4.5.1 Analysis of the Results

Also in this Chapter:

• 4.5.2 Cessation of Search

Related Chapters:

• 4.3.5 Preliminary Searching
• 4.4.1 Three Person Team (3PT)
• 5.6.5.2 Whole of Contents
• 6.1.11.6 Useful Techniques ("piggy back/forward" searching)
• 6.1.14 Priority Document
• 6.3.8.3 Box II Priority
• 6.3.8.7 Box VI Certain Documents Cited
• 6.10.5 Examiners with Foreign Language Capabilities

On this Page:

• Relevant Dates
• Foreign Language Assistance

The intention of the search is to identify art that is relevant to both the claims and the embodiment. Often the claims will change, but the inventive concept and embodiment won’t, and if the inventive concept is both novel and inventive, then the examiner should consider whether to take a step back and identify prior art that falls within the scope of the claims (which is often broader than the inventive concept):

• Have relevant citations been identified? Are these the most relevant citations?;
• if new keywords or concepts come to light from search results, consider revised/top-up search (iterative approach). Reconvene the 3PT to discuss revised search strategy, if appropriate;
• consider piggybacking searches using identified citations (see 6.1.11.6 Useful Techniques ("piggy back/forward" searching)). If piggybacking your most relevant citations does not produce better prior art, this may indicate the best art has been identified. If piggybacking results in better prior art, consideration should be given as to why the new citation was not originally identified. A revised search may be considered;
• did the search retrieve known prior art (identified during preliminary search). If not, modification of the search strategy and reconvening the 3PT should be considered; and
• if no relevant art is retrieved, consideration should be given as to why. Was the search unduly restricted? (For example by narrow classification symbols or search terms). Is it possible to use a different approach that may retrieve alternative/better results? Modification of the search strategy and reconvening the 3PT should be considered.

Relevant dates

When conducting the search, the examiner must keep in mind the filing and priority dates of the specification under examination. The examiner should assume that the relevant priority date of the specification under examination is the date of its filing.

When considering search results, patent specifications that are published after the priority date and having priority dates later than that of the application under examination can be disregarded. Similarly, non-patent literature published after the priority date may be disregarded. However, relevant patent specifications that are published after the priority date and having priority dates earlier than that of the application under examination should be retained for “Whole of Contents” novelty consideration (see also following paragraphs).

For the purpose of conducting the search, examiners should assume that the relevant priority date of the specification under examination is the date of its filing, irrespective of any claims to earlier priority dates, and further that it is possible that a specification filed up to 12 months later (such as the specification accompanying a further application) may contain material whose priority date is earlier than the filing date of the specification under examination.

If, as a result of the search, a specification is found such that an objection of lack of novelty depends upon a correct determination of the priority dates of the claims of the specification under examination, examiners should determine the priority dates of the claims in question; see 6.1.14 Priority Document and 6.3.8.3 Box II Priority.

Where a specification is found which is published shortly after the earliest priority date of the claims under examination, and that specification would otherwise give rise to an objection of lack of novelty or lack of inventive/innovative step, examiners should consult the Patent Family Members page on the Patent Examination Workbench to identify whether there are corresponding patent specifications published before the priority date. If such a specification is found, the objection of lack of novelty or lack of inventive/innovative step citing that specification should be taken. If no earlier publication is found, “Whole of Contents” novelty (see 5.6.5.2 Whole of Contents) or P, X, and E category documents (see 6.3.8.7 Box VI Certain Documents Cited) should be considered.

Foreign language assistance

Where citations are in a foreign language, examiners should make use of qualified translators in the office (see 6.10.5 Examiners with Foreign Language Capabilities), or obtain a machine-based translation, as an example, for patent documents in Japanese, a machine translation may be available from the Japanese Patent Office web site. If examiners have basic language skills, they should scan the citations with a view to discarding any clearly irrelevant documents before referring the remaining documents to a qualified translator.

When seeking assistance, examiners must brief the translator on the pertinent matters including:

• the general nature of the invention;
• the inventive concept;
• the important features of the claim(s); and
• facts relevant to any argument about the meaning of a citation.

It is expected that the briefing and the assistance rendered will be verbal only, however in certain circumstances the translator may need to provide a written translation of a particular passage, for example, where there are facts relevant to any argument about the meaning of a citation.