6.1.11.8 Considering and Culling the Documents

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

• 6.1.11.4 Dates Searched

• 6.1.11.5 Conducting the Search

• 6.1.11.6 Useful Techniques (‘piggy back/forward’ searching)

• 6.1.11.7 Obtaining Full Copies

• 6.1.11.9 Ending the Search

• 6.1.11.10 Categorising the Citations

• 6.1.11.11 Grouping the Claims

Related Chapters:

• 6.1.12.5.1 Selection of Documents Considered to be Relevant

• 6.1.16 Assistance with Foreign Languages

• 6.9.5 Examiners with Foreign Language Capabilities

• RIO - Patent Cooperation Treaty (PCT) Tasks

• RIO and Intelledox - Processing PCT Tasks

After the examiner obtains the citations, they should view the full specifications and cite the most relevant foreign and AU documents. English language documents are preferred over foreign language documents disclosing the same matter. Where the English language specification actually viewed is published after the filing date and an earlier published foreign language family member exists, examiners should follow the practice in 6.1.12.5.1 Selection of Documents Considered to be Relevant. For foreign language assistance, follow the guidance in 6.1.16 Assistance with Foreign Languages and 6.9.5 Examiners with Foreign Language Capabilities.

A copy of any foreign or AU documents cited is kept in the relevant application folder in COMPASS. For further information on the use of COMPASS in examination, see RIO - COMPASS.

Where some or all full copies of non-patent references have not been received and only 4 weeks remain until the search report must be established, the examiner should make enquiries about those full copies. After that, the examiner proceeds to establish the search report in the normal way using the available material. This should be done in consultation with a Senior Examiner.