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6.1.12.5.3 Citation of Prior Art Documents

Date Published

Key Legislation:

Administrative Instructions under the PCT:

  • s503 Method of Identifying Documents Cited in the International Search Report and the Written Opinion of the International Searching Authority
  • s507 Manner of Indicating Certain Special Categories of Documents Cited in the International Search Report

Regulations under the PCT:

WIPO Standards:

  • ST.14 References cited in patent documents
  • ST.16 Identification of different kinds of patent documents

Note: When identifying cited documents, those errors that reflect a misapprehension of the facts rather than a simple miskeying are regarded as serious mistakes. They are errors whose routine correction is not obvious to a reader in the light of other citation information. Such errors are misleading in that they would reasonably lead the reader to an incorrect conclusion (e.g. a typographical error that results in an incorrect applicant name which is the name of a known competitor firm in the art concerned, or a citation publication date that erroneously indicates that the citation cannot be used to establish want of novelty).

Identification of any document should be made according to WIPO standard ST.14  [Ad. Inst. 503 ST.14, ST.16] unless indicated otherwise in the manual (e.g. see MPP 6.1.12.5.5, MPP 6.1.12.5.6, completed example ISRs in Annex B and C).

This means that the details required for each entry in the citations list include, as available:

 

  • Patent Literature:
    • country code,
    • publication number,
    • publication Kind code,
    • applicant,
    • date of publication;
  • Non-patent literature:
  • name by which the journal or reference work is known,
  • date of publication,
  • volume number,
  • starting page reference and/or the title of the article.

 

When citing documents, internationally recognized abbreviations are permitted.

Additionally, the citation list must be free from frequent or serious spelling or typographical mistakes and must not contain misleading information.

Note:  Copies of all documents (both patent and non-patent literature) cited in official IP Australia examination and search reports and opinions, including any document having relevance categorised ‘A’, must be stored on the relevant application folder in COMPASS for future reference.

 

Patent Literature

In general cited patent documents should be identified in the form:

CC NUMBER KC (APPLICANT) Publication Date

specific pages, paragraphs or lines containing the cited disclosure

Which indicate the relevant parts of the disclosure, where:

CC = country code, identifies country or region from which the document originates;
NUMBER = document number of the patent, patent application or abstract cited;
KC = Kind code, identifies the type and level of publication;
APPLICANT = name of the applicant for the patent;
Publication Date = date of publication of the document cited

(See 6.1.12.5.5 for a non-limiting list of example citation formats)

Although the document number and country code of a citation are critical to correct identification of a document, it is recognised, that there is substantial variation in the number formats as they are adopted by different databases. Moreover, it is expected that the reader/user of the information will adjust the format to suit the database accessed when retrieving the document.

Therefore:

 

  1. For the purposes of consistency when reporting prior art patent documents, a citation is correctly identified when the document number, including any leading zeroes, and the convention country as cited, are identical to these descriptors as they appear on the document viewed and cited.  This principle may be applied when citing documents from any jurisdiction, including when citing a WO document.
  2. Copies of all documents (both patent and non-patent literature) cited in official IP Australia examination and search reports and opinions, including any document having relevance categorised ‘A’, must be stored on the relevant application folder in COMPASS for future reference.
  3. Where a copy of the document cited has been placed on the relevant application folder in COMPASS (see 2, above), the details of the citation written in the report, should mirror this information.

 

WO Documents

In view of the variation in number formats that the WO documents have adopted at various times, examiners may, when citing WO documents, identify them according to the 10 digit format, regardless of the format of the number on the document viewed. That is examiners may, at their discretion, insert leading zeroes and century digits to the numbers as they appear on the document viewed. (See 6.1.12.5.5 for a non-limiting list of example citation formats).

Additional ‘descriptors’

Where additional descriptors or alphanumeric codes are included in English in the number on the document considered, as stored on the relevant application folder in COMPASS (e.g. H or S in Japanese citations), they must be included in the citation details. Where they are absent from the document considered, or appear in another language, examiners are not obliged to determine, translate or include them in the citation. If aware of the English translations of such descriptors, however, examiners may include them in the citation details, at their discretion.

As they are not considered critical, slashes, hyphens and commas may be added or omitted except where essential to the unambiguous identification of the document.

 

Note:

1.  If system limitations prevent the entry of the citation number in the format of the document actually considered, the matter should be referred to the Supervising Examiner for direction and reporting.

2.  A copy of each document cited in official IP Australia examination and search reports, including any document having relevance categorised ‘A’,must be stored on the relevant application folder in COMPASS, for future reference.

3.  The copy of a cited document stored on the relevant application folder in COMPASS is regarded as determinative of the content of the cited document, the number format and therefore the detail to be included in citation details.

 

Kind Codes

 

Note:

1. When citing a patent document, a Kind Code must be included.

2. When citing a document for which no Kind Code is identified, ‘A’ should be applied in the absence of any other indication or means of identification.

3. When citing an older Australian patent document for which no Kind Code is identified, an appropriate Kind Code should be ascribed as set out in 5.6.4.6 Identifying Citations.

When included in a reported citation list or reference, a Kind Code, must comprise at least the letter (A, B, etc), as required to indicate the level of publication. Where the letter (A, B, etc) alone is not sufficient to provide certainty as to the content of the disclosure of the cited document being referenced, the number (e.g. A3) must also be recorded, if known.

