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International

Table Of Contents
1. International ............................................................................................................ 1

1.1 International Searching...................................................................................... 1

1.1.1 Procedural Outline - PCT International Search.................................................. 1

1.1.2 Introduction ................................................................................................. 3

1.1.2.1 Introduction Background ................................................................................. 3

1.1.2.2 International Examination................................................................................ 3

1.1.2.3 Introduction Procedures .................................................................................. 4

1.1.2.4 Extent of Search.............................................................................................. 5

1.1.2.5 Minimum Documentation ................................................................................ 7

1.1.2.6 Initial Processing by PCT Unit......................................................................... 8

1.1.2.7 Examination Section Procedures .................................................................. 10

1.1.2.8 Searching Examiner...................................................................................... 10

1.1.2.9 Other Considerations .................................................................................... 11

1.1.2.10 Copending Applications .............................................................................. 11

1.1.3 Search Allocation and Preliminary Classification...................................... 12

1.1.3.1 Allocation....................................................................................................... 12

1.1.3.2 Preliminary Classification .............................................................................. 13

1.1.4 Unity of Invention ...................................................................................... 13

1.1.4.1 Unity of Invention Background ...................................................................... 14

1.1.4.2 Determining Lack of Unity ............................................................................. 14

1.1.4.3 Combinations of Different Categories of Claims ........................................... 16

1.1.4.4 Markush Practice .......................................................................................... 16

1.1.4.5 Intermediate and Final Products in Chemical Applications ........................... 18

1.1.4.6 Biotechnological Inventions........................................................................... 19

1.1.4.7 Single General Inventive Concept................................................................. 19

1.1.4.8 A Priori and A Posteriori Lack of Unity .......................................................... 20


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1.1.4.9 Issuing the Invitation to Pay Additional Search Fees .................................... 22

1.1.4.10 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of
Unity .......................................................................................................................... 24

1.1.4.11 Payment of Additional Search Fees Under Protest..................................... 27

1.1.4.12 Completing the Search Report.................................................................... 28

1.1.4.13 Time for Completing the Search Report...................................................... 28

1.1.4.14 Reported Decisions..................................................................................... 28

1.1.4.15 Other Decisions from the EPO.................................................................... 32

1.1.5 Abstract and Title ...................................................................................... 33

1.1.5.1 Abstract ......................................................................................................... 33

1.1.5.2 Title ............................................................................................................... 35

1.1.6 Subjects to be Excluded from the Search ........................................................ 36

1.1.7 Claims Lacking Descriptive Support or Clarity; Multitudinous Claims.............. 37

1.1.8 Search Strategy ............................................................................................... 40

1.1.9 Foreign Patent Abstract Retrieval .................................................................... 44

1.1.10 Non Patent Literature.............................................................................. 45

1.1.10.1 Non Patent Literature Background.............................................................. 45

1.1.10.2 Engineering Index ....................................................................................... 46

1.1.10.3 "Chemical Abstracts" - CA .......................................................................... 47

1.1.11 Search Procedure ................................................................................... 49

1.1.11.1 Overview ..................................................................................................... 50

1.1.11.2 Inventive Step ............................................................................................. 51

1.1.11.3 Searching Product by Process Claims........................................................ 52

1.1.11.4 Dates Searched .......................................................................................... 53

1.1.11.5 Conducting the Search................................................................................ 53

1.1.11.6 Useful Techniques ("piggy back/forward" searching).................................. 54

1.1.11.7 Obtaining Full Copies.................................................................................. 54

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1.1.11.8 XPRX or PQR Derwent Abstracts ............................................................... 55

1.1.11.9 Considering and Culling the Documents..................................................... 56

1.1.11.10 Ending the Search..................................................................................... 57

1.1.11.11 Categorising the Citations and Grouping the Claims ................................ 57

1.1.12 Search Report and Notification Form Completion .................................. 59

1.1.12.1 Background Search Report and Notification Form Completion .................. 59

1.1.12.2 Completing the Search Report.................................................................... 60

1.1.12.3 Reporting..................................................................................................... 62

1.1.12.4 Fields Searched .......................................................................................... 66

1.1.12.5.1 Background Documents Considered to be Relevant ............................... 67

1.1.12.5.2 Citation Category ..................................................................................... 69

1.1.12.5.3 Citation of the Documents........................................................................ 70

1.1.12.5.4 Citation of URLs ....................................................................................... 72

1.1.12.5.6 Relevant Claim Numbers ......................................................................... 72

1.1.12.5.7 Family Member Identification ................................................................... 72

1.1.12.5.8 Date of Actual Completion of the Search ................................................. 73

1.1.12.5.9 Refund Due .............................................................................................. 74

1.1.12.6 Contents of Case File at Completion .......................................................... 75

1.1.13 Reissued, Amended or Corrected ISRs and ISOs ......................................... 76

1.1.14 Priority Document........................................................................................... 78

1.1.15 Foreign Patent Search Aids and Documentation.................................... 79

1.1.15.1 Background Foreign Patent Search Aids and Documentation.................... 79

1.1.15.2 Capri............................................................................................................ 79

1.1.15.3 Documentation ............................................................................................ 80

1.1.16 Assistance with Foreign Languages .............................................................. 80

1.1.17 Rule 91 Obvious Mistakes in Documents ...................................................... 81

1.1.18 Nucleotide and/or Amino Acid Sequence Listings .................................. 82


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1.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings ................. 82

1.1.18.2 Office Practice............................................................................................. 83

1.1.18.3 Summary..................................................................................................... 85

1.1.19 Annexes .................................................................................................. 86

Procedures for ordering full copies of citations ......................................................... 86

Annex S - Refund of search fees .............................................................................. 89

ISR quality checklist .................................................................................................. 94

Internet searching 1 .................................................................................................. 95

Obtaining full text from internet ............................................................................... 101

Search and retrieval of Japanese patents 1............................................................ 105

Guidelines for Searching and Retrieval of Japanese Patents on the Internet . 105

Search and retrieval of Japanese patents 2............................................................ 109

Search and retrieval of Japanese patents 3............................................................ 110

NPL searching of internet........................................................................................ 111

USPTO kind codes.................................................................................................. 114

1.2 International Type Searching......................................................................... 116

1.2.1 Procedural Outline - International Type Search ............................................. 116

1.2.2 Introduction International Type Searching ..................................................... 117

1.2.3 Classification and Search Indication .............................................................. 118

1.2.4 Unity of Invention ........................................................................................... 120

1.2.5 Subjects to be Excluded from the Search ...................................................... 121

1.2.6 Obscurities, Inconsistencies or Contradictions .............................................. 122

1.2.7 Abstract and Title ........................................................................................... 122

1.2.8 Search Report ................................................................................................ 122

1.2.9 Public Availability ........................................................................................... 124

1.3 International Examination .............................................................................. 124

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Procedural Outline - Written Opinion of the ISA and International Preliminary


Examination ............................................................................................................ 124

1.3.2 Introduction International Examination........................................................... 125

1.3.3 The Demand and IPRPII ................................................................................ 126

1.3.4 Timeframe for Demand and IPRPII................................................................ 129

1.3.5 First IPE action............................................................................................... 132

1.3.6 Response to Opinion .............................................................................. 135

1.3.6.1 Response to Opinion................................................................................... 135

1.3.6.2 Extensions of Time to Respond to Opinions ............................................... 136

1.3.7 IPRPII and Notification ................................................................................... 137

1.3.8 Completing ISO, IPEO and IPRPII Forms .............................................. 138

1.3.8.1 Front Page and Notification Application Details .......................................... 138

1.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs ........................ 142

A) Basis of Opinion for an ISO - Box I ............................................................. 142

B) Basis of Opinion for IPEOs and IPRPs - Box 1 ........................................... 143

1.3.8.3 Box II Priority............................................................................................... 145

1.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive &
Industrial Applicability.............................................................................................. 147

1.3.8.5 Box IV Unity of Invention............................................................................. 148

1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial
Applicability ............................................................................................................. 151

1.3.8.6.1 Novelty ..................................................................................................... 153

1.3.8.6.2 Inventive Step .......................................................................................... 155

1.3.8.6.3 Industrial Applicability............................................................................... 155

1.3.8.6.4 No Defects in Novelty, Inventive Step and Industrial Applicability ........... 156

1.3.8.7 Box VI Certain Documents Cited ................................................................ 156

1.3.8.8 Box VII Certain Defects............................................................................... 157

1.3.8.9 Box VIII Certain Observations..................................................................... 158

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1.3.9 General Considerations .......................................................................... 159

1.3.9.1 Article 19 or Article 34(2)(b) Amendments .................................................. 159

1.3.9.2 Formalities................................................................................................... 161

1.3.9.3 General Notes on Form Completion ........................................................... 161

1.3.9.4 Rule 91 Obvious Mistakes in Documents ................................................... 163

1.3.10 Actions by the PCT Unit ............................................................................... 164

1.4 Fiji Applications.............................................................................................. 165

1.4.1 Introduction .................................................................................................... 165

1.4.2 Completion Time and Priority......................................................................... 165

1.4.3 Initial Processing ............................................................................................ 166

1.4.4 Search Procedure .......................................................................................... 166

1.4.5 Search Report and Advisory Opinion............................................................. 167

1.4.6 Further Advisory Opinion ............................................................................... 169

1.4.7 Final Processing............................................................................................. 170

1.5 Thai Applications ........................................................................................... 171

1.5.1 Introduction .................................................................................................... 171

1.5.2 Completion Time and Priority......................................................................... 171

1.5.3. Initial Processing ........................................................................................... 172

1.5.4 Search Procedure .......................................................................................... 172

1.5.5 Search Report ................................................................................................ 173

1.5.6 Final Processing............................................................................................. 174

1.6 WIPO Searches............................................................................................. 175

1.6.1 Introduction .................................................................................................... 175

1.6.2 Completion Time and Priority......................................................................... 175

1.6.3 Initial Processing ............................................................................................ 175

1.6.4 Search Procedure .......................................................................................... 176

1.6.5 Search Report ................................................................................................ 178


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1.6.6 Final Processing............................................................................................. 179

1.6.7 Annexes .................................................................................................. 180

WIPO search request guidelines............................................................................. 180

WIPO search request.............................................................................................. 182

WIPO search request.............................................................................................. 184

