2.1.7.2 Identifying Citations

Overview

Overview

Note: When identifying cited documents, those errors that reflect a misapprehension of the facts rather than a simple miskeying are regarded as serious mistakes.  Such errors are those whose routine correction is not obvious to a reader in the light of other citation information and are misleading in that they would reasonably lead the reader to an incorrect conclusion.  Examples of such errors include: a typographical error that results in an incorrect applicant name which is the name of a known competitor firm in the art concerned, or a citation publication date that erroneously indicates that the citation cannot be used to establish want of novelty.

In general, any citation may be identified according to the practice outlined in 1.1.12.5.3 Citation of Prior Art Documents.  

Nevertheless, in relation to national examination, the following points are highlighted:

1. Where:

a. citations (relevant prior art documents) are identified from a Foreign Search Report (FSR) or Foreign Examination Report (FER);  

b. the cited documents are downloaded relying on the citation details provided in the FSR/FER; and

c. the citation details are downloaded to PAMS/DocGen using Open Patent Services (OPS);

there is no requirement for examiners to routinely check, alter or update either the citation details or format of the citation details as downloaded.  These citation details may be used “as is”.

See also 2.1.9.2 FER Retrieval, 2.1 Annex A - Open Patent Services (OPS) FER Process and 5.19 Citation Manager.    

Note: Although there is no requirement to routinely check or modify citation details or formats downloaded through OPS, examiners who become aware of a serious error in the data (e.g. transposed numbers, spelling errors in a name) may correct such errors when identified.

2. Where either:

a. national examination does not rely on a Foreign Search or Examination Report (FSR or FER) to identify citations (relevant prior art documents) (e.g. no FSR/FER is available and a search has been conducted by IP Australia); or

b. the citation details provided using OPS do not enable one or more document(s) to be downloaded that is/are identified in the FSR or FER;

examiners must manually enter the details of identified relevant citation(s) into PAMS/DocGen.  

In such circumstances, the detail required as a minimum to meet the IP Australia Quality Standards must be as specified below under Patent Literature and Non-Patent Literature.  

3. Where a search has identified patent and non-patent literature documents disclosing the same subject matter of particular relevance, preference should be given to citing patent documents in the examination report.

4. Documents must be cited in full by completing all of the mandatory fields in the Intelledox (DocGen) ’Citations’ section, i.e. fields marked with a red asterisk (*).  Where documents have been located via OPS, this information will in most cases be populated automatically.  In the event that any fields are not populated, they will be marked with a red asterisk.  In this circumstance, examiners must manually enter the missing data in order to correctly populate the Intelledox (DocGen) ’Citations’ section.

5. The source of all documents (whether discussed comprehensively or referred to more generally in the examination report) must also be indicated. The source is identified as a footnote to the citation details and includes, as appropriate, the report type, publication/application number and date as indicated below.

Patent Literature

Note:

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 routinely check, alter or update either the citation details or format of the citation details as downloaded.  These citation details may be used “as is”.  However, where examiners become aware of serious errors in the data (e.g. transposed numbers, spelling errors in a name etc), they may correct such errors when identified.

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

See also 2.1.9.2 FER Retrieval; 2.1 Annex A - Open Patent Services (OPS) FER Process and 5.19 Citation Manager .

Where OPS functionality is not relied upon, for any particular patent literature citation the detail required as a minimum to meet the IP Australia Quality Standards must include, if available, the:

• country code;
• publication number (noting dashes (-) and slashes (/) for example are not required);
• publication kind code;
• applicant name; and
• date of publication.

With regard to these details, a citation is correctly identified when the document number, including any leading zeroes, and the convention country as cited, are identical to these descriptors as they appear on the document viewed and cited.  (Where a copy of the document cited has been placed in COMPASS, the details of the citation written in the report should mirror this information; see 1.1.12.5.3 Citation of Prior Art Documents).

For further information on the use of COMPASS, see 4.4 COMPASS and Citation Storage.

Note: When manually entering data in relation to patent documents, care should be taken to identify the correct publication level.  That is, while examiners are not precluded from viewing and citing B level publication documents, they should remain alert to the fact that a B level document is published later than, and may also omit subject matter originally disclosed in, the corresponding A level document.

Notwithstanding the foregoing, patent documents may be identified according to the practice outlined in 1.1.12.5.3 Citation of Prior Art Documents.

Kind Codes for Australian Patent Documents

Some older Australian patent documents do not have an indication of kind code on the document itself. However, the distinction between pre- and post-grant publications may be determined on the basis of the published number and an appropriate kind code must be ascribed in DocGen as follows:

However, when such a document is retrieved from a source which does indicate a kind code for the document (e.g. Espace), inclusion of the kind code, as indicated in the source, is preferred.

Citing Family Members

In certain circumstances, it may be necessary to rely on a family member of a patent document sourced from an ISR or FER.  This could be, for example, because:

• the document sourced from the ISR/FER is not in English and a later family member is an English language equivalent; or
• the document sourced from the ISR/FER is published after the priority date of the claims under examination and an earlier family member is located.

