6.1.11.4 Dates Searched

Also in this Chapter:

• 6.1.11.1 Overview - Novelty / Inventive Step
• 6.1.11.2 Inventive Step
• 6.1.11.3 Searching Product by Process Claims​​​​​​​
• 6.1.11.5 Conducting the Search
• 6.1.11.6 Useful Techniques (“piggy” back/forward searching)
• 6.1.11.7 Obtaining Full Copies
• 6.1.11.8 Considering and Culling the Documents
• 6.1.11.9 Ending the Search
• 6.1.11.10 Categorising the Citations
• 6.1.11.11 Grouping the Claims

Key Legislation:

PCT ISPE Guidelines:

• para 15.03 Objective of the International Search and Supplementary International Search
• para 17.29 Box No. II: Priority

The search is to be carried out among documents published prior to the international filing date (as distinct from the priority date), which "must be taken as the basic reference date for the search".

Note:  For the purposes of the ISO the examiner must form a view as to validity of the claimed priority date and examine for novelty and inventive step on the basis of that valid priority date.  An exception is that if the priority document is not yet available at the time the ISO is being prepared, then the priority date is to be assumed valid - see paragraph 17.29(b) of the PCT International Search and Preliminary Examination Guidelines). [PCT/GL/ISPE/12 at para 15.03]

Because innovation patents are published relatively quickly after filing, circumstances may arise where it is appropriate to cite an innovation patent as a "P,X" document in an international search on an international application which is a family member.  Those circumstances will be when the publication date of the innovation patent is earlier than the international filing date of the international application.

It should be noted that there is no provision under the PCT for a search for "whole of contents" novelty as provided for under the Australian Patents Act 1990.