1.7 GCC Searches .............................................................................................. 186

1.7.1 Introduction .................................................................................................... 186

1.7.2 Fees ............................................................................................................... 189

1.7.3 Completion Times and Priority ....................................................................... 189

1.7.4 Search Report or Search and Examination Report................................. 190

1.7.4.1 Initial Processing of a Request for a Search Report or Search and


Examination Report................................................................................................. 190

1.7.4.2 Novelty Search Procedure .......................................................................... 191

1.7.4.3 Search Report or Search and Examination Report Completion.................. 193

1.7.4.4 Final Processing of the Search Report or Search and Examination Report 194

1.7.5 Examination Report ................................................................................ 194

1.7.5.1 Initial Processing Examination Report ........................................................ 194

1.7.5.2 Examination Procedure............................................................................... 196

1.7.5.3 Examination Report Completion ................................................................. 199

1.7.5.4 Final Processing Examination Report ......................................................... 201

1.7.6 Methods of Treatment and GCC Patentability ............................................... 201

1.7.7 Allowable Claim Forms .................................................................................. 201

1.7.8 Non-Allowable Claim Forms........................................................................... 202

1.7.9 Budapest Treaty...................................................................................... 202

1.7.9.1 Micro-Organisms and Other Life Forms...................................................... 203

1.7.10 Common Traps Found in Completed Search & Examination Reports......... 203

1.8 Singapore Applications.................................................................................. 204

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1.8.1 Introduction .................................................................................................... 204

1.8.2 Requesting Translations of Citations ............................................................. 209

1.8.3 Applicant/Agent's File Reference ................................................................... 210

1.8.4 Completion Times, Priority and Apologies ..................................................... 210

1.8.5 Special Issues Relating to Medical and Biotechnology Cases....................... 213

1.8.6 Search Report......................................................................................... 217

1.8.6.1 Initial Processing Search Report................................................................. 217

1.8.6.2 Search Procedure ....................................................................................... 217

1.8.6.3 Fees ............................................................................................................ 222

1.8.6.4 Final Processing Search Report ................................................................. 222

1.8.7 Examination Opinion/Report ................................................................... 223

1.8.7.1 Initial Processing Examination Opinion/Report ........................................... 223

1.8.7.2 General Examination Procedure ................................................................. 224

1.8.7.3 Examination Opinion/Report Completion .................................................... 233

1.8.7.4 Final Processing Examination Opinion/Report............................................ 235

1.8.8 Search and Examination Opinion/Report................................................ 236

1.8.8.1 Initial Processing Search and Examination Opinion/Report........................ 236

1.8.8.2 Search and Examination Procedure ........................................................... 237

1.8.8.3 Search and Examination Opinion/Report completion ................................. 237

1.8.8.4 Final Processing Search and Examination Opinion/Report ........................ 238

1.8.9 Revocation/Reexamination ..................................................................... 239

1.8.9.1 Initial Processing Revocation/Re-examination Advisory Report ................. 239

1.8.9.2 Revocation/Re-examination Advisory Report Procedure............................ 240

1.8.9.3 Revocation/Reexamination Advisory Report Completion ........................... 241

1.8.9.4 Final Processing Revocation/Reexamination Advisory Report ................... 241

1.8.10 Opposed Amendments Advisory Report............................................... 242

1.8.10.1 Initial Processing Opposed Amendments Advisory Report....................... 242


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1.8.10.2 Allowability of Opposed Amendments Advisory Report Procedure .......... 243

1.8.10.3 Allowability of Opposed Amendments Advisory Report Completion......... 243

1.8.10.4 Final Processing Opposed Amendments Advisory Report ....................... 244

1.9 PCT Articles, Regs and Guidelines et al ........................................................... 244

1.10 Miscellaneous.............................................................................................. 244

1.10.1 Current Allocation of PCT Related Duties.................................................... 245

1.10.2 International Online Specialists.................................................................... 246

1.10.3 Authorised Officer ........................................................................................ 246

1.10.4 Minimum Levels of Responsibility ................................................................ 247

1.10.5 Examiners with Foreign Language Capabilities ........................................... 248

1.10.6 Current Status of APO as an RO ISA and IPEA .......................................... 250

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1.1 International Searching

1.1.1 Procedural Outline - PCT International


Search
1. Initial processing by PCT Unit

Job No. allocation

referral to the relevant Section

2. Allocate to search examiner and determine preliminary classification

3. Consider unity of invention

4. Consider excluded subject matter

5. Check abstract & figure

if no abstract

when to draft an abstract

when comment is invited

6. Check title

7. Prepare search statement and determine search strategy

8. Earlier search?

9. Order foreign patent abstracts through international on-line specialist and


perform PAIS search if screen based (this should be no later than a few days
from the receipt of the search copy by the ISA)

10. Search non-patent literature as required

Engineering Index (for electrical, mechanical)

Chemical Abstracts (for chemical)

on-line

printed

11. Search AU documents as required

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12. Order relevant non patent literature from library

13. Receive & search foreign patent abstracts

14. Peruse related art (piggy-back/forward or thread or stream)

15. List foreign documents requiring full copy

16. Consult concordance for preferred equivalents of XRPX or PQR type


abstracts

17. Consult Patent Family Member Queries page for family equivalents of SU or
JP abstracts

18. Order full documents from Exam Support & Sales

19. Assess which documents (incl AU) are to be cited

sort documents into some ranking of perceived relevance

cull least relevant documents and equivalent disclosures

retain foreign citations in file

obtain copy AU citations for file

20. Prepare search report and notification

assign citation relevance category marks using a "broad"approach to


categorise citations against groups of claims

no further analysis be pursued on documents identified as solely A


category

initiate family members annex

21. Receive & assess non patent literature full copies (use culling/sorting steps
and "broad" approach as appropriate)

22. Include non patent literature citations in search report

23. Consider comment on abstract

24. Attach search history details and names of three person team to
correspondence file.

25. Final examination actions on report, notification and file (this should be
accomplished in normal circumstances within 8 weeks for receipt of the
search copy by the ISA)

26. Refunds for earlier search


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27. Create Written Opinion of the International Searching Authority (ISO)

28. Final Processing by PCT Unit

1.1.2 Introduction

International - International Searching Patent Manual of Practice & Procedures

1.1.2.1 Introduction Background


The following procedures are supplementary to the PCT International Search and
Preliminary Examination Guidelines and are intended to facilitate an understanding
and application of the Guidelines by highlighting the essential steps to be taken by
examiners and by directing their attention to the relevant passages of the Guidelines,
PCT Articles, Rules and Administrative Instructions. A flowchart of typical
international application processing is available at the above link.

Note that the expanded numbering system PCT/AU/20xx/123456 and WO


20xx/123456 took effect from 1 January 2004, and in the case of Australia applies to
all official communications, publications and other official documents in respect of all
PCT application numbers and publication numbers whether the PCT application was
filed before or after that date. The citing of pre 2004 documents in the new format
extends to the citing of such documents in reports and opinions, even if the
document has been cited in an earlier opinion or report according to the old format.
However, the old numbering system will be retained for data held in the mainframe
computer (PATADMIN, etc) This applies even for applications filed from 1 January
2004.

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1.1.2.2 International Examination


Once having established the search report the examiner will then begin immediately
to prepare the ISO according to detailed procedures in relation to the written opinion
are set out in International Preliminary Examination. The ISO is carried out
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according to the same criteria which are used in international preliminary examination
by the International Preliminary Examination Authority (IPEA). If the applicant does
not demand international preliminary examination, the International Bureau (IB) will
convert the ISO to an International Preliminary Report on Patentability (Chapter I)
(IPRPI). For many PCT contracting States who do not have an examining capability
this examination report serves as the only examination report in relation to the
particular application. The ISO therefore serves an important role and the
examination must be of a high standard.

1.1.2.3 Introduction Procedures


The following procedures are to be used both where Australia (AU) is the receiving
Office (RO) for the international application to be searched or where the RO is
another Office such as New Zealand (NZ) and AU is the specified ISA.

The objective of an international search by an ISA is to discover relevant prior art. It


is very important that ISR's be of high integrity because they are made available to
the applicant before encountering the expense of entering the national phase in the
designated states, and because the various designated states will be relying to a
varying extent on the ISR before deciding on any grant. See general guidance on
searching. [Art 15(2) Rule 33.1(a) PCT/GL/ISPE/1 at para 15.01]

The PCT International Search and Preliminary Examination Guidelines describes the
nature of the international search in these terms [Art 15(4) Rule 33 PCT/GL/ISPE/1 at
para 2.02]:
The objective of the international search is to discover the prior art which is relevant
for the purpose of determining whether, and if so to what extent, the claimed
invention to which the international application relates is or is not novel and does or
does not involve an inventive step."
In principle, and in so far as possible and reasonable, the international search
should cover the entire subject matter to which the claims are directed or to which
they might reasonably be directed after they have been amended." [PCT/GL/ISPE/1
at para 15.21]

"No special search effort need be made for searching unduly wide or speculative
claims, beyond the extent to which they are supported by the description."
[PCT/GL/ISPE/1 at para 15.22]

Where a claim or claims clearly do not comply with PCT Art 6 or Rule 6 and in
particular are not supported by the description it is appropriate to limit or truncate the

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search as provided in 1.1.7 Claims Lacking Descriptive Support or Clarity,


Multitudinous Claimsive Support.

1.1.2.4 Extent of Search


An ISA must endeavour to discover as much of the relevant prior art as its facilities
permit, and must, in any case, have regard to what is known as minimum
documentation. The process of having regard to particular search material should
have as its first phase an assessment by the search strategy team (SST) [including
the search examiner] of the probability of finding highly relevant citations. Where the
SST concludes that this probability is low, it is open to the SST to decide not to
search that material.

