Searching Prohibited Cases

Date Published

Since an objection of lack of novelty or inventive step cannot be based on a prohibited case (such cases being unpublished), there is normally no need for examiners to carry out a search of currently prohibited cases. This includes searching for a possible ‘whole of contents’ novelty citation.

If examiners believe the circumstances of a particular case require a search to be conducted of current prohibited applications, the matter should be discussed with the Assistant General Manager (OEP). In the absence of endorsement from that AGM, examiners will not have established a ‘need to know’ that will allow them to gain access to those applications.