2.13.9 Searching

Date Published

Under the Act, the extent of the search is discretionary.  Examiners are required to report to the best of their knowledge whether the invention so far as claimed is novel and involves an inventive/innovative step when compared with the prior art base as it existed before the priority date of the claim. The prior art base is defined in Schedule 1.

Examiners will often have one or more earlier search results on which they can rely.  However, where no earlier search results are available, or the earlier search results are inadequate, examiners will have to perform an original/additional search.  Original/additional searches must be developed by a three person team [see Three Person Team (3PT) and 4.1 Searching] and carried out in a manner similar to PCT international searches, as such searches could potentially assist applicants in determining whether or not to seek protection for their invention in one or more foreign countries via the PCT route.

An original/additional search may include one or more of the searching databases listed on the Patent Examination Workbench, including the Technology Specific Workbenches.

Note: Examiners are to consult with a senior examiner before conducting an original/additional search at further report stage.  The senior examiner is to record the decision of whether the search is warranted by adding a QA form to the PAMS file (see Additional Searching).