5.6.12.2 PSO - Search and examination procedure

Also in this Chapter:

• 5.6.12.1 Requests for PSO
• 5.6.12.3 PSO - Report Requirements
• 5.6.12.4 Response to the PSO

Key Legislation:

Patents Act:

• s43A Preliminary search and opinion

PCT ISPE Guidelines:

• ​​​​​​​para 10.64-10.65 Search of Additional Inventions Without Payment of Fees

Related Chapters:

• 6.1.1.4.9 Issuing the Invitation to Pay Additional Search Fees

On this page

• Search Procedure
• Specification to Search and Examine
• Lack of Unity
• Non-Patentable Subject Matter.

Search Procedure

The search should be conducted in accordance with the procedures outlined in Volume 4 Searching.  ​​​​​​​

Specification to Search and Examine

Examiners should base the PSO on the specification as filed and any amendments filed up to the date that the search and examination is carried out.  This includes voluntary amendments that have already been allowed and amendments filed in anticipation of examination.

Where an applicant files amendments after search and examination has commenced, these are not to be taken into consideration. The basis of the PSO is stated in the report.

Lack of Unity

In general, examiners are expected to conduct a search and opinion in respect of the first claimed invention only and any other invention(s) that under the PCT would be searched without issuing an invitation to pay additional fees (see 6.1.1.4.9 Issuing the Invitation to Pay Additional Search Fees and PCT International Search and Preliminary Examination Guidelines Chapter 10, parts 10.64 – 10.65).

However, where the three-person team conclude that the first claimed invention does not reflect the ‘main’ invention disclosed in the specification, the case should be referred to a supervising examiner. Where the supervising examiner is in agreement, the examiner should phone the attorney/applicant to discuss the lack of unity and seek clarification of the claims to be searched. A record of any conversation must be placed on file (see File of Record of Conversation).

Non-Patentable Subject Matter

Where some of the claims are directed to subject matter that is not patentable under Australian law, the search should only be conducted in respect of those claims that define patentable subject matter. The PSO should clearly indicate the claims that have not been searched and provide reasons why a search was not conducted.​​​​​​​

If the three-person team conclude that none of the claims are directed to patentable subject matter, the case should be referred to a supervising examiner. Where the supervising examiner is in agreement, the case should be referred to the PSO Practice Officer (Supervising Examiner of ELEC 1).