The PCT International Search and Preliminary Examination Guidelines state:

The international search is essentially a thorough, high quality, search of the most
relevant resources, and the report serves to provide information on the relevant prior
art to the applicant, to the public .....and to the designated Offices and the
International Preliminary Examining Authorities." [PCT/GL/ISPE/1 at para 15.14]

"Nevertheless, it must be realized that, even though completeness should be the


ultimate goal of the international search, this goal may not be necessarily obtained
because of such factors as the inevitable imperfections of any classification system
and its implementation, and may not be economically justified if the cost is to be kept
within reasonable bounds. The examiner therefore considers the most relevant
search resources for the technology, including databases listed in the Search
Guidance Intellectual Property Digital Library and organise the search effort and
utilize the search time in such a manner as to reduce to a minimum the possibility of
failing to discover existing highly relevant prior art, such as complete anticipations for
any claims. For less relevant prior art a lower retrieval ratio can be accepted.
[PCT/GL/ISPE/1 at para 15.16]

Often various search strategies are possible that are relevant to the subject matter
of the application. The examiner should exercise judgement based on experience
and knowledge of the search resources, to select the search strategies most
appropriate to the case in hand, and establish the order in which various strategies
(i.e., classification places, databases, and other resources) are to be consulted
accordingly. This process should give precedence to the main technical field of the
invention, and to the search resources and strategies in which the probability of
finding relevant documents is highest. [PCT/GL/ISPE/1 at para 15.43]

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For an example Examiners should consider the independent claim(s) and the
inventive concept first when determining a search strategy. The search strategy
should also cover significant features defined in dependent claims or that the
application might be reasonably expected to be directed towards after amendment
taking into account the inventive concept of the application read as a whole and the
relevant common general knowledge in the art. This could result in searching other
classification areas or using alternative keywords.

If a significant feature is not forthcoming from the search, examiners should use their
judgement as a person skilled in the art to determine if continuing the search is
warranted. If it is, specific targeted keywords related to the missing feature should be
used.

Some examples of when additional searching is not necessary are set out in
Paragraph A13.13 of the PCT ISPE Guidelines. Namely:

i. where a technical feature known in a technical field is applied from its original
field to another field and its application therein would have been obvious to a
person skilled in the art;

ii. where a difference between the documents content and the claimed matter is
so well known that documentary evidence is unnecessary;

iii. where the claimed subject matter relates to the use of a known product, and
the use would have been obvious from the known properties of the product;

iv. where the claimed invention differs from the known art merely in the use of
equivalents that are so well known that the citation of documentary evidence
is unnecessary.

No special search should be made for features that are so well known that
documentary evidence seems to be unnecessary, however, if a handbook or other
document showing that feature is generally known can be found rapidly, it should be
cited. See Paragraph 15.24 of the PCT IPSE Guidelines.

Paragraph 15.27 of the PCT ISPE Guidelines states:

For claims characterized by a combination of elements (for example, A, B and


C), the international search should be directed towards the combination;
however, when searching classification units (see chapter 7) for this purpose,
sub-combinations, including the elements individually (for example, AB, AC,
BC and also A, B and C separately), should be searched in those units at the
same time. A search in additional classification units either for
subcombinations or for individual elements of the combination should only be
performed if this is still necessary for establishing the novelty of the element in
order to assess the inventive step of the combination.

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The PCT International Search and Preliminary Examination Guidelines state as


follows:

"The examiner carries out the international search, directing attention to any
prior art likely to have bearing on novelty or inventive step. In addition, the
examiner is encouraged to cite any prior art likely to be of assistance in
determining sufficiency of description through the whole of the field claimed,
see paragraphs 5.52 and 5.53 and the requirement that the claimed invention
be fully supported by the description, see paragraphs 5.54 to 5.58. The
examiner should also note any documents that may be of importance for other
reasons, such as documents putting doubt upon the validity of any priority
claimed, contributing to a better or more correct understanding of the claimed
invention, or illustrating the technological background; but the examiner should
not spend time in searching for these documents, nor in the consideration of
such matters unless there is a special reason for doing so in a particular case.
Documents which do not qualify as prior art because they post date the
claimed invention may nevertheless be cited to show a universal fact, such as
characteristics or properties of a material, or a specific scientific fact, or to
show the level of ordinary skill in the art."

The examiner may truncate a search, where appropriate:


Reasons of economy dictate that the examiner use appropriate judgement to
end the search when the probability of discovering further relevant prior art
becomes very low in relation to the effort needed. The international search
may also be stopped when documents have been found clearly demonstrating
lack of novelty in the entire subject matter to which the claims are directed,
apart from features the application of which would not involve an inventive step
and which are instantly and unquestionably demonstrable as being well known
in the field under consideration such that documentary evidence seems to be
unnecessary. [PCT/GL/ISPE/1 at para 15.57].

1.1.2.5 Minimum Documentation


The "Minimum Documentation" is set out in full in Annex A and can be summarised
as [Rule 34]:

the national patent documents issued in and after 1920 by:

the United States of America (US)

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the United Kingdom (GB)

France (including utility certificates) (FR)

the former Reichspatentamt of Germany and the Federal Republic Of


Germany (DE)

Switzerland (in French and German) (CH)

Japan (JP) where English language abstracts are available

the former Soviet Union (SU) where English language abstracts are
available

the Russian Federation

non-Convention patent documents from any other country which are in the
English, French, German or Spanish language and where these documents
have been sorted and placed at the disposal of the ISA. (Any such Spanish
language documents are only required to be searched to the extent that an
English language abstract is generally available.)

The only non-Convention patent documents which have so far been placed at
the disposal of the Australian Patent Office are those of Canada (CA) and
Austria (AT). The date on which the first of the Canadian documents was
received was 26 October 1976; a search is required to be made only back to
that document

the published international (WO) applications and regional patent documents


(eg. EP)

published items of agreed non-patent literature

Australian patent documents

1.1.2.6 Initial Processing by PCT Unit


Upon receipt in this Office international applications are forwarded to the PCT Unit
who will:

create a PCT search copy file and a home copy file

allocate an identification number under the PCT/AU annual series where AU


is the receiving Office (RO) or its equivalent for any other RO

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the search copy file is passed to a nominated examination branch officer for a
security check

perform a formalities check under Art 11 and Art 14. Discrepancies are
notified to the applicant using forms PCT/RO/103 and PCT/RO/106,
respectively. A check for missing material is included [Article 11,14 Rules 3, 4
and 11, inter alia]

enter the request details on the PCT data base

check for possible earlier searches by reference to Box VII of the request
form PCT/RO/101; if affirmative, the search file cover is flagged with a
"REFUND ?" sticker for later refund consideration. [Rule 41.1]

a search completion and written opinion date (being the later of 3 months
from the receipt of the search copy file by the ISA or 9 months from the
priority date) is established on the search copy file front cover; the search file
will not be forwarded to the ISA (and therefore the time to completion will not
commence) until the full international search fee is paid [Rule 42.1 Rule 23.1]

the home copy file is filed in the PCT Unit

a record copy is made and despatched to the IB

the search copy file is then passed to the on-line specialist for the
commencement of tracking under an AU Job No and allocation to a
section [Rule 23.1]
the applicant is notified of:

despatch of the record copy to the IB, using form PCT/RO/105

receipt of the search copy file by the ISA/AU, using form


PCT/ISA/202 [Rule 25.1]

any substitute documents filed later under Article 14 are forwarded to the
searching section.

Note: Where e.g. the New Zealand Patent Office was the RO the PCT Unit will only
create a search copy file, enter the details on a database, establish a completion
date, pass the file to the section and notify the applicant, IB and RO of receipt of the
search copy file. The other steps listed above should have already have been
performed by the RO (New Zealand Patent Office).

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1.1.2.7 Examination Section Procedures


Upon receipt in the section a supervising examiner (or nominated section officer) will
allocate the case to a suitable search examiner

Allocation to a search examiner must be in accordance with:

the examiner's technical expertise, examination experience, foreign language


capability and overall competence.

previous section or other section experience; section records (which should


include a title/applicant/classification/comment on the nature of the invention
as well as the basic application number, dates and examiner information)
could show an appropriate examiner or reveal an earlier search omitted from
the request form or previous relevant searches in the same, or a near, IPC
mark or for the same applicant in the same field. If necessary a PATINDEX
check by an on-line specialist could assist in identifying relevant earlier
searches or examiners.

1.1.2.8 Searching Examiner


It is not appropriate to specify a rigid sequence for the procedural steps of the
search. In general the searching examiner (through the responsible examiner if the
searching examiner is not the responsible examiner) is responsible for the conduct of
the search in the most efficient manner that the circumstances of each case allows.

Any PAIS searching should, where practicable, be carried out and/or any abstracts
from the Exam Support & Sales should be ordered, within no more than a few days
of the receipt of the search copy by the ISA.

The searching examiner must consider unity of invention at the earliest possible
opportunity in order to meet the time limits imposed by the PCT. Early
determination will also assist search strategy consideration. [Rule 42.1]
PCT applications should be given a priority sufficient to enable our obligations under
the Customer Service Charter to be met, or, failing that, our obligations under the
PCT as an ISA.
The "Date of the actual completion of the international search" will be the day on
which the responsible examiner completes or, as the case may be, concurs with the
search report and should, under normal circumstances, be within 8 weeks of receipt

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of the search copy by the ISA and in all cases within 3 months of this receipt. (Refer
to Annex T for apology time limits.)

1.1.2.9 Other Considerations


Under Rule 40.2(b) any fees payable for additional searches are to be paid directly to
the ISA and not through, or to, the RO. Consequently eg. for NZ searches payment is
directly to IP Australia. Any contact with eg. NZ about the payment of additional fees
(or any other matter relating to a search) will be via the OIC PCT Unit. [Rule 40.2(b)]

So far as Australia is concerned, while it is in the international phase a PCT


application effectively proceeds as both an application for a patent and for a patent of
addition. An indication of the form or form(s) of protection in respect of which a PCT
application is made is only effective when the indication is given to a designated
Office when performing the acts required for national phase entry (although reference
to a parent application can be made in the Request). Our systems do not recognise
an application as being for one or another form of protection until entry into the
national phase has occurred. [Rule 49bis].

1.1.2.10 Copending Applications


Copending Applications, Including Those Filed on the Same Date

According to PCT International Search and Preliminary Examination Guidelines


(Chapter 11,Paragraph 11.10.10), the PCT does not deal explicitly with the case of
co-pending international applications of the same date. However, it is an accepted
principle in most patent granting systems that two patents shall not be granted to the
same applicant for one invention. It is permissible to allow an applicant to proceed
with two international applications having the same description where the claims are
quite distinct in scope and directed to different subject matter. However, in the rare
case in which there are two or more international applications from the same
applicant designating the same State or States and the claims of those applications
have the same priority date and relate to the same invention (even though they may
not necessarily claim that invention in identical terms), each conflicting application
should (as long as it has already been published) be cited in the international search
report and identified with a L category symbol as raising possible double patenting

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issues. A notification, to the applicant alone, is given in the case where his
international application designates a State in which he proceeds with a national
application having the same priority date and relating to the same invention as the
said international application, if the examiner is aware of this situation. However, no
such notification should be given where two applications (international or otherwise)
of the same priority date and relating to the same invention are received from two
different applicants.

