5.6.4.6 Identifying and raising citations

Also in this Chapter:

• 5.6.4.1 Prior Art - What is Included (Definition From the Act, Publicly Available, Exclusions, Grace Period)
• 5.6.4.3 Level of Disclosure Required (Enabling Disclosure, Clear and Unmistakable Directions etc.)
• 5.6.4.4 Single Source of Information, Combination of Documents;
• 5.6.4.5 Third Party Notifications​​​​​​​

Key Legislation:

Patents Act:

• s7 Novelty, inventive step and innovative step
• s18 Patentable inventions 
• s24 Validity not affected by making information available in certain circumstances

Patents Regulations:

• reg 2.2 Information made publicly available--recognised exhibitions
• reg 2.2A Information made publicly available--learned societies
• reg 2.2B Information made publicly available--reasonable trial of invention
• reg 2.2C Information made publicly available--other circumstances
• reg 2.2D Information made publicly available without consent--period

Referenced Acts:

• s2B Acts Interpretation Act
• s183 Use of copyright material for the services of the Crown  

Related Chapters:

Customer Engagement 

• 3.4 Assisting unrepresented (private) applicants.

Searching 

• 4.5.1 Analysis of the Results
• 4.5.2 Cessation of Search
• 4.6 Recording the Search Details

National

• 5.6.5 Novelty, Whole of Contents, and Secret Use
• 5.6.6 Inventive Step

  International

• 6.1.12.5.3 Citation of Prior Art Documents
• 6.1.12.5.5 Citation Examples
• 6.1.12.5.2 Citation Category

On this page

• Citations identified in FERs
• Citations identified in Search
  • ​​​​​​​​​​​​​​Kind Codes for Australian Patent Documents
• ​​​​​​​Identifying source of document
• Citing Family Members
• Selecting Citations
• Raising and Maintaining Citations
  • ​​​​​​​​​​​​​​Referencing figures or passages in a Citation
• ​​​​​​​​​​​​​​Non-Patent Literature
  • ​​​​​​​​​​​​​​Publication date cannot be established
  • Copyright Restrictions
• Providing Copies of Patent Documents​​​​​​​
• Unavailable or Untranslatable Citations

Citations identified in FERs

In general, all relevant Patent citations identified in FERs will be automatically downloaded by Citation Manager.

Any relevant NPL identified in FERs will generally be downloaded and placed into Citation Manager by CEG.

There is no requirement for examiners to routinely check, alter or update either the citation details or format of the citation details as downloaded.  These citation details may be used “as is”. However, if examiners become aware of a serious error in data (for example, transposed numbers or spelling error in names), they may correct such errors when identified.

Citations identified in Search

Any relevant document found through an original search will need to be manually imported into Citation Manager. (See Citation Manager User Guide).

Format of citation details should follow as outlined in International chapters 6.1.12.5.3 Citation of Prior Art Documents and 6.1.12.5.5 Citation Examples.

Kind Codes for Australian Patent Documents

Some older Australian patent documents do not have an indication of kind code on the document itself. However, the distinction between pre-grant and post-grant publications may be determined on the basis of the published number and an appropriate kind code must be ascribed in Citation Manager as follows:

However, when such a document is retrieved from a source which does indicate a kind code for the document (for example, Espace), inclusion of the kind code as indicated in the source is preferred.​​​​​​​

Identifying source of document

Citation Manager should automatically identify the source of the documents and place them in the footnote. However, there may be times when the source of the document is not identified or incorrect.

Below is a table to follow for identifying the source of documents.

Citing Family Members

In certain circumstances, it may be necessary to rely on a family member of a patent document sourced from an ISR or FER.  This could be because, for example:

• the document sourced from the ISR/FER is not in English and a later family member is an English language equivalent; or
• the document sourced from the ISR/FER is published after the priority date of the claims under examination and an earlier family member is located.

These additional family member documents should be included in the report, together with the source document, by using the ‘&’ category in Citation Manager.  For example:

• where the document identified in the ISR/FER was published after the priority date, for example CA 1149815 A1, and a corresponding family member was published before, for example US 4282353 A:

US 4282353 A (GREEN) 4 August 1981 & CA 1149815 A1.

