6.1.8.1 Introduction

Also in this Chapter:

• 6.1.8.2 The Three Person Team (3PT)

• 6.1.8.3 Area of Search

• 6.1.8.4 Search Consideration​​​​​​​

Key Legislation:

​​​​​​​Regulations under the PCT:

• Rule 4.11 Reference to Continuation or Continuation-in-Part, or Parent Application or Grant

• Rule 16.3 Partial Refund

• Rule 23bis(2) Transmittal of Documents Relating to Earlier Search or Classification for the Purposes of Rule 41.2

• Rule 41.1 Taking into Account Results of Earlier Search in Case of a Request under Rule 4.12

• Rule 41.2 Taking into Account Results of Earlier Search and Classification in Other Cases

PCT ISPE Guidelines:​​​​​​​

• Paragraphs 15.17B – 15.17C Basis of the Search

• Paragraph 15.37 Preliminary Steps

• Paragraph 15.41 Search Statement

• Paragraph 15.62 Recording the Search

• Paragraphs 16.58 – 16.59 Electronic Database Consulted

Related Chapters:

• 4.3.6 Applicant/Inventor Name Searching

• 4.6 Recording the Search Details

• 4. Annex D Search Information Statement

• 6.1.8.3 Area of Search

• 6.1.12 Background Search Report and Notification Form Completion

• 6.1.12.8 Refund Due

• 6.3.5.3 PCT Third Party Observations

• Annex S

• Annex F

• RIO - Creating correspondence tasks

On this Page

• Initial considerations

  • Third-party observations

  • Admitted prior art

  • Earlier searches

  • Priority claimed from previously searched application

• Recording search details

  • Additional guidance

Initial considerations

In the course of classifying the international application, the search examiner will prepare a search statement that:

• Takes into account the correct field in which to conduct the international search

• Will determine the relevant non-patent literature that should be searched (see PCT/GL/ISPE/12 at paragraph 15.41)

A careful comparison of present and earlier search requirements could produce major efficiencies in search strategy, for example, limitation to an update of the earlier search or extension to IPC or US classification areas. Note also 6.1.12 Background Search Report and Notification Form Completion.

Note that in many cases, an applicant/inventor name search will also be required. It is the responsibility of the three person team to determine whether, for the search strategy under development, one of the identified exceptions, applies (see 4.3.6 Applicant/Inventor Name Searching and 6.1.8.3 Area of Search).

Admitted prior art

The search examiner should check whether the international application cites any admitted prior art. If so, then a full text copy should be obtained, unless it is clear from the descriptive text that it is of no interest. This full text copy may be of assistance during the search strategy discussion and/or may be a potential citation for the International Search Report (ISR), see PCT/GL/ISPE/12 at paragraph 15.37.

Third-party observations

The search examiner should check the document list for the availability of any PCT third party observations – see 6.3.5.3 PCT Third Party Observations.

Earlier searches

Generally speaking, the search statement should be prepared in conjunction with 3-person team. However, the search examiner should check if an indication of an earlier search having been carried out is included in Box VII on the International Application Request form PCT/RO/101 (at the last sheet). Usually this will have been checked by the PCT Unit or relevant overseas Receiving Office (RO), such as NZ, during initial processing and a copy of the earlier search if carried out placed on the case file (see Rule 4.11, Rule 16.3, and Rule 41.1). If the examiner finds an earlier search to be adequate, it is not necessary to form a three person team (see paragraph 4(b) of Annex S).

If an earlier search has been carried out, and it was carried out by an examiner other than the search examiner, the case should be transferred to that other examiner to do the search (where practicable).

Where there are earlier search results available, a refund may be applicable (see Annex S and 6.1.12.8 Refund Due). In such a case, upon completion of the ISR, the examiner sends a refund form to the supervising examiner for approval (see paragraph 6.4 of Annex S, RIO - Creating correspondence tasks, and 6.1.12 Background Search Report and Notification Form Completion).

Priority claimed from previously searched application

When the international application claims the priority of one or more earlier applications which the earlier search was done by the Australian Patent Office, the examiner must (to the extent possible) take those results into account in establishing the international search report and written opinion (see Rule 41.2(a), Rule 23bis(2), and PCT/GL/ISPE/12 at paragraph 15.17B). This applies even where the applicant has not requested to take such results into account. The PCT Unit will forward the earlier application's search report and citations to the search examiner.

Where the international application claims the priority of one or more earlier applications which the earlier search was done by a foreign patent office, any earlier search report completed on the application will have been sent to AU at the same time as the search copy. The search examiner may take those results into account in establishing the international search report and written opinion (see Rule 41.2(b), Rule 23bis(2), and PCT/GL/ISPE/12 at paragraph 15.17C).

The search examiner should attempt to access the cited documents by the usual techniques, namely from the internet or by requesting the library to obtain the document(s). If this proves unsuccessful, then the applicant should be invited to provide the document(s) in question. An exception is the case when the earlier search was carried out by the US Patent and Trademark Office (USPTO) and the applicant has marked the checkbox in Box VII of the Request reading ‘Request from the applicant to the receiving Office to transmit to the ISA a copy of the earlier search results.’ In this case the PCT unit should be requested to ask the USPTO to supply the document(s). The invitation should be made by the examiner on PCT form PCT/ISA/238 (see Patents Manual - Create Correspondence Task).

Recording search details

All details of the search must be recorded on the Search Information Statement (SIS), which must then be placed on the correspondence file. This includes details of all patent and non-patent literature searches, as well as searches conducted on the internet (see PCT/GL/ISPE/12 at paragraphs 15.62, 16.58, and 16.59). The names of the members of the three-person team must also be recorded.

Additional guidance

See Annex F for information on when a SIS must be completed. Further information on the SIS and instructions for its use are provided at 4.6 Recording the Search Details and 4. Annex D Search Information Statement.