1.1.3 Search Allocation and Preliminary Classification

International - International Searching Patent Manual of Practice & Procedures

1.1.3.1 Allocation
An international search must be allocated as quickly as possible to a search
examiner who is capable of completing the search within, or as near as possible to
within, the target time. (See Annex T for apology time limits.) Provided that the
quality of the search is not compromised, the overriding consideration in allocating
the search is achieving the target time, rather than allocating the search to someone
who it might be said to belong to on the basis of its classification. The preliminary
classification must also be determined as quickly as possible, in accordance with the
latest IPC edition. Allocation and preliminary classification should ordinarily
have been accomplished within one or two days of the search file having been
processed by the International Sort Examiner(s).

If at any point it appears that this time frame is not going to be met, the situation must
be brought to the attention of a Sort Examiner whose role it will be to facilitate the
allocation of the case to a search examiner. If despite the intervention of a sort
examiner the one or two days deadline will still not be achieved, the matter should be
referred to an IPC Classification Arbiter. The Arbiter will investigate the cause(s) of
any hold-up and determine how best to proceed, having particular regard to
paragraph 15.21 and 15.22 of the PCT International Search and Preliminary
Examination Guidelines.

Even if the search examiner is competent to carry out the search and/or classification
in relation to a search area (whether first or secondary IPC) in another section, they
should consider including an examiner from the other section in the SST for
guidance, and should certainly do so if they have serious doubts. The aim is to carry

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out a search so as to produce the best result for the applicant in a way which is the
most efficient for IP Australia. When seeking guidance, the search examiner should,
in the interests of efficiency, at least make suggestions as to any possible
classification marks.

The same principle applies where the claims of an application span multiple
technologies (perhaps involving multiple inventions), some of which are the
responsibility of one or more other sections. From the outset the other section(s)
should be consulted in the classification and searching of the international
application, and examiners from the other section(s) should be considered for
inclusion in the 3-person search strategy team (see 4.2.6.1.6 Search Strategy (three
person) Team).

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1.1.3.2 Preliminary Classification


The search examiner should give a high priority to the task of preliminarily classifying
a case so that the determination of the search strategy by the SST is not delayed. If
another section is involved in the classification, it should accord the case a similar
priority. A final determination of the classification can be made at a later stage, but
must at the latest be made at the time of preparing the international search report.

When acting as an ISA this Office assigns obligatory "invention information" IPC
classification symbols in accordance with the rules as set forth in the Guide to the
IPC and in the IPC itself (Edition of the IPC in force at the time of the assignment).
Non-obligatory IPC classifications (such as the optional IPC indexing codes) are not
applied.

Note: At the moment there is no procedure for capturing the international application
number and IPC marks on the computer, since the current forms and procedures do
not accept international application numbers in the format PCT/AU2004/123456 (as
applying from 1 January 2004) or PCT/AU91/12345 (as applying before 1 January
2004). The relevant data associated with these applications will eventually be
captured from the OPI pamphlet and put on the computer so that the PATINDEX
database will have the publication number recorded on them.

1.1.4 Unity of Invention


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International - International Searching Patent Manual of Practice & Procedures

1.1.4.1 Unity of Invention Background


Where the ISA considers that the international application does not comply with the
requirement of unity of invention, it may invite the applicant to pay additional search
fees in order that inventions other than the first mentioned invention in the claims
may be searched. [Article 17(3)(a) PCT/GL/ISPE/1 Chapter 10]

Unity of invention must be considered at the earliest possible opportunity. The


consequences of this step are considerable due to the large cost and time associated
with PCT searching as well as the time limit imposed by the PCT for completion of
the search report. If it is not clear that the claims lack unity after considering the
issue for a minimal period of time, such as 15 minutes, then it will generally be more
efficient for the search to proceed on the basis that there is no lack of unity. Further
time spent conclusively determining whether or not there is lack of unity is likely to be
counter-productive. However, if lack of unity is not raised in appropriate
circumstances, an unnecessary cost is imposed on the Office if significant additional
searching effort results. Also, if lack of unity is raised when it should not have been,
there may be insufficient time later to complete the required search; and if the issue
is raised incorrectly the Office may not be able to abide by the original finding of lack
of unity and be required to refund any extra fees paid.

Lack of unity must be determined solely from the language of the claims (as properly
construed) and, where appropriate, by having regard to relevant prior art. In
particular, the size of the search required or the number or nature of classification
areas that need to be searched is not relevant to the determination of lack of unity;
this is only relevant to whether an invitation to pay extra fees should be issued once
lack of unity has been established. If a large search is required, careful attention
should be given to the search strategy adopted.

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1.1.4.2 Determining Lack of Unity

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The international application must relate to one invention only, or to a group of


inventions so linked as to form a single general inventive concept. [Rule 13.1]

The basic test to be applied in determining whether or not there is unity of invention
is set out in PCT Rules 13.2 to 13.3. In applying these rules, the guidelines and
examples in the in Chapter 10 of the PCT International Search and Preliminary
Examination Guidelines are to be followed. [Ad. Inst. 206]

Unity of invention is present between a group of claimed inventions only when there
is a technical relationship among those inventions involving one, or more of the same
or corresponding special technical features. The expression "special technical
features" means those technical features that define a contribution which each of the
claimed inventions, considered as a whole, makes over the prior art. [Rule13.2]

The determination of unity of invention is made on the contents of the claims as


interpreted in light of the description and drawings (if any).

Examples 9 and 14 paragraph 10.28 and 10.33 of the PCT International Search and
Preliminary Examination Guidelines, respectively, illustrate some instances of
corresponding special technical features.

A useful starting point to assess unity of invention is to consider what is the problem
that the application addresses. This leads on to what is the way that the application
solves that problem. The general solution is probably the general inventive concept.
If that concept is reflected by the technical features in all the claims then, prima facie,
unity of invention may exist. If the technical features also define a contribution which
each claimed invention makes over the prior art, then they are the "special technical
features" in the terms of Rule13.2 and unity of invention is present. Note that the
general concept can be evident indirectly, i.e. the form of the invention claimed takes
advantage of, or relies on, the general concept.

The determination of unity of invention is made regardless of whether the inventions


are claimed in separate claims or as alternatives within a single claim. [Rule 13.3]

Where a claim contains distinct embodiments which are not linked by a single
general inventive concept, the objection as to lack of unity of invention should be
raised. [PCT/GL/ISPE/1 at para 10.09]

Unity is considered in the first instance, only in relation to the independent claims. If
the independent claims satisfy the requirements of unity of invention and avoid the
prior art then no unity problem will arise in relation to any of the dependent claims.
Where an independent claim does not avoid the prior art then the inventive link
between all the dependent claims must be considered carefully and an objection of
lack of unity a posteriori (that is, arising only after assessment of the prior art) taken if
applicable. [PCT/GL/ISPE/1 at para 10.06]

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Where the special technical feature is known, then that feature cannot make a
contribution over the art. It is then necessary to attempt to reformulate the problem
and reassess the special technical feature. If the special technical feature clearly
lacks an inventive step compared to the prior art, then the same conclusion follows.

Lack of unity of invention should be based on sound reasons and be raised in clear
cases. Care should be exercised in not raising it based on a narrow, literal or
academic approach. [PCT/GL/ISPE/1 at para 10.04]

1.1.4.3 Combinations of Different Categories of


Claims
Paragraph 10.12 of the PCT International Search and Preliminary Examination
Guidelines sets out certain combinations of claims of different categories that are
permissible in the same international application as having unity of invention. For
example, independent claims to a product, a process specially adapted for the
manufacture of the product and a use of the product are allowed.

A process is specially adapted for the manufacture of a product if it inherently results


in the product. An apparatus or means is specifically designed for carrying out a
process if its contribution over the prior art corresponds to that of the process.

Examples 1 to 7 in paragraph 10.20 to 10.26 of the PCT International Search and


Preliminary Examination Guidelines relate to claims of different categories while
examples 8 to 17 in paragraph 10.27 to 10.36 deal with claims of the same category.

In applying the guidelines specially adapted and specifically designed are not to be
interpreted as requiring that the scope of the subject matter of claims of different
categories be coextensive. For example, for claims directed to a process and an
apparatus "specifically designed" to carry out that process, it is permissible for the
apparatus to be also capable of being used for carrying out another process and that
the process could also be carried out using an alternative apparatus.

1.1.4.4 Markush Practice


A Markush claim is a claim that defines alternatives. Markush claims can be either
chemical or non-chemical, provided they amount to a claim to alternatives. Thus a

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claim to a list of compounds identified by name or a generic formula are equally


regarded as Markush claims.

Paragraph 10.37 to 10.51 of the PCT International Search and Preliminary


Examination Guidelines considers unity of invention and Markush claims and the
practice described is illustrated in examples 18 to 31.

For Markush claims, the requirement of a technical interrelationship and the same or
corresponding special technical features, as defined in Rule 13.2, are to be
considered to be met when the alternatives are of a similar nature.

When considering a Markush claim for chemical compounds, it is necessary for all
alternatives to have a common activity or property. In addition, it is only necessary
for there to be a "significant structural element shared by all of the alternatives", to
establish unity of invention. (The important thing to note is that it is not necessary for
this "significant structural element" to be novel).

When determining whether there is a common property shared by the alternatives,


the property should be defined sufficiently broadly that all of the claimed members
possess the property. If the property is defined too narrowly, then the claim will
inevitably lack unity.

Examples 18 to 31 in paragraph 10.37 to 10.50 of the PCT International Search and


Preliminary Examination Guidelines provide some assistance in determining if a
common "significant structural element" exists for a chemical structure containing
alternatives.

In determining unity of invention for a Markush claim directed to chemical compounds


in an international application, there is an alternative to the "significant structural
element shared by all of the alternatives" for establishing unity. This is that all the
alternatives belong to a recognised class of chemical compounds in the art to which
the invention pertains, but of course it is still necessary for all the alternatives to have
a common activity or property.

