6.1.8.3 Area of Search

Also in this Chapter:

• 6.1.8.1 Introduction
• 6.1.8.2 The Three Person Team (3PT)
• 6.1.8.4 Search Consideration

Related Chapters:

• 4 Searching
• 4.3.6 Applicant and/or Inventor Name Searching
• 6.1.10. Non-Patent Literature
• Annex D

The field of the international search must receive careful consideration, wherein the search examiner should ensure that the most relevant search area is searched first. Some insight may be gained on what area of the IPC should be searched by consulting patent documents. Examiners should however keep in mind that foreign offices may differ from this Office in the interpretation of the IPC. Non-patent literature is considered by the three person team and should be searched where non-patent literature is a common source of relevant citations – see 6.1.10. Non-Patent Literature.

The discussion of the appropriateness of the search strategy may include, if this has not already been done, setting up sample searches of the AU documents or further sample searches using ESP@CE or USPTO before determining the most effective international search.

Frequently applicants and /or inventors have worked for some time in the field to which an application relates and have similar or even parallel applications that may either be undergoing search and examination or awaiting it.  It is important that such documents are located as early as possible in the searching process to allow simultaneous search and examination where this is appropriate, to assist in drafting a suitable search strategy or at least to identify what will undoubtedly be closely related art.  

In general applicant/inventor name searches should be considered for all PCT applications.  However, the specific circumstances of individual cases must be assessed to confirm that the search is required.

Consequently, a search of the applicant and/or inventor name is mandatory, except where, in the judgement of the three person team, either:

1. such a search would serve no useful purpose (such as where the application clearly identifies cross-references to other cases of the applicant’s own) OR
2. to conduct the search would be non-viable (such as a very active applicant or very common name e.g. Smith)

The recording of these searches in the SIS should comply with the guidance provided in Annex D.

See 4.3.6 Applicant and/or Inventor Name Searching for a full discussion of the requirements of these searches.

Note that similar guidance applies to certain national applications – see also 4 Searching.

AU designs will not normally be searched. However, experience has shown search strategy/truncation benefits in a very limited number of arts such as toys and games, or where an invention is characterised solely by pattern, shape or profile and a simple illustration can serve as a citation, like tyre treading, tools, extrusion profiles. Experienced Designs staff must not be routinely consulted, but can readily give a preliminary indication of the likely potential in such a search in these limited arts.