6.1.8.4 Search Considerations

• Claim interpretation

• Searching broad claims

• Determining whether claimed features are substantial, common general knowledge, or well known in the art

• Inventive step searching

• Searching dependent claims

Examiners should interpret terms and phrases in a claim in accordance with the PCT guidelines. For further guidance, see 6.1.7.1.1 PCT Guideline References and Flow Chart.

When searching broad claims, the following steps should generally be followed:

1. The search examiner should carry out an initial search of the general inventive concept with reference to the examples and description (see PCT/GL/ISPE/12 paragraph 15.22).

   • The search should not be restricted to specific examples unless no other search is possible.

2. If the search retrieves no relevant citations, the examiner should carry out further search(es) of embodiments within the scope of the claims.

   • The examiner — either in consultation with the 3-person team or another technical expert — should attempt to identify potentially relevant subject matter that can be accessed quickly.

3. If additional searching fails to quickly retrieve any relevant prior art, the 3-person team should assess whether further searching is useful.

4. The 3-person team then considers any additional inventive step searches (as outlined below).

The initial meeting of the 3-person team should attempt to anticipate alternative search strategies in order to deal with all aspects of the search at the one time. The 3-person team should only consider inventive step searching when the initial search fails to uncover any citations disclosing one or more features of a claim.

An outline of the process for searching broad claims is given in Annex H.

See also 6.1.7.1.1 PCT Guideline References and Flow Chart, 6.1.7.2.1 Introduction to Broad Claims, 6.1.7.2.2 Types of Broad Claims, and 4.4.2.3 Broad Claims.

The examiner is required to search the substantial features as defined in the entire claim set — including both independent and dependent claims. Where they determine that a feature is substantial or significant, then documentary evidence will be required in order to prove obviousness. Similarly, they should provide citations to support an assertion that a feature is common general knowledge, unless the feature is so well known in the art that documentary evidence is unnecessary.

The 3-person team should be involved in determining whether any feature within the claim set is so well known, insubstantial, or trivial that documentary evidence is not required to prove obviousness. The following principles should be followed:

• The 3-person team should individually consider the claims and decide which features/claims may be regarded as so well known, insubstantial or trivial that no additional searching effort is required.

• The 3-person team should then convene to discuss their individual points of view and any findings regarding insubstantial features/claims. 

  • If there is general consensus that these features/claims are insubstantial, then the examiner should be able to demonstrate obviousness without the need for documentary evidence.

  • It would follow that no specific search for these features/claims should be required where they are subsequently found to be novel.

  • However, where the feature can be readily found in a textbook or another document, then this source should be cited.

• Where there is no general consensus amongst the 3-person team regarding which features/claims are insubstantial, then the features/claims in question are considered to be substantial.

  • Documentary evidence is therefore required to prove obviousness.

For further guidance see also PCT/GL/ISPE/12 at paragraphs 15.28, 15.55, and 15.61.

All initial searches should be constructed to cover both Novelty and Inventive Step. After conducting an initial search, an additional or ‘inventive step’ search should be undertaken for any claim/feature found to be novel and not disclosed in documents that can be combined for an Inventive Step argument. The principles that should be followed in devising the additional search are:

• The results of the initial search should be assessed in order to establish the closest prior art.

• The examiner should determine any differences between this art and the novel claims/features.

  • An additional search is not required for differences/features deemed to be insubstantial.

• The examiner should then conduct an additional search in order to find documents that disclose these differences.

These documents would be used as Y category citations in combination with the closest prior art. The additional or inventive step search may involve searching the relevant databases using specific targeted keywords that relate to the different features. Otherwise, the additional or inventive step search may require reconvening of the 3-person team to determine a new search strategy.

See also 6.1.12.5.2 Citation Category and 6.3.8.6.2 Inventive Step.

All dependent claims that the 3-person team considers as defining substantial features should be searched in accordance with the procedures outlined above. When initially determining the search strategy, the 3-person team should additionally consider both:

• All substantial or significant features defined in the dependent claims

• Those features that the application might reasonably be expected to be directed towards following amendment

Where the features defined in the dependent claims are considered to be insignificant, the search strategy may be formulated to exclude those features. This ensures that the search is targeted to the most relevant prior art.

Where a significant feature cannot be found in the prior art, the examiner, in consultation with the 3-person team, should use his or her professional judgement to determine whether continuing the search is warranted.

Where the examiner believes there are too many dependent claims (or too many additional features defined by those claims), the 3-person team should discuss which claims or groups of claims should be searched in detail.

For further guidance see also PCT/GL/ISPE/12 at paragraphs 15.25, 15.27, 15.28, and 15.31.