When determining whether a group of chemical substances belong to a recognized


class, the class must be one in which there is a reasonable expectation that the
members will behave in the same way, in the context of the invention. However, the
nature of the class should be consistent with scientific logic, and not merely a
restatement of the common property. For instance, a group of enzymes that were
isolated from a single organism would not be properly regarded as a class based on
the organism of origin. However, if all of the enzymes also had a common or related
activity, that could be the basis of a class.

The Markush concept can also be applied to a claim involving mixtures of chemicals
where the components of these mixtures are selected from particular groups. In

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example 23 the mixtures of herbicidal agents A and B failed this "recognised class of
chemical compounds" test because the "B" group herbicides represented a plurality
of classes of compounds.

1.1.4.5 Intermediate and Final Products in


Chemical Applications
The term "intermediate" includes both intermediate and starting products that are
used to produce the final products.

Paragraph 10.45 of the PCT International Search and Preliminary Examination


Guidelines refers to the case of intermediates and final products. See examples 26 to
31.

When considering claims to intermediate and final products two conditions need to
be fulfilled for unity of invention to exist:

the intermediate and final products have the same essential structural
element, in that either:

the basic chemical structures of the intermediate and the final


products are the same, or

the chemical structures of the two products are technically closely


interrelated, the intermediate incorporating an essential structural
element into the final product.

the intermediate and final products are technically interrelated, this meaning
that the final product is manufactured directly from the intermediate or is
separated from it by a small number of intermediates all containing the same
essential structural element.

Guidance in the interpretation of the above may be obtained from examples 26-31. In
particular, the difference in approach between national and international practice is
illustrated by example 27, when this is compared with the decision in Re Application
by Hoechst Aktiengesellschaft (No 2) 11 IPR 433.

In this decision a non-cyclic intermediate which could be changed into the final
product by a simple cyclisation reaction was held to be directed to a different
invention than the final product.

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1.1.4.6 Biotechnological Inventions


The same principles and guidelines should be applied to biotechnological inventions
relating to multiple nucleic acid or peptide sequences. In particular, paragraphs
10.52 to 10.59 of the PCT International Search and Preliminary Examination
Guidelines provide examples of practice where applications claim multiple nucleic
acid or peptide sequences.

Examiners should note that the mere presence of multiple sequences is not
sufficient to establish that unity of invention is lacking

Applications claiming multiple nucleic acid or peptide sequences must be assessed


to determine whether or not a special technical feature exists which some, or all, of
the claimed sequences share. While there will be circumstances in which unity of
invention will be lacking, equally there will be circumstances in which multiple
sequences will be a single invention.

Examiners should also be aware of the potential applicability of Markush practice to


applications claiming sequences and should ensure that this approach is taken into
account when assessing unity in such cases.

1.1.4.7 Single General Inventive Concept


For there to be unity of invention, claimed inventions need to be linked by a single
general inventive concept. This requirement means that more than simply some link
is needed between a group of inventions claimed. There must be either a common
technical problem or at least, if there is more than one technical problem, there must
be one single technical concept behind the solutions of these different problems (see
eg. EPO decision case W0009/93). [Rule 13.1]

Thus in considering whether unity exists, the technical features of the inventions
need to be assessed as to the contribution they provide. The possible effects of the
various inventions need to be considered to determine whether they are technically
connected and thus form a single general inventive concept. Reference to the
description in the application will assist in determining the problem to be solved or the
effect to be achieved and thus aid in the determination of the inventive concept and
whether each invention is directed thereto. Any acknowledged prior art in the
description may aid in determining the problem. (See eg. Fibre Fleece OJ EPO

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4/1993, 225; [1993] EPOR 515 and Cervical Punch/WISAP OJ EPO 4/1994, 239;
IIC Vol 25 No.6/1994, 906).

A single inventive concept may be revealed in features common to different


teachings expounded individually in the same application. A teaching may
encompass not only the immediate subject-matter representing the solution to the
problem as defined in the relevant claim, but also its technical consequences which
are expressed as effects. Any subject-matter is defined by structural features and
the relationship between them. The relevant effects, ie. the outcome or results
achieved by the invention as claimed, will usually be apparent from the problem as
stated.

A single general concept may therefore be said to be present only if, at least, a
partial identity exists among the teachings in an application deriving from the
structural features of the subject-matters claimed and/or the outcome or results
associated with those subject-matters.

The subject matters referred to in 1.1.4.3 Combinations of Different Categories of


Claims, are examples embodying a single general inventive concept. In one respect
the partial identity between the product and its use derives from the structural
features of the product, and in another respect the partial identity shared by the
product and the process specially adapted for its manufacture derives also from the
product which is to be considered as the effect or result of this process.

(See Artificial Hip Joint/DRAENERT OJ EPO 8/1991, 438; [1991] EPOR 516 at
point 3.2).

A group of features common to claimed inventions may form a single general


concept, but if this group is known from the prior art then on its own it does not form a
single general inventive concept as required by Rule 13.1. (See eg. Cervical
Punch/WISAP (supra)). [PCT/GL/ISPE/1 at para 10.04]

1.1.4.8 A Priori and A Posteriori Lack of Unity


The determination of lack of unity of invention may arise from two situations. In one
situation lack of unity may be directly evident a priori, that is, before considering the
claims in relation to any prior art. Alternatively, lack of unity may only become
apparent a posteriori, that is, after taking (at least some) prior art into consideration.
[PCT/GL/ISPE/1 at para 10.03]

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The determination of a priori lack of unity is independent of any knowledge of the


relevant prior art. Thus respective inventions claimed need to be assessed to
determine whether they each involve one or more of the same or corresponding
special technical features. If they include one or a group of such features then prima
facie the inventions will possess unity a priori.

For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a


priori as there is no subject matter common to all claims. In the case of independent
claims to A + X and A + Y, unity of invention is present a priori as A is common to
both claims. However, if it can be established that A is known, there is lack of unity a
posteriori, since A (be it a single feature or a group of features) is not a technical
feature that defines a contribution over the prior art.

The example given at Annex E.2 illustrates an a priori lack of unity situation. So too
does para 10.03 of the PCT International Search and Preliminary Examination
Guidelines.

Where, as in the example above, two inventions under consideration are of the form
A + X and A + Y, in considering lack of unity a priori, either the description in the
specification or the manner of claiming (such as a two-part claim) may indicate that
the common feature A does not on its own make any technical contribution to the
inventions. For example, if A represents a feature that the specification indicates as
being prior art or known, or would otherwise be understood by a skilled person to be
well known in the art, then it would not possess the characteristic of a "special
technical feature" per PCT Rule 13.2.

As an illustrative example of the last alternative in the previous paragraph, the


feature A may represent a single feature (such as 'an adjustable chair') or a group of
features (such as 'an adjustable chair having a movable back rest'). In considering
lack of unity a priori, either form of feature A would (today) be recognised as well
known, or at least be seen as generic in the art, and thus not on its own qualify as a
special technical feature. Thus lack of unity a priori could be taken in this situation
with reasons given for considering the feature as well known or generic. If there is
any reasonable doubt that feature A is known or generic, then material showing that
it is should be identified and lack of unity a posteriori taken based on that material.
(See EPO decision case W0038/90 for an example).

The above example assumes that features X and Y are not closely technically related
whereby the respective inventions do not otherwise embody the same general
inventive concept.

A determination of lack of unity a posteriori can arise where relevant independent


claims have features in common but those features appear not to be novel given the
prior art, thus leaving the claims without a single general inventive concept.
[PCT/GL/ISPE/1 at para 10.08]
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A determination of lack of unity a posteriori can also arise with dependent claims in
an application where the prior art shows a presumption of lack of novelty or inventive
step in an independent claim to which they relate. This can follow from the finding for
the independent claim if there is no technical relationship left over the prior art among
the claimed inventions involving one or more of the same or corresponding special
technical features, thus leaving two or more dependent claims without a single
general inventive concept.

In order to raise an objection of lack of unity a posteriori the examiner needs to prove
that the common feature(s) or claim is not novel or does not clearly involve an
inventive step; for example, by citing relevant patent specifications, journals or
textbooks. The invitation to pay additional fees needs to clearly indicate the basis for
concluding why the common feature lacks novelty or an inventive step

The example given at Annex E.4 illustrates an a posteriori lack of unity situation as
do paras 10.08 and 10.57 of the PCT International Search and Preliminary
Examination Guidelines.

In considering the prior art for lack of unity a posteriori no account should be taken of
subject matter disclosed in any application or patent whose application date was later
than, but whose filing date or claimed priority date was earlier than, the international
filing date of the international application in question.

1.1.4.9 Issuing the Invitation to Pay Additional


Search Fees
An invitation to pay additional search fees is not automatically issued when lack of
unity is found. If it is possible to complete the search and produce an ISO for both or
all inventions with minimal additional search effort then an invitation should not be
issued. As a guide, if the extra work entailed in searching for and examining an extra
invention is estimated to be more than about 3 hours, an invitation should be issued.
Common occurrences where this is likely to arise are [PCT/GL/ISPE/1 at para 10.75
et seq]:

the different inventions require a search in different IPC sub-groups (or


search areas) which are of significant size.

the different inventions, while requiring the search to be carried out in the
same search area, are not sufficiently close in subject matter to avoid
significant additional effort in searching them.

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the claiming structure (that is, the number of independent claims and the
manner of appendancy) is such as to require the expenditure of significant
additional effort in examining them.

It may not always be necessary to request additional search fees when lack of unity
is found a posteriori, such as when most of the search has already been done.
However, where documentary evidence can be quickly located (eg. in the Australian
search material) which establishes the lack of novelty, and it is otherwise justified in
light of the above, an invitation to pay additional fees may be considered.

Where it is considered that an invitation to pay additional search fees should issue,
the examiner will complete form PCT/ISA/206 and submit the completed form and
case file to the supervising examiner who will, if in agreement, authorise the invitation
as "Authorised Officer". The form is then sent to the PCT unit for mailing and a copy
placed on file. The time limit for a response to an invitation is one month. [Rule 40.1]

The invitation to pay additional search fees must be accompanied by a logically


presented, technically reasoned statement of the basic considerations behind the
finding of lack of unity. Other than in the circumstances referred to in 1.1.4.10
Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity it is
not sufficient to merely list the inventions contained in the application if the applicant
cannot infer from this list alone that the inventions do not relate to a single inventive
concept (see Heat Exchanger/SCHICK OJ EPO 2/1987, 63, and other subsequent
decisions in the EPO). The applicant must be fully informed of the
considerations that have led to the decision that there is lack of unity see
1.1.4.14 Reported Decisions. [PCT/GL/ISPE/1 at para 10.78]

The explanation should also include the basis for the number of additional search
fees invited and, where applicable, indicate which inventions can be searched with
another without requiring a separate search fee.