• where a non-English language document identified in the ISR/FER was published before the priority date, for example, JP 2006-505796 A, and a corresponding English language family member was published after, for example, US 7108775 B2:​​​​​​​​​​​​​​

JP 2006-505796 A (APPLERA CORPORATION) 16 February 2006 & US 7108775 B2 used for English translation.

Selecting citations

Citation manager will list all relevant citations identified by FERs, however it is not necessary to refer to all of them in the Examination Report.

When selecting documents for citation, examiners should attempt to cover as much of the scope of the claims as reasonably practical (including any alternatives within the claims and amendments that can be anticipated).

However, examiners should not cite more documents than necessary. Less relevant documents should only be cited when they concern aspects or details of the claimed invention not found in the documents already selected for citation.

Where there are many citations of close or equivalent disclosure, examiners should provide a comprehensive discussion of one citation and can refer to the remaining citations in a more general manner (for example “A similar objection applies to citations D2 to D4”).  ​​​​​​​

Raising and Maintaining Citations

Relevant prior art documents should be listed in the “Documents Cited or Considered Relevant” section of the examination report and an appropriate Citation Category applied (for example, X, Y, A etc.).

Where appropriate, objections in the report should refer to the listed documents using the document identifier (for example, D1, D2, D3, etc.).

When first cited, whether at first or further report stage, each such document is to be listed with the Citation Status of “Raised”.

If, at further report, as a result of amendment or argument, a document previously cited as a “X” or “Y” citation no longer deprives any of the claims of novelty and/or inventive step, it is not necessary to re-list the document with a Citation Category of “A” in the next report.

However, examiners may wish to update the citations list in Citation Manager with regard to the documents concerned, changing the Citation Category to “A” and the Citation Status to “overcome by amendment” or “overcome by argument”.

If the response is not sufficient to overcome the previously raised novelty and/or inventive step objection, the objection should be maintained and the cited document re-listed with a Citation Category of a “X” or “Y” as appropriate, and the Citation Status ”Maintained” is applied.

Referencing figures or passages in a Citation

Referring to figures, structures, tables, etc. in a citation is encouraged where applicable and a detailed explanation in words will not always be necessary, especially when referring to features that are clearly disclosed.

However, it is not necessary to provide a specific individual reference for every feature, especially those that are disclosed in combination or in a relatively concise passage(s) in the citation (for example, “See paragraph 5 that discloses features A, B and C“). Extensive lists of references to features in citations are not desirable.

If features are not readily apparent from the citation (for example, due to interpretation/construction issues, inherency or features hidden in a lengthy specification), examiners should provide further detail.

Examiners should concentrate on providing citation references for core features of the independent claims. No undue effort should be invested in analysing the cited documents for prima facie trivial or well-known features defined in dependent claims.

Non-Patent Literature

The guidance provided in 6.1.12.5.5 Citation examples should be followed for citation details regarding Non-patent literature.

Publication date cannot be established

When non-patent literature is cited for the first time, the date on which the document was first published anywhere in the world must be included in the report. This date will generally 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 and the examiner has reason to believe it was published before the priority date of the claims 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.  Thus, when non-patent literature documents sourced from a search or a FER are cited in the report, copies of these documents are to be saved in Citation Manager only 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 automatically 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 Copyright Act below).  However copies of any remaining documents should be readily obtainable from known electronic database sources."

Note: Where examiners have any doubts about breaching copyright or terms and conditions of a social media platform, they should contact the Office of Legal Counsel for assistance prior to storing copies of the material in Citation Manager.

Copyright Act

Subsection 183(1) of the Copyright Act relevantly provides:

‘The copyright in a literary, dramatic, musical or artistic work or a published edition of such a work, or in a sound recording, cinematograph film, television broadcast or sound broadcast, is not infringed by the Commonwealth or a State, or by a person authorized in writing by the Commonwealth or a State, doing any acts comprised in the copyright if the acts are done for the services of the Commonwealth or State.’

Where copying is carried out by IP Australia for the purposes of examining patent applications, copyright is not infringed by the Commonwealth in a literary work (e.g. examination reports) or a cinematograph film (e.g. YouTube videos), if copying is done for the service of the Commonwealth. 

