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6.1.8.1 Introduction

Date Published

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:​​​​​​​

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 and will determine the relevant non-patent literature that should be searched. [PCT/GL/ISPE/12 at para 15.41].

  • Generally speaking, the search statement should be prepared in conjunction with a three 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 RO (such as NZ) during initial processing and a copy of the earlier search if carried out placed on the case file. [Rule 4.11, Rule 16.3, Rule 41.1]. If an earlier search is found to be adequate, it is not necessary to form a three person team – see para 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, where practicable the case should be transferred to that other examiner to do the search.

  • 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.

  • 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 ISR. [PCT/GL/ISPE/12 at para 15.37]. Where a refund may be due, then upon completion of the ISR (see 6.1.12 Background Search Report and Notification Form Completion) the refund form is sent for approval to the supervising examiner. See 6.1.12.8 Refund Due, and para 6.4 of Annex S.

  • Where the international application claims the priority of one or more earlier applications which the earlier search was done by the Australian Patent Office, even where the applicant has not requested to take such results into account, the examiner must, to the extent possible, take those results into account in establishing the international search report and written opinion (Rule 41.2(a), Rule 23bis(2), PCT/GL/ISPE/12 at para 15.17B). 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 (Rule 41.2(b), Rule 23bis(2), PCT/GL/ISPE/12 at para 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, except in the case when the earlier search was carried out by the USPTO and the applicant has marked the checkbox in Box VII of the Request, requesting the receiving Office to prepare and transmit copies of the citations to the ISA. 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 RIO for Patents Manual (Create Correspondence Task).

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).

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. [PCT/GL/ISPE/12 at para 15.62, 16.58, 16.59]. The names of the members of the three-person team must also be recorded. See 4 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.

Amended Reasons

Amended Reason Date Amended

Published for testing
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