As a guide to the level of explanation required, the reason for lack of unity should be
clear solely by reference to the relevant claims and the explanation. If lack of unity is
raised a posteriori, the explanation must include reference to the relevant citation(s).
It should be noted that the space provided on form PCT/ISA/206 for the explanation
will generally be inadequate and a supplementary sheet will be necessary.

Annex E illustrates the level of detail required.

Paragraph 10.20 of the PCT International Search and Preliminary Examination


Guidelines also shows a completed example of form PCT/ISA/206.

Generally, having issued the invitation to pay additional search fees, the search is to
be conducted (or continued) in respect of the invention first mentioned in the
claims.[Article 17(3)(a)]

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However, where under the procedure of 1.1.4.10 Unsupported, Unclear, Long and/or
Complex Claim Sets with Clear Lack of Unity, the applicant has asked that an
invention other than the first mentioned invention should be searched, the search
may proceed on that basis. Searches of any other identified inventions should not
proceed until an additional fee or fees have been paid.

In all cases the search report must clearly indicate the parts of the application that
were and were not searched.

Note: The guidelines in para 10.76 of the PCT International Search and Preliminary
Examination Guidelines suggest that the invitation to pay additional search fees be
accompanied by a partial search report in relation to the invention first mentioned in
the claims. This is not current Office practice and the procedure outlined in the
above paragraphs should be followed.

If additional fees are paid in respect of one or more of the further inventions the
additional searches and examinations are to be arranged and completed as soon as
possible. Where the additional fee or fees are paid outside the time provided for in
the invitation, the case is to be referred to the supervising examiner for consideration
of the applicability of Article 48 of the PCT or the appropriateness of resetting the
time allowed in the invitation, before any additional searches and examinations are
commenced. Subject to this, an additional search and examination is only to be
conducted if the fees are paid within the time allowed; fees paid outside this time are
refunded (Fuel Products/LUBRIZOL OJ EPO 5/1988, 182).

1.1.4.10 Unsupported, Unclear, Long and/or


Complex Claim Sets with Clear Lack of Unity
Where it is apparent that only one general inventive concept is described and lack of
unity arises merely because of claims that are not supported by the description
and/or are not clear and concise, the procedures in Claims Lacking Descriptive
Support of Clarity, Multitudinous Claims are to be followed. In these circumstances it
will generally not be necessary to issue an invitation to pay additional search fees but
the technical lack of unity may be noted in the search report as in Completing the
Search Report [PCT/GL/ISPE/1 at Chapter 9, para 9.34]

In other cases it will be necessary to address lack of unity but, because of the nature
and complexity of the claims, there is a risk that the applicant will not want the first
mentioned invention to be searched and the task of preparing the invitation will be

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very time consuming and ultimately wasted if the applicant does not wish to pursue
additional inventions identified.

Consequently, in these situations, examiners should issue an abbreviated invitation


to pay additional fees using form PCT/ISR/206 and simultaneously invite comment
from the attorney/applicant on their findings, including which invention(s) they would
like searched, and whether they require a more detailed invitation to be issued.

Where the applicant indicates with the set period disagreement with the finding on
unity, indicates that that fees will be paid under protest or otherwise that a detailed
invitation is required, a comprehensive invitation should be issued on form
PCT/ISR/206 fully addressing any issues raised by the applicant or their attorney and
resetting the time for response.

Procedure to follow:

The examiner, in consultation with their supervising examiner, prepares an


abbreviated invitation using form PCT/ISA/206. Rather than the detail
required by Issuing the Invitation to Pay Additional Search Fees this will
merely list the inventions identified in the claims eg:

In summary, the International Searching Authority has found that there are
multiple inventions reflected in the claims, including:

1. Claims 1-11, 50-78 directed to the connection of a tube sheet to the header
in a solar collector module;

2. Claims 12-17 directed to the attachment of a tube sheet and header to an


insulated substrate in a solar collector module;

3. Claims 17-36 directed to a tube sheet attachment clip; and

4. Claims 37-49 directed to a header flow restriction element.

The examiner or supervising examiner telephones the attorney/applicant to


advise of the findings in relation to unity and that the ISA intends to issue an
invitation to pay additional fees. If the attorney wishes to immediately discuss
the matter in detail, the examiner should summarise the issues and note the
comments made and may proceed to issue either the abbreviated invitation or
alternatively to add further reasoning to address the comments made,
including a request that the invitation be comprehensive. A file note should be
made in relation to all communications with the applicant or attorney.

If the attorney/applicant is unable to address the matter immediately they


should be informed that the invitation for additional fees will issue with an
informal invitation to comment on the finding of lack of unity with a 7 day time

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limit. This invitation is to be prepared using form PCT/ISA/224 in accordance


with Annex E.5 to this part (using PERP code T19).

The finalised invitation to pay additional fees is to be left in the Invitation to


Pay Additional Fees in-tray and will be faxed to the attorney by the PCT unit.
If an informal invitation to comment is produced, it should be attached to the
front of the invitation for additional fees.

A search in relation to the first mentioned invention should generally not


commence until comments have been received or, where appropriate, the 7
day period for comment has expired. Extensions of the period to comment will
generally not be granted. However, if the applicant or attorney clearly requires
further time to comment, for example, because the applicant is uncontactable
and the attorney is unable to proceed without instruction, a further period may
be allowed but the total period for comment should not exceed 14 days
unless in exceptional circumstances.

Where comments are received to the effect that:

no additional fees will be paid - the search should proceed on the


basis of the first mention invention (unless the applicant indicates
otherwise - see below)

there is general agreement with the finding on lack of unity and that
additional fees will be paid proceed to search the first mentioned
invention but do not commence a search in relation to other inventions
until the additional fees are paid.

the applicant disagrees with the finding and will pay additional fees
under protest or otherwise requests a formal invitation - Issue a further
comprehensive invitation on form PCT/ISA/206 in the usual way but
addressing as appropriate any relevant submissions made in the
applicants comments. The time for response should be reset.

the search should be conducted on an invention other than that first


mentioned in the claims - The search may proceed on that basis
assuming that a search of the first mentioned invention has not
commenced.

In all cases Box III of the search report should clearly identify the invention(s)
searched and, if excluding the first mentioned, that this was at the request of
the applicant. For example

No required additional search fees were timely paid by the applicant.


Consequently, this international search report is restricted to the invention
covered by claims Nos.: 10-20, at the request of the applicant.

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1.1.4.11 Payment of Additional Search Fees


Under Protest
An option available to the applicant is to pay the additional search and examination
fees under protest. The additional fee is paid and should be accompanied by a
reasoned statement explaining why the applicant believes that the requirements of
unity of invention are fulfilled and addressing the reasons set out in the invitation to
pay additional fees. [Rule 40.2]

Where a fee is paid under protest, the case should be searched and reported on in
respect of the additional inventions. When completing the ISR the examiner should
complete Box 3 on the first page of the Notification of Transmittal Form
(PCT/ISA/220) and check the box "no decision has been made yet on the protest; the
applicant will be notified as soon as a decision is made". After completing the report
the casefile should be forwarded to the PCT unit. Examiners should also include a
file note about how much work was involved in the additional search and provide a
paragraph explaining whether or not they agreed with the protest and why.

The PCT unit will then forward the case to the Deputy Commissioner with
responsibility for the section where the protest occurred. The DC will arrange for the
protest to be reviewed by an independent supervising examiner. Based on this
review and the examiners comments, the DC will decide whether the applicants
protest should be upheld.

A protest may be upheld and the fees refunded (fully or in part), for several reasons
including:

that, having regard to the facts of the case and the PCT Rules, there is no
lack of unity,

the invitation fails to give either sufficient or substantially correct reasons for
the finding of lack of unity and the lack of unity is not manifestly obvious from
the claims themselves

that the amount of the additional fees, in the circumstances, is excessive.

It is not currently Office practice to charge a fee for examination of the protest. Rule
40.2(e)

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1.1.4.12 Completing the Search Report


The international search report is completed so as to clearly establish the extent of
the search actually performed. Where lack of unity has been found, check box 3 of
the first sheet and Box II or III of the search report is to be completed, irrespective of
whether an invitation to pay additional search fees has issued. See 1.3.8.5 Box IV
Unity of Invention, in regard to the completion of the ISO in respect of lack of unity.
[Rule 43.7]

The search report must indicate the separate inventions present in the claims,
whether additional search fees were requested and paid, and which claims were
searched. It should also indicate whether any additional search fees were
accompanied by a protest.

See Annex F for examples of search reports for the situation where unity of invention
is lacking.

1.1.4.13 Time for Completing the Search Report


The international search report should, under normal circumstances, be established
within 8 weeks (see Annex T for apology time limits) of receipt of the search copy by
the ISA but in all cases within 3 months from the receipt of the search copy or 9
months from the priority date, whichever time limit expires later. The final date for
establishing the report should be strictly adhered to regardless of the need to conduct
additional searches pursuant to the applicant paying additional search fees. [Rule
42.1]

1.1.4.14 Reported Decisions


The following reported decisions from the European Patent Office (EPO) may offer
some guidance when considering issues of unity of invention or in explanations
needed in an invitation to pay additional search fees:

Copolycarbonates/BAYER OJ EPO 8/1982, 306

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No lack of unity where new chemical end products, processes for their preparation,
and new intermediates for these end products are technically interconnected and are
integrated into a single overall inventive concept by being oriented toward the end
products.

Benzyl Esters/BAYER OJ EPO 7/1983, 274

No lack of unity between new low-molecular end products and new low-molecular
intermediates if the groups of intermediates prepared and orientated toward the end
products are technically closely inter-connected with the end products by the
incorporation of an essential structural element into the end products.

Insulating Powder/MINNESOTA OJ EPO 6/1988, 211; [1988] 5 EPOR 329

Unity between a claim to a mixture, and a claim to one essential component of that
mixture or a narrowly defined version thereof.

