6.1.12.5.2 Citation Category

Also in this Chapter:

• 6.1.12.5.1 Selection of Documents Considered to be Relevant​​​​​​​
• 6.1.12.5.3 Citation of Prior Art Documents
• 6.1.12.5.4 Citation of URLs
• 6.1.12.5.5 Citation Examples
• 6.1.12.5.6 Citing Patent Documents Retrieved from EPOQUE
• 6.1.12.5.7 Relevant Claim Numbers

Key Legislation:

PCT ISPE Guidelines:

• para 12.06 Combining Documents
• para 16.65 Citation Category

Administrative Instructions under the PCT:

• s505 Indication of Citations of Particular Relevance in the International Search Report
• s507 Manner of Indicating Certain Special Categories of Documents Cited in the International Search Report
• s508 Manner of Indicating the Claims to Which the Documents Cited in the International Search Report Are Relevant

Related Chapters:

• 6.1.8.4 Search Considerations
• Annex B
• Annex C
• Annex I

Documents which are cited are given a category indication by way of an alphabetic character, details of which are given in Administrative Instructions 505 and 507 (see completed example ISRs in Annex B and Annex C to this part). The categories for citations are also explained under the “Documents considered to be relevant” section of the report.  A category should always be indicated for each document cited. [Ad. Inst. 505 Ad. Inst. 507 &  PCT/GL/ISPE/12 at para 16.65]

It is possible that a particular document may have more than one category specified in the report. For instance a citation may be an anticipation and so be indicated as X, and also in its introductory portion contain a good description of the developments in the appropriate field up to that time, and so also be indicated as A. [Ad. Inst. 508]

A separate line is to be used for each category assigned. Particularly relevant passages of citations must be indicated.  In identifying relevant passages in the ISR, examiners should “summarise” the relevant passages identified for each document in the ISO.  For example, if the ISO discusses a certain feature disclosed at column 10 lines 23–35, in the ISR it would only be necessary to refer to column 10 (Refer Annexes B and C to this part for examples.)  References in the ISR that merely state “See whole document” are not useful and should be avoided where features are not readily apparent from the citation (eg. due to interpretation/construction/contextual issues, inherency or features hidden in a lengthy specification).

In situations where there are two documents which are to be read as a single source of information, the two documents can be combined for novelty considerations under para 12.06 of PCT/GL/ISPE/12, the primary document should be categorised as ”X”, while the second document (which is referred explicitly in the primary document) should be categorised as “L”.

Where a citation is combined with common general knowledge to support an inventive step objection, regardless of whether documentary evidence is used to demonstrate common general knowledge, it should be categorised as “X”  – see 6.1.8.4 Search Considerations and Annex I for examples of inventive step objections.

Note:  In cases where documentary evidence is used to support an assertion of common general knowledge the documentary evidence should be categorised as “A”.

A “Y” category indicates the document is relevant for use in an inventive step objection, only when it is combined with at least one other document. This implies that there must always be at least two “Y” documents.