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

• Automated Preliminary Search

• Three-person team considerations

  • Initial searching

  • Applicant and inventor searching

  • See also

• Searching of designs

The search examiner should ensure that the most relevant search area is searched first, carefully considering the field of the international search. The examiner may gain some insight on the area of the International Patent Classification (IPC) they should search by consulting patent documents. However, examiners should keep in mind that foreign offices may differ from this Office in the interpretation of the IPC.

The 3-person team should also consider non-patent literature, which should be searched where non-patent literature is a common source of relevant citations (see 6.1.10 Non-Patent Literature).

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

A discussion 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 Espacenet or US Patent and Trademark Office (USPTO) before determining the most effective international search.

Because applicants and/or inventors have worked for some time in the field (to which an application relates), it follows they often have similar or even parallel applications that may be either undergoing search and examination or awaiting it. The examiner should locate such documents 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 3-person team), either one of the following applies:

• 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.

• To conduct the search would be non-viable, for example a very active applicant or very common name e.g. Smith.

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. In addition, searching designs may be useful when an invention is characterised solely by pattern, shape, or profile and a simple illustration can serve as a citation (such as tyre treading, tools, or 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.