Caterpillar Tractor Co v Comm Pats 231 USPQ 591

Interpretation of (former) PCT Rule 13.2(ii) and "specifically designed". Relevant


now to paragraph 10.12 of the PCT International Search and Preliminary
Examination Guidelines (PCT/GL/ISPE/1) at 1.9 PCT Articles, Regs and Guidelines
et al.

Heat Exchanger/SCHICK OJ EPO 2/1987, 63; [1994] EPOR 437

Not sufficient for the invitation to list the inventions contained in the claims if the
applicant cannot infer from the list alone that the application does not relate to a
single inventive concept.

Lithium Salts/MUCKTER OJ EPO 2/1987, 67; [1987] EPOR 176

Invitation is not legally effective unless reasons are given to substantiate lack of
unity.

Thromboxane Antagonists/NRDC OJ EPO 10/1987, 459; [1988] 1 EPOR 34

Reasons must be communicated to the applicant in the invitation. It is not sufficient if


reasons could be found in official files only.

Fuel Products/LUBRIZOL OJ EPO 5/1988, 182; [1988] 5 EPOR 327

Procedure where protest not filed at the ISA and additional fee not paid within time
limits.

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Fibre Fleece OJ EPO 4/1993, 225; [1993] EPOR 515

Listing a plurality of subject matters will be sufficient substantiation only in those


exceptional cases where it is immediately clear from the list that the application does
not relate to a single inventive concept. Where this is not the case, in order to be
legally effective, an invitation must contain clear reasoning, based on the problem-
solution approach, behind the finding that a technical connection or interaction does
not exist. The problem set out in the description at issue was to improve a washing
process in a simple way, and this was solved by adding a fibre fleece which acts as a
dirt trap and/or as a means for measuring out detergent. The requirement of a single
inventive concept was fulfilled.

Cervical Punch/WISAP OJ EPO 4/1994, 239; IIC Vol 25 No.6/1994, 906

Lack of unity a posteriori if the subject-matters of independent claims including their


effects have no inventive common feature in the parts of the claims that differ from
the closest prior art.

Teeth Whitening/UNILEVER OJ EPO 12/1997, 552; [1997] EPOR 502

The claims define a Markush grouping of organic peroxy acids. The unifying features
between the alternatives in the compounds claimed are that they contain an organic
peroxy acid functional group and have teeth whitening activity. A search revealed
documents describing teeth whitening compositions comprising an organic peroxy
acid belonging to the first group of compounds claimed. Hence, there are no special
technical features linking the alternatives in the Markush claim and lack of unity was
found a posteriori.

Artificial Hip Joint/DRAENERT OJ EPO 8/1991, 438; [1991] EPOR 516

In order to issue an invitation to pay an additional search fee on the basis of lack of
unity, the search examiner must demonstrate that, given the general knowledge of
the person skilled in the art (a priori) or the state of the art - as revealed by the
search - relating to the subject-matter first defined in the claims (a posteriori), the
substance of the single general inventive concept can evidently contribute nothing to
the inventive step.

Where the inventive step is based chiefly on the discovery of an unrecognised


problem, if the common problem, that is the effects to be achieved, was itself already
known or could be recognised as generally desirable (a mere desideratum) or
obvious, there would be no inventive merit in formulating the problem.

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Also, if the common structural features are to be found only in the prior art portions of
the claim (eg. as in two part form claims), and if these known features do not help to
solve the problem of the combined whole, this may also indicate lack of unity.

Lack of unity was found in the application viewed either from the position of 'desired
effects' or alternatively from considering the structural features of the independent
claims.

Herbicides/HOECHST OJ EPO 8/1993, 514; [1994] EPOR 226

Lack of unity a posteriori found. Claim 1 included at least 13 completely independent


groups or classes of compounds. The common aspects of these compounds, a
compound A with other herbicides, was not new. The compounds did not possess a
single general inventive concept. Also, the Protest Board had no reason to doubt the
judgement of the ISA with regard to the further searches required and the number of
additional fees needed.

Zeolite suspensions/HENKEL OJ EPO 12/1994, 939; [1995] EPOR 251. (At IPE stage)

From the description the problem of stabilising aqueous suspensions using non-ionic
surfactants was already known and had been solved many times. The asserted
unifying link of a common inventive concept was thereby nullified. The claims
proposed four further solutions to the problem which, because of the differences in
structure between the proposed surfactant groups, are not based on a common
principle. They were not based on the same general inventive concept. The Protest
Board believed that in view of the technical link between three of the methods, which
were connected by the close structural relation between the surfactants, these could
be examined together for one fee.

Pigments/MERCK OJ EPO 2/1996, 73; [1996] EPOR 499 (At IPE stage)

From the disclosure in the application the term "matrix" in claim 1 is to be considered
in the sense of a functional feature when compared to the prior art. Held that none of
the documents cited described a matrix in the sense of the invention so clearly that
the objection of lack of novelty could be raised without further explanation. An
objection of lack of unity a posteriori required further explanation on the basis of a
problem to be defined against the cited prior art and including the claimed solutions.

Percarbonate/NN OJ EPO 4/2000, 186; [2000] EPOR 515 (At IPE stage)

There were 4 independent claims to either a process for manufacturing sodium


percarbonate (PCS) or to PCS characterised by certain properties. The Protest
Board noted that a manufacturing process and its product may not be regarded as
lacking unity simply by virtue of the fact that the process is not restricted to the

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manufacture of the claimed product. In referring to a previous decision the Board also
said that when comparing features in claims which may possibly lack unity or which
are suspected of lacking unity, reference should be made to the description when
investigating the effects to be attributed to the individual features of a claim. Only
then can a decision be taken as to whether, on the basis of "corresponding" technical
features, there is a technical relationship among the inventions. The Board was not
convinced, given the explanation by the IPEA, that the claims lacked unity a
posteriori.

Glossary

OJ EPO - Official Journal of the European Patent Office

EPOR - European Patent Office Reports

IIC - International Review of Industrial Property and Copyright Law

1.1.4.15 Other Decisions from the EPO


Viewing Assembly - Case W0038/90

The Protest Board found that three independent claims represented three concepts
to overcome three distinct problems with the prior art given in the specification. The
concepts had nothing in common and so the claims referred to different specific
technical features without any relationship with respect to each other - there was no
single general concept linking the different inventions.

The Board noted that a sole common link between the claims was that the respective
features all contribute to the realisation of the same device, namely a viewing
assembly for a door. However they said this "common pre-characterising feature is
confined to indicate the designation of the invention, as part of the prior art; it is not,
however, a specific feature interacting with the remaining characterising features and
thereby contributing to the various inventions and their effects." They thus rejected
this sole link as irrelevant for possible inventive contribution over the prior art, and
concluded lack of unity a priori.

Chlorination process - Case W0009/93

The problem to be solved by the processes of Claims 1 to 18 was to improve a


known chlorination process. Claim 19 was to compounds intended to solve the
different technical problem of providing monomers or intermediates therefor. The

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intermediate compounds produced according to claims 1 to 9 were known from a US


Patent as was the second reaction step in claims 10 to 18. The Protest Board noted
that the fact the reaction step was part of the prior art destroyed the link between the
contributions over the prior art made by the process of claims 1 to 9 and the
compounds of claim 19. The Board also noted the group of inventions did not relate
to a common technical problem or to one single technical concept behind solutions to
different problems. There was lack of unity a posteriori.

Further guidance on unity of invention issues may be gained by reference to the


"Case Law of the Boards of Appeal" of the EPO which can be found at their website,
which can be accessed through the Examiners workbench.

1.1.5 Abstract and Title

International - International Searching Patent Manual of Practice & Procedures

1.1.5.1 Abstract
Where the international application lacks a title and/or abstract, the PCT Unit, or the
relevant RO (e.g. NZ), should find this in their routine check and notify the applicant
accordingly, allowing one month from the mailing date of the notification for a reply.
The RO should also notify the ISA that an invitation has been sent. [Rule 37.1, Rule
38.1, PCT/GL/ISPE/1 at para 15.34]

WIPO guidelines for the preparation of abstracts are available at the WIPO internet
site.

Consider the adequacy of applicant's abstract and figure. [PCT/GL/ISPE/1 at para


15.34,
para 16.30 et seq, Rule 8, Rule 8.1(a), Rule 8.3]

Because of practical difficulties experienced by the IB with publication, examiners


when assessing or drafting abstracts, should have particular regard to the following:

it is important that the abstract be as concise as the disclosure permits and


that it should not exceed 150 words.

Note: The abstract must provide a summary of the technical information about
the disclosure as contained in the description, claims and drawings. It should

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be drafted so as to serve as an efficient scanning tool for searching purposes


in the art.

phrases should not be used which can be implied, such as, "This disclosure
concerns", "The invention defined by this disclosure" and "This invention
relates to".

only one figure should be selected unless this would lead to inadequate
disclosure. The inclusion of more than two figures should not be considered
except in extreme circumstances where necessary information cannot be
otherwise conveyed. Where none of the figures is considered useful for the
understanding of the invention (even where the applicant has suggested a
figure), then no figure should be selected. [Rule 8.2(b)]

abstracts may be incomprehensible if the numerals on the selected figure(s)


do not correspond with those in the text.

an absence of reference numerals on the figures must be accepted as the


search examiner has no mechanism to initiate their provision.

Where an abstract has not been filed with the international application the examiner
is not required to draft the abstract, except as in the next para . This prevents time
being wasted on preparation of an abstract for an international application that may
ultimately be withdrawn. [Article 14(1)(b)]

The examiner is required to draft the abstract where:

no abstract has been filed and PCT Unit or relevant RO has omitted to invite
the applicant to rectify the deficiency. The examiner should report the
oversight to the PCT Unit which shall either immediately notify the applicant
and allow one month for a reply or notify the relevant RO who will notify the
applicant. If this one month time limit falls outside the period allowed for the
search report to be established, the examiner does not notify PCT Unit but
instead drafts the abstract themself. [Rule 26.1, Rule 28.1]

the abstract filed either with the international application or within the time
limit under Rule 26.2 does not comply with Rule 8.1(a)-(c) [Rule 8, Rule 26.2].
It is office practice that the examiner is not required to draft a new abstract
when reference signs (or parentheses around reference signs) have been
omitted from the filed abstract. [Rule 8.1(d)]

The review of the abstract should be conducted in a way that does not increase the
elapsed time for completion of the search. This review should be completed in
parallel with other steps in the process.

