6.1.12.5.1 Selection of Documents Considered to be Relevant

• Introduction

• Considerations for examiners

  • Number of similar prior art documents to raise

  • Prior art documents with distinct subject matter

  • Raising A category documents with X- or Y-category documents

  • Full copy of document

  • Language of cited documents

  • Patent and non-patent literature disclosing the same subject matter

  • Citing innovation patents from the same patent family

Box C of the Second Sheet of the International Search Report (ISR) has three key components. These are:

• the citation category (see 6.1.12.5.2 Citation Category)

• the citation of prior art documents together with identification of relevant passages where appropriate (see 6.1.12.5.3 Citation of Prior Art Documents and 6.1.12.5.4 Citation of URLs)

• the identification of relevant claim numbers

Further guidance can be found in PCT Rule 43.5 & PCT/GL/ISPE/12 at paragraph 16.57 et seq.

The following outlines general points for examiners to consider when selecting documents to raise.

The ISR should identify documents relevant to assessing the novelty and inventive step of the claims of the application. Consequently, the range of documents cited should be sufficient to justify such an assessment in relation to all the claims, where such relevant documents can be located. In some cases, only a few documents are required to achieve this, while for other applications a much larger number of documents is required.

Documents selected for citation therefore should be the prior art that is closest to the applicant’s invention as this will ensure they are relevant to the largest number of claims possible. The duplication of teachings by way of citation of multiple documents showing the same inventive elements should be kept to a minimum. When citing a document, the examiner should clearly indicate which portions and specific pages of the document are most relevant, using the discussion of those documents in the International Search Opinion (ISO) as guidance.

Thus, in order to avoid increasing costs unnecessarily, examiners must not cite more documents than is necessary.

While the number of documents cited in an Australian ISR does not normally exceed about ten, this number can and should be exceeded if it is necessary to do so to cover all of the claims.

Examiners must not inappropriately exclude documents of particular relevance from the report. That is, documents in either X or Y category — even if they are also P category — should not be excluded where they disclose subject matter of particular relevance that is not disclosed in other cited documents. These documents will be of interest to some Designated Offices, for example the USA. Examiners should also be alert to documents that could be relevant to AU whole-of-contents novelty considerations at a later stage (see Rule 33.1 & PCT/GL/ISPE/12 at paragraph 16.71).

In most cases there should be no need to cite A category documents when X and/or Y category documents are cited (if needed, then it would normally be expected that no more than two category A documents would be necessary).

Examiners should cite documents based on the full copy of the document and not on the abstract thereof, except where section practices allow otherwise.

English language documents must be cited whenever available.

In cases where the following both apply, then both documents should be identified:

• an English language document has a publication date after the filing date of the international application.

• a family member of non-English language has a publication date earlier than the filing date.

In these circumstances the non-English language document is cited first and the English language family member is mentioned afterwards, e.g. DE 2947734 A1 (GREEN) 4 August 1981 col 2-3, fig 2 (& US 4282353 A).

See also 5.6.4.6 Identifying and raising citations and PCT Administrative Instructions Section 507 (g).

Where both

• The cited document is a patent document in a language other than English.

• Another member of the same patent family is available in English.

the examiner should preferably also indicate the corresponding part or passage of the English member of the patent family. In doing so, the examiner should not cite the English member as a separate document but briefly mention it. The examiner should also indicate the relevant part or passage of that English member in the place, following the indications of specific part or passage of the cited document (see PCT/GL/ISPE/12 at para 16.64(b)).

Where the search has revealed patent and non-patent literature documents disclosing the same subject matter of particular relevance, preference should be given to citing patent documents in the search report.

Because innovation patents are published relatively quickly after filing, the situation can arise where the publication date of an innovation patent is earlier than the international filing date of an international application which is a family member. In these circumstances it is appropriate to cite the innovation patent as a ‘P,X’ document in the international search on the international application which is a family member (see 4.1 Objectives of the Search).