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2.1.7.4 Citing Many Citations

Date Published

Where multiple citations are available, examiners need only provide a comprehensive discussion of the “best citation(s)", or one citation where all citations are of close or equivalent disclosure and there is no “best citation”, and can refer to a representative selection of the other relevant citations in a more general manner.

Examiners may use grouping of either the claims or the citations or both to provide the applicant with enough information to understand the issues with the claims.  The report should include a statement that the citations are typical of many which anticipate the invention (see for example PERP codes [F3] and [F5]). In making the selection, examiners should ensure that an amendment that would overcome the objections based on the cited documents would equally address the documents which have not been cited.

In any instance where a single objection refers to more than one citation, the objection must clearly indicate that each citation is being considered individually and thus avoid any inference of mosaicing.

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.  However, where examiners become aware of an error in the data (e.g. transposed numbers, spelling errors in a name etc), they should 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, 5.19 Citation Manager and 2.1.7.2 Identifying Citations.   

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