provide appropriate detail where features are not readily apparent from the citation (e.g. due to interpretation/construction issues, inherency or features hidden in a lengthy specification). No undue effort should be invested in analysing the cited documents for prima facie trivial or well known features defined in dependent claims.  

Where an objection is based on a particular passage, claim, or figure in the document cited, examiners are to draw attention to that relevant passage, claim or figure. Objections should identify passages in citations which disclose the core features of the independent claims.  It is not necessary to provide a specific individual reference for every feature, especially those that are disclosed in combination or in a relatively concise passage(s) in the citation (e.g. “See paragraph 5 that discloses features A, B and C“). Additional passages may be cited relating to non-trivial features of dependent claims. Non-trivial features are those which relate to the inventive concept described or able to be determined by comparison with the prior art. Referring to figures, structures, tables etc. in a citation is encouraged where applicable and a detailed explanation in words will not always be necessary, especially when referring to features that are clearly disclosed.