6.3.8.7 Box VI Certain Documents Cited

Also in this Chapter:

• 6.3.8.1 Front Page and Notification Application Details
• 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs
• 6.3.8.3 Box II Priority
• 6.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability
• 6.3.8.5 Box IV Unity of Invention
• 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability​​​​​​​
• 6.3.8.8 Box VII Certain Defects
• 6.3.8.9 Box VIII Certain Observations

Key Legislation:

Regulations under the PCT:

• Rule 33.1 Relevant Prior Art for the International Search
• Rule 64.2 Non-Written Disclosures
• Rule 64.3 Certain Published Documents
• Rule 70.9 Non-Written Disclosures
• Rule 70.10 Certain Published Documents

Administrative Instructions under the PCT:

• s507 Manner of Indicating Certain Special Categories of Documents Cited in the International Search Report

Related Chapters:

• 9.17.17.1 International
• Annex A
• Annex D

• RIO - Processing PCT Tasks - Box VI

• 6.1.12.5.2 Citation Category

• P documents
  • Patent ‘P’ documents
    • Level of detail
    • P,A patent documents
  • NPL ‘P’ documents
  • When the claimed priority is invalid
• E documents
• Public disclosures

Where the claimed priority is valid and the cited document has an earlier priority date than a claim of the application subject to International Preliminary Examination (IPE) [Rule 33.1(c), Rule 64.3, Ad. Inst. 507(b)], examiners should list both of the following in Box VI, Item 1:

• All ‘P’ category patent documents which are relevant for novelty or inventive step (except for category ‘P’ documents).
• The citation category of each listed document (see 6.1.12.5.2 Citation Category).

The relevance of the citation – whether it is to novelty or inventive step – should also be indicated to the extent of specifying the particular claims to which the citation is relevant. If the relevance is to novelty, then the particular passages or drawings in the cited document which are relevant should be specified. This applies particularly if this information would be potentially useful to Australian applicants as ‘whole of contents’ issues in the national phase in Australia (Rule 64.3 and Rule 70.10).

Where citations indicate a divisional (AU) or continuation-in-part (US) priority claim in the Bibliographic data (usually beside INID code 60), examiners are to enter the earliest declared priority date of the citation in Box VI. An assumption of validity is given to priority claim.

For P,X patent documents, the level of detail exemplified in Box VI of Annex A for novelty and Annex D for inventive step is sufficient. There is no need to provide positive statements in respect of novelty and inventive step for the above documents.

In a rare circumstance where it is considered necessary to cite P,A patent documents, they should be discussed in Box V without listing them in Box VI.

Where the claimed priority is valid, P,X or P,Y non-patent literature (NPL) documents cited in the International Search Report (ISR) are not to be listed in Box V or Box VI of the following (Rule 64.3 and Rule 70.10 of the PCT):

• International Search Opinion (ISO)
• International Preliminary Examination Opinion (IPEO)
• International Preliminary Report on Patentability Chapter 2 (IPRPII) 

Only P,X and P,Y patent documents should be listed in Box VI, and on the proviso that the cited document has an earlier priority date than a claim of the application subject to IPE.

If the claimed priority is invalid, both NPL and patent documents cited in the ISR as P,X or P,Y are to be discussed in Box V of the ISO, IPEO and IPRPII. This is because these documents can be treated as published X and Y documents.

Regardless of whether a claimed priority is valid or not, ‘E’ patent documents cited in the ISR should always be listed in Box VI of the ISO, IPEO and IPRPII. However, only on the proviso that the cited document has an earlier priority date than a claim of the application subject to IPE and the claim is not novel in light of the cited document. The same level of detail mentioned above for P,X patent documents also applies to ‘E’ documents.

Indicate any public disclosures before the relevant date in Box VI Item 2 (Rule 64.2 and Rule 70.9). Examples of public disclosures include exhibitions, use, oral disclosure or other non-written means.