Notifying Copyright Holder

It is not necessary to notify the copyright holder. This is because IP Australia is a member of two statutory authorities:

• The Copyright Agency Limited (CAL) is the declared collecting society (in accordance with a declaration under s153F of the Copyright Act) in relation to Government Copies of Works (excluding Works in sound recordings, cinematograph film and broadcasts) and manages the statutory licence for the Commonwealth’s use of hard copy material. CAL also conducts periodic surveys of government agencies to determine usage of copyright material.
• Screenrights (Audio-Visual Copyright Society Limited) is the declared collecting society (in accordance with a declaration of the Copyright Tribunal under s153F of the Copyright Act) and manages the statutory license for the Commonwealth use of Sound Recordings, Cinematographic Films and television or sound broadcasts.

Information regarding the Crown use statutory provisions can be obtained from the Australian Copyright Council at the following 'Fact sheet- Commonwealth, State and Territory Governments- Use of copyright material for the services of government'  

Information regarding Crown use of audio-visual content from the internet (e.g. citation and use of YouTube videos) see Audio-Visual Copyright Society Limited [2015] ACopyT 4  

​​​​​​​Under s183A(1) of the Copyright Act, the requirement to ‘inform the owner of the copyright’ under s183(4) of the Act does not apply where there is a statutory authorised collecting society, and the agreement between the agency and the collecting society is current at the time of copying.

The affected copyright holders are remunerated by way of compensation, and this is usually done by ‘sampling’.  The library staff in IP Australia will complete any annual surveys required under the Copyright Act. The surveys are administered by the collecting society to make the relevant payments towards the copyright holders.

Proprietary Electronic Databases e.g. STN

Proprietary electronic databases (e.g. STN, IEEE and Derwent), electronic books and journals are covered by individual licence agreements, and therefore the general copyright exceptions (as noted above) should not be relied upon. Under the terms of these licence agreements, examiners are able to save material obtained from electronic sources in Citation Manager only (and not onto the case file), but must not supply such material to applicants or attorneys. Any requests for copies of material obtained from electronic sources must instead be referred to CEG.

Chemical Abstracts (CAS) Registry Numbers

When an examination report cites a Chemical Abstracts (CAS) Registry Number, examiners are not precluded from including an associated chemical name and/or examiner-prepared chemical structure (e.g. using ChemDraw) in the report.  However, copied images/snapshots of abstracts/structures/database entries from STN or CAS are not to be included.

Other Copyright Exceptions

Several other copyright exceptions exist, including:

• copying undertaken by libraries pursuant to the library copying provisions of the Copyright Act; and
• copying which is the subject of an express or implied licence, or which falls within one of the exceptions under the Copyright Act, including:
  • Section 40: Research (the careful search or inquiry, endeavour to discover new or collate old facts by scientific study of a subject, course of critical investigation).
  • Section 182A: State legislation or statutory instruments and judgements of state courts and tribunals.
  • Section 200AB: Special cases not already covered by another specific exception.

Note:

• Section 40, s43, and s182A restrict copying to one copy only.
• Copyright in a literary work generally ceases 70 years after the death of the author.

Note: There are no copyright restrictions upon Australian provisional and complete specifications, and other prescribed documents, due to the waiver in s226 of the Patents Act where that document is open for public inspection. Prescribed documents include documents usually associated with the case file of a patent application, for example attorney correspondence. However, documents such as journal articles are excluded and the normal copyright restrictions apply.​​​​​​​

Providing Copies of Patent Documents

In general, requests by attorneys or applicants for copies of cited patent specifications should be handled by CEG. However, if examiners consider that the circumstances are such that requiring the applicant to obtain copies of cited patent specifications would impose an unreasonable hardship, they may provide copies of those specifications with their report. These circumstances may arise due to the geographical location of the applicant, or in the case of a private applicant; see 3.4 Assisting unrepresented (private) applicants.

Unavailable or Untranslatable Citations

Occasionally, a relevant citation (for example a document cited in a FER) may be unavailable at the time of examination.  Similarly, a citation may be in a language for which there are no qualified translators available in the Office (see 6.1.16 Assistance with Foreign Languages), or a machine-based translation is either unavailable or insufficient. In these situations, examiners should include a note in their report drawing the applicant’s attention to the existence of the particular citation. The note should indicate that the cited material is relevant to the present claims, however, the document or an English version could not be obtained at the time of examination.