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6.1.12.5.1 Selection of Documents Considered to be Relevant

Date Published

Key Legislation:

PCT Administrative Instructions:

  • s507 Manner of Indicating Certain Special Categories of Documents Cited in the International Search Report

Regulations under the PCT:

PCT ISPE Guidelines:

  • para 16.57 Documentation Searched Other Than Minimum Documentation
  • para 16.64 Documents Considered to Be Relevant
  • para 16.71 Intermediate Documents​​​​​​​

Second Sheet of ISR, Box C

The completion of this part of the international search report can be considered as having three components.  These are:

These three components are discussed in 6.1.12.5.2 Citation Category, 6.1.12.5.3 Citation of Prior Art Documents and 6.1.12.5.4 Citation of URLs. [Rule 43.5 & PCT/GL/ISPE/12 at para 16.57 et seq]

Some general points to note are:

  • 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 ISO as guidance.

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

  • Nevertheless, 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, as these documents will be of interest to some Designated Offices, for example the USA. Be alert also to documents that could be relevant to AU whole-of-contents novelty considerations at a later stage [Rule 33.1 & PCT/GL/ISPE/12 at para 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).
  • 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.

Note:  Documents should not be cited simply to top-up the number of documents cited to some 'magical' number.

  • Documents cited should be 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 an English language document has a publication date after the filing date of the international application, but has a family member of non-English language with a publication date earlier than the filing date, then both documents should be identified. In these circumstances the 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). [PCT/AI/Part1 Section 507 (g)].

    See also MPP 5.6.4.6 Identifying and raising citations.
  • Where the cited document is a patent document in a language other than English and 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 and 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. [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​​​​​​​

Amended Reasons

Amended Reason Date Amended

Published for testing
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