When the examiner is compiling the Search report, the publication level of the document actually considered and assessed as relevant is cited. Examiners are not precluded from viewing and citing B level publication documents but nevertheless should remain alert to the fact that a B level document is published later than, and may also omit subject matter originally disclosed in, the corresponding A level document.

US Documents

Note:

1.  On 2 January 2001 the US introduced pre-grant publication, resulting in new identifying codes appearing on published US Patents.  Annex Z is a notice by the USPTO explaining the new system.

2.  As a result of the America Invents Act, the applicant for a US Patent filed on or after 16 September 2012 is no longer restricted to being the Inventor, and may be the assignee.

3.  Consequently, when citing US applications filed after this change took effect, examiners cannot rely on the name appearing at the top of the document [just below box (12)]as indicating the applicant, as this name refers to the inventor who may not be the applicant.  

Instead examiners should refer to the name appearing against INID 71 which code formally identifies the applicant.  In the absence of INID 71 on the front page of a US application/patent, the examiners should continue to use Inventor name as identifying the applicant.

 

Other Patent Documents

In the case of JP documents, as the citation may be on the basis of the DERWENT or Patents Abstracts of Japan abstract, the appropriate method for identifying the citation should be used. (see sample DERWENT and Patents Abstracts of Japan abstracts at 6.1.12.5.5. [Ad. Inst. 507(g), Ad. Inst. 507(h)].

 

Note: Where a Japanese document number includes, in English, an ‘H’ or ‘S’ (indicating the year of the emperor’s reign), it must be included in the citation details. If absent from the document actually considered by the examiner, or present only as a Japanese character, examiners are not obliged to determine, translate or include the associated letter in the citation. If aware of the English translations of such descriptors, however, examiners may include them in the citation details, at their discretion.

For the SU documents, the citation is presently based on the DERWENT abstract.

Note:  Where the abstract does not indicate all the elements for identification it may be identified with whatever elements are available from the abstract.

 

Publication Date (INID Codes)

The date of publication of foreign patent documents can be identified by the date following the relevant INID number i.e. 41-47. For older documents not bearing INID numbers identification includes looking for terms such as:

USgranted or patented
GBacceptance date
FR

publication de la deliverance

publie

DE

Offenlegungstag

Bekanntmachung Ausgabe der Auslegeschrift

ausgegeben

CH

veroffentlicht

expose d'invention publie le

CAissued

The patentee (or applicant) for a foreign patent can be recognised by the name following the relevant INID number i.e. 71-76 (for US patents filed before September 2012: 75 or 76)

Note: In the absence of other indications, where documents refer to multiple publication dates, with or without INID code identification, the earlier date should be assumed to apply.

Note:  Accepted Australian patent documents (i.e. B level documents) may include more than one INID code relating to the date of publication, e.g. INID numbers 43 and 44. In such cases, the correct date of publication of the accepted patent document is the date following the INID number 44 (accompanied by the text “Accepted Journal Date”). The date following the INID number 43 should not be taken as the date of publication of the accepted patent document because this date refers to the date of original publication of the corresponding patent application.

e.g.      (71)     Name(s) of applicant(s)
            (73)     Name(s) of grantee(s)

 

Non-Patent Literature

The name by which a journal or reference work is known and the date of publication (or URL and retrieval date) are critical information items and therefore must be correctly recited for non-patent literature.

The details used when citing non-patent literature must be the same as those recited on the document actually viewed and considered to be relevant. (Where a copy of the document cited has been placed on the relevant application folder in COMPASS, the details of the citation should mirror this information.) (see 6.1.12.5.5 Citation Examples for a non-limiting list of citation formats).

For non-patent literature citations in a language other than English, the original (non-English) reference should be included, wherever technically possible, followed by an official translation into English, if one exists and it is available, in round brackets. An “official translation” here means an existing rendering of the original language name or title in English coming from the same source as the citation and useful for identifying and retrieving the relevant document. In case an official translation into English is not available for some elements of the original citation, an informal translation into English for those elements may optionally be provided after all elements of any official translation. Any informal translation should be preceded by the text “non-official translation”. [PCT/GL/ISPE/12 at para 16.78B]

 

 

Citing Chemical Abstracts (CAS) Registry Numbers

When a CAS Registry Number is cited as the result of an original or additional search, sufficient information should be included in either the Citation Details or the text of an objection to enable the compound to be identified.  For example, the compound may be identified by its chemical name, by means of an examiner-prepared chemical structure (e.g. using ChemDraw) or by reference to a chemical formula (e.g. compound of formula X wherein R = methyl).

An example where the chemical name is included in the Citation Details is provided below:

D1  CAS Registry Number 780007-06-9; STN Entry Date 14 November 2004; 1-Piperidinebutanoic acid, 4-[(4-methoxyphenyl)phenylmethylene]-****

Category:  X  Claims:  1-10

**** Document found in an original search.  See attached Search Information Statement for details.

 

Note: A copy of each document cited in official IP Australia examination and search reports, including any document having relevance categorised ‘A’, must be stored on the relevant application folder in COMPASS, for future reference.

The copy of a cited document stored on the relevant application folder in COMPASS is regarded as determinative of the content of the cited document, the number format and therefore the detail to be included in citation details.

Amended Reasons

Amended Reason Date Amended

Published for testing
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