These additional family member documents should be included in the report, together with the source document, by using the ‘&’ category in DocGen.  For example:

• Where the document identified in the ISR/FER was published after the priority date, e.g. CA 1149815 A1, and a corresponding family member was published before, e.g. US 4282353 A:

US 4282353 A (GREEN) 4 August 1981 & CA 1149815 A1.

• Where a non-English language document identified in the ISR/FER was published before the priority date, e.g. JP 2006-505796 A, and a corresponding English language family member was published after, e.g. US 7108775 B2:​​​​​​​​​​​​​​

JP 2006-505796 A (APPLERA CORPORATION) 16 February 2006 & US 7108775 B2 used for English translation.

Non-Patent Literature

Note:

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.  These citation details may be used “as is”.  However, where examiners become aware of serious errors in the data (e.g. transposed numbers, spelling errors in a name etc), they may correct such errors when identified.

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

See also 2.1.9.2 FER Retrieval; 2.1 Annex A - Open Patent Services (OPS) FER Process; and 5.19 Citation Manager.   

Journal and Book References

Where OPS functionality is not relied upon, for any particular non-patent literature citation the detail required as a minimum to meet the IP Australia Quality Standards must include, if available, the:

• author;
• name by which the journal or reference work is known;
• publication year;
• volume number; and
• one or more of page numbers, document identifier or chapter number/title of the article (as appropriate).

1. The order in which the above minimum detail is listed when a document is cited is not critical, although in most cases the author should be listed first.
2. When citing non-patent literature documents, internationally recognised abbreviations are permitted.
3. With regard to the specific content of each these details, a citation is correctly identified only when the form used either:

• is the same as that recited on the document actually viewed and considered to be relevant.  

(Note that where a copy of the document cited has been placed in COMPASS, the details of the citation written in the report may mirror this information (see also 4.4 COMPASS and Citation Storage); or

• accords with the practice outlined in 1.1.12.5.3 Citation of Prior Art Documents; see also 1.1.12.5.5 Citation Examples for a non-limiting list of citation formats.

Other Non-Patent Literature References

Where OPS functionality is not relied upon for any other type of non-patent literature citation (e.g. catalogues, website addresses etc), the guidance in 1.1.12.5.5 Citation Examples should be followed (see also 4.1.4.3.3 Non-Patent Literature and 4.1 Annex L - Establishing Publication Dates and Capturing Internet Citations).

Raising and Maintaining Citations

In the course of examination, reports should identify relevant prior art documents, raising as appropriate those documents that deprive the invention claimed of novelty and/or inventive step.  These documents should be listed in the “Documents Cited or Considered Relevant” section of the examination report and, where appropriate, the related novelty or inventive step objection in the body of the report should refer to the listed document(s) using the document identifier (D1, D2, D3, etc).

Thus all raised documents that deprive a claim or claims of novelty and/or inventive step, whether located through a search conducted by the examiner or via a foreign search report (FSR), must be listed and a Citation Category of “X” or “Y” as appropriate, applied. When first cited, whether at first or further report stage, each such document is to be listed with the Citation Status of “Raised”.

Where the examiner has conducted a search and no documents can be identified that deprive any of the claim(s) of novelty and/or inventive step, the report should list the closest related art document(s), and to each such document a Citation Category of “A”, and the Citation Status of “Raised”, is to be applied. Once such documents have been listed for the first time, whether at first or further report stage, they need not be re-listed in subsequent reports.  If a foreign search or examination report identifies only “A” category documents and no Australian search has been conducted, the documents identified in the FSR/FER need not be listed.

If, at further report, as a result of amendment or argument, a document previously cited as an “X” or “Y” citation, no longer deprives any of the claim(s) of novelty and/or inventive step, it is not necessary to re-list the document with a Citation Category of “A” in the next report.

In such circumstances, examiners may update the citations list in PAMS with regard to the documents concerned, changing the Citation Category to “A” and the Citation Status to “overcome by amendment” or “overcome by argument”.

If the response is not sufficient to overcome the previously raised novelty and/or inventive step objection, the objection should be maintained and the cited document re-listed with a Citation Category of an “X” or “Y” as appropriate, and the Citation Status ”maintained” is applied.

Examiners should note that when re-listing previously raised citations, they may either re-enter the citation details manually, or select the ‘pre-populate’ option in DocGen which will automatically enter the information. Regardless of the mode of entry, the Citation Status (“maintained”, “overcome by amendment”, or “overcome by argument”) and Citation Category fields must be appropriately updated.

However, if at further report opinion is reserved with respect to all of the claims, then any document previously cited as “X” or “Y” category need not be re-listed in the report.  Where examiners are unsure whether a document should be re-listed, they should consult a senior examiner.

Note: Where a document has simultaneous “X”, “P, X” and/or “E” citation categories, for example “X” against some claims, but “P, X” against others, examiners should enter this information in the report following the procedure outlined in 4.11.2.11 DocGen Frequently Asked Questions.