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. 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.

Publication Date

When non-patent literature is cited for the first time as the result of an original or an additional search, the date on which the document was published must be included in the report. This date, which is the date that the material was first published anywhere in the world, will be either on the document itself or may be obtained through Research and Information Services (email to IPAustraliaLibrary@ipaustralia.gov.au).

However, where it is not possible to establish the publication date for a document that would otherwise be a citation and which the examiner has reason to believe was published before the priority date of the claim(s) under examination, a note should be included in the report drawing the applicant's attention to the document. It must be made explicit that firstly, no publication date is available for the document, and secondly, no formal objection applies in relation to the document.

When examiners cite a document held by them personally, it is also necessary to establish the publication date. In the absence of a clear indication of this date, examiners may eventually be required to make a declaration stating where and when the material came into their possession. Such a declaration should be added to the case file and a copy forwarded to the applicant. A similar procedure applies when examiners cite a document which is in the private possession of another examiner.

Copyright Restrictions

There are copyright restrictions on the types of documents that the Commissioner can provide to an applicant (see 2.13.14 Copying of Material and Copyright Implications). Thus, when non-patent literature documents sourced from an original search, an additional search or a FER are cited in the report, copies of these documents are to be saved in COMPASS (not PAMS) and must not be provided with the report.

Where non-patent literature documents are cited in an examination report (regardless of the source of the documents), the following statement is to be included in the report:

"Note that this report has cited non-patent literature document/s. Copies of non-patent literature document/s can be requested for a fee (see Patent Regulations, schedule 7, fee item 234) through IP Australia’s eServices.

Please provide the citation details and associated patent application number with your request. Note that because of copyright restrictions we can only provide copies of hard copy books, journals and newspapers (see the Australian Patent Office Manual of Practice and Procedure at part 2.13.14 Copying of Material and Copyright Implications). However copies of any remaining documents should be readily obtainable from known electronic database sources."

This text will be automatically included in the report when the Citation Type ‘NPL’ is selected in the ‘Citations’ section in Intelledox (DocGen) (see also PERP code [F112]).

Note: For guidance on how to deal with NPL if encountered in a PAMS case file during examination, see 5.16.4.3.16 What Do I Do if I Encounter Copyright Material or Non-Patent Literature (NPL) in the PAMS eCase?

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