6.1.7.1.5 Implications of the Hierarchy on Searching

Also in this Chapter:

• 6.1.7.1.1 PCT Guideline References and Flow Chart
• 6.1.7.1.2 Overview of the Hierarchy
• 6.1.7.1.3 Special Meaning, Ordinary Meaning, Everyday Meaning
• 6.1.7.1.4 Closed and Open Definitions and Implications for Interpretation
• 6.1.7.1.6 PCT GL Appendix Paragraphs 5.20[1] and 5.20[2]
• 6.1.7.1.7 Interpretation of Citations - Inherency

Related Chapters:

• 4.4.2 Search Strategy Considerations
• 6.1.8.4 Search Considerations

For further information about searching broad claims and inventive step searching see 6.1.8.4 Search Considerations and 4.4.2 Search Strategy Considerations.

When the hierarchy system is used, the interpretation of terms/phrases can indicate to the searcher how to formulate a search in order to find a novelty citation.  If a novelty citation is not found, then the next step in the hierarchy can be pursued to obtain a citation with a lesser relevance.

For example, where there is a special meaning for a particular term/phrase, the search could be restricted to that special meaning. Where a citation is found which falls within the scope of the special meaning further searching may not be necessary as the citation would be regarded as a novelty citation. However, where a citation is not found, further searching beyond the special meaning could be considered. This would be an inventive step search and would usually incorporate the ordinary meaning or everyday meaning of particular terms or phrases. The same approach to locating a novelty citation will be applied if the specification and claims do not have special meanings for particular terms or phrases, i.e. the initial search uses the ordinary meaning, or if that is not present, then the everyday meaning.

However, it is recognized that the search strategy could take into account more than the special meaning of a particular term. For example, where the ordinary meaning is broader than the special meaning, the search strategy may also employ the broader meaning.

The search strategy, as determined by the 3 person team, will often incorporate two or three of the Meanings depending on the art and the number of citations identified in preliminary informal searches. However, when considering the citations for novelty and inventive step, the interpretation as derived under the PCT GL must be used.

Where a particular interpretation has been made which has influenced the search in a particular direction, this interpretation needs to be explained and justified in relation to the PCT GL. For example, where the special meaning is different to or contradicts the ordinary meaning in the art, and the search strategy has taken both the special meaning and the ordinary meaning into account for searching purposes, this needs to be explained in Box V of the ISO/IPEO/IPRPII when explaining the relevance or otherwise of citations.  In this situation a clarity observation may also be appropriate in Box VIII of the ISO/IPEO/IPRPII.

Example 1:

The special meaning is different to that commonly understood in the technology.

An observation should be made similar to “The special meaning given by definition at page X of the specification for ‘term/phrase’ differs to what is commonly understood in the art. In the art, this term is understood to mean […].In accordance with the PCT Guidelines, the claims have been interpreted using the special meaning. This discrepancy potentially generates ambiguity in the specification and consequently, the meaning in the art has also been considered for the purposes of searching and in formulating this opinion.”

Example 2:

The special meaning contradicts that commonly understood in the technology.

An observation should be made similar to “The special meaning given by definition at page X of the specification for ‘term/phrase’ contradicts that which is commonly understood in the art. In the art, this term is understood to mean […].In accordance with the PCT Guidelines, the claims have been interpreted using the special meaning. However, this discrepancy generates ambiguity in the specification and consequently, the meaning in the art has also been considered for the purposes of searching and in formulating this opinion.”