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The applicant can only comment on the abstract prepared by the examiner after it
has been established in the ISR (see search report form PCT/ISA/210, first sheet,
item 5, second option at Annex B.4 ). This is the only invitation to comment issued to
the applicant. It occurs when the originally filed abstract does not comply with Rule 8,
and the examiner must prepare a more appropriate abstract. In this event the
examiner establishes an appropriate abstract and where appropriate submits it for
supervision. [PCT/GL/ISPE/1 at para 16.36]

After completing the ISR using form PCT/ISA/210 (Annexes B and C show
completed examples) and the ISO (see Completing ISO IPEO and IPRP IPRPII
Forms), the search examiner will mark the search report jacket to indicate that an
abstract has been established (if not done previously), word-process the report and,
where appropriate, submit the report to the person responsible for supervision. See
Search Report and Notification Form Completion for final examiner and PCT Unit
processing. [PCT/GL/ISPE/1 Annex B]

The applicant is allowed one month from the date of mailing of the report to respond
to the examiner's abstract in the report. [Rule 38.2(b) PCT/GL/ISPE/1 at 16.37]

If the applicant does comment, the PCT Unit will return the file, including comment, to
the originating section for search examiner consideration. [PCT/GL/ISPE/1 at para
16.38]

It is not necessary for the examiner to reply to the applicant's comment even if
adverse.

Once the one month (and five days extra time to permit forwarding in case filing is at
a state office) allowed for comment by the applicant has expired without the applicant
commenting the report including the abstract prepared by this Authority shall be
deemed to be established.

If this Authority does amend the abstract previously established it will notify the IB
and the applicant using form PCT/ISA/205. Annex I shows an example of how the
search examiner will complete form 205. It will be authorised by a senior examiner
and the PCT unit will despatch copies to both parties on the same date. [Rule 38.2(b)
Ad. Inst. 515, PCT/GL/ISPE/1 at para 16.39]

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1.1.5.2 Title

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Consider the adequacy of the title. An inadequate title may be too vague eg.
"Process" or include redundant phrases such as "Improvements in ..". [Rule 4.3, Rule
37.2, Rule 44.2(a), PCT/GL/ISPE/1 at para 16.40 et seq]

The search examiner is required to draft a title where [PCT/GL/ISPE/1 at para 16.41]:

the applicant has not responded to the invitation from PCT Unit or relevant
RO to provide a title within the time allowed

no title was filed and PCT Unit or relevant RO omitted to invite the applicant
to rectify the deficiency

the title filed is deficient.

The search examiner is not required to gain the approval of the applicant for the title
and the establishment of the title by the examiner is by suitable completion of the
search report form (see check box 4 of the first sheet of Annex C) [PCT/GL/ISPE/1 at
para 16.42]

1.1.6 Subjects to be Excluded from the Search


Rule 39.1 establishes that no ISA shall be required to search the subject matter of an
international application to the extent that it is any of the items below. However the
agreement between WIPO and Australia further qualifies this by excepting from
exclusion any subject matter which is searched under national grant procedures. [Art
17(2)(a)(i), Rule 39., PCT/GL/ISPE/1 at Chapter 9]

This means that in AU practice a search will almost always be conducted.

The subject matters of Rule 39.1 are:

scientific and mathematical theories

plant or animal varieties or essentially biological processes for the production


of plants and animals, other than microbiological processes and the products
of such processes

schemes, rules or methods of doing business, performing purely mental acts


or playing games

methods for treatment of the human or animal body by surgery or therapy, as


well as diagnostic methods

mere presentations of information


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computer programs

Where the examiner considers that any of the claims of an international application
are directed to any of the above excluded matter and would not be searched under
national grant procedures, then this should be discussed with a senior examiner
and confirmed by the supervising examiner. If it is decided that only some of the
claims are directed to excluded subject matter, then a search must be performed in
respect of the remaining claims. If it is decided all claims are directed to excluded
subject matter and that no search is to be carried out the examiner will complete form
PCT/ISA/203 (Declaration of Non-Establishment of International Search Report, see
Annex D) and submit the completed form and case file for supervision. The
supervising examiner is the "Authorised Officer" for this declaration, and the section
Deputy Commissioner must be notified before its despatch. A refund of part of the
search fee in accordance with guidelines in Annex S should also be actioned.

An ISO must also always be completed and despatched with the declaration.

However, a search is done where practicable. And, if after considering the issue
for a minimal period of time, such as 15 minutes, a firm view has not been formed on
whether subject matter should be excluded from the search, then it will generally be
more efficient for the search to proceed on the basis that the subject matter will be
searched regardless. Further time spent assessing the issue will, in all likelihood, be
counter-productive.

International - International Searching Patent Manual of Practice & Procedures

1.1.7 Claims Lacking Descriptive Support or


Clarity; Multitudinous Claims
In addition to excluded subject matter, an ISA is not required to conduct a search
where the description, claims or drawings fail to comply with the prescribed
requirements of the PCT, such as clarity or descriptive support, to the extent that a
meaningful search can not be carried out. In most cases the description, claims and
drawings will be understood sufficiently for at least a limited search to be conducted,
however where no search is considered possible a similar procedure to that given in
1.1.6 Subjects to be Excluded from the Search will be followed, using the same form
(note item 2 of Annex D.1). [PCT/GL/ISPE/1 at Chapter 9 and para 15.29][Art
17(2)(a)(ii) Art 17(2)(b)]

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In other circumstances a search will be conducted but the non-compliance is taken


into account in determining the extent of the search. The written opinion in such
cases will indicate how the description, claims and drawings fail to meet the
prescribed requirements and to what degree that non-compliance has been taken
into account in limiting the search. The limitation on the matter searched will also be
reflected in the search report.

Claims lacking descriptive support (unduly broad claims)

Unsupported broad claims create problems in the development of search strategy to


such an extent that the examiner can be uncertain as to the scope of the search that
is to be performed and as a result may fail to search in fields relevant to the inventive
concept that may be reflected in the claims after amendment. In these cases it is
appropriate to limit the search to matter that is supported by the description and is
directed to the inventive concept and to which the claims would be reasonably
expected to be directed after amendment taking into account the description and
drawings and the relevant common general knowledge. [Article 6, Article 15(3), Rule
33.3, PCT/GL/ISPE/1 at Chapter 9]

In practice this may mean that only supported claims are searched or that the claims
are searched to the extent to which they are supported with additional limitations
drawn from the description of the inventive concept and embodiments as appropriate.
Examiners should however be cautious of unduly limiting the scope of the search by
focussing only on particular preferred embodiments. Reference should be made to
the examples in Chapter 9 of the PCT International Search and Preliminary
Examination Guidelines (PCT/GL/ISPE/1).

Generally the applicant should be given the opportunity to comment on the proposed
search strategy in these circumstances. This is an opportunity to correct any
misinterpretations or to focus attention on the true nature of the inventive concept. It
is not a mechanism to negotiate the search strategy and responsibility for
determining the search strategy and any findings in relation to descriptive support
remains with the examiner and search strategy team. The procedure to be followed is
set out below.

Box II (para 2) of the ISR should identify any claims for which no search has been
conducted. PCT/GL/ISPE/1 at Chapter 9, para 9.19 to 9.30

If the search conducted in relation to any claim is such that the claim is only partially
searched, the ISO at Box VIII should be used to communicate the scope of opinion
including how the description, claims, or drawings fail to comply with the prescribed
requirements and to what degree that non-compliance has been taken into account
for the purposes of determining the extent of the search. Box VIII should also set out
the examiners findings on lack of descriptive support.

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Claims Lacking Clarity and Multitudinous Claims

For the purpose of searching the claims are to be interpreted with due regard to the
description and drawings (if any) and with particular emphasis on the inventive
concept to which the claims are directed. However, where clarity issues create
significant doubt as to the scope of the claims and consequently of the required
search strategy they should be raised in a similar manner as a lack of descriptive
support as discussed above. Where the claims include alternatives some of which
are unclear realisations of the invention and it is impossible to determine what may
reasonably expected to be claimed the search may be limited to only clear
realisations of the invention. See para 9.37 of the PCT International Search and
Preliminary Examination Guidelines (PCT/GL/ISPE/1)[Art. 6, 15(3), Rule 6.1(a),
PCT/GL/ISPE/1 at Chapter 5, Chapter 9 para 9.36 and Chapter 15]

The procedure of Claims Lacking Descriptive Support and Procedures for Informal
Communication with the Applicant should also be applied to claims found to lack
conciseness, for example, multitudinous claims with overlapping scope. What
constitutes an unreasonable number of claims or undue complexity depends on the
circumstances of the case but the principle to be applied is that the claims should not
be unduly multiplied or duplicative and should not "obscure the definition of the
claimed invention in a maze of confusion". The example in para 9.25 of the PCT
International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/1)
indicates that 480 claims (38 independent) is clearly unreasonable.

PCT/GL/ISPE/1 at Chapter 9, para 9.25 to para 9.30 Where there is significant


additional work associated with large and complex claim sets, ie in excess of
approximately 100-150 (depending on circumstances), and particularly where there is
no clear distinction between independent claims because of overlapping scope, it is
appropriate to restrict the search to subject matter expected to be claimed and to
raise the matter in the written opinion as indicated in Claims Lacking Descriptive
Support. Where unity of invention is also an issue, the communication with the
applicant under Procedures for Informal Communication with the Applicant below,
and 1.1.4.9 Issuing the Invitation to Pay Additional Search Fees, should be
combined.

Procedure for informal communication with the applicant

Where in consultation with the SST the examiner considers that because of a clear
non-compliance with the requirements of descriptive support, clarity or other
requirements of the PCT, a meaningful search is not possible in relation to some or
all or the claims, the following procedure should be followed:

the examiner, in consultation with the SST, prepares a draft notification using
PCT form 224 (Communication in cases for which no other form is

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applicable) briefly setting out the finding in relation to non-compliance with


the PCT, the intention to limit the search to subject matter that may
reasonably be searched noting the principles identified in Claims Lacking
Descriptive Support and Claims Lacking Clarity and Multitudinous Claims
above and inviting comments within 7 days of dispatch.

Annex D.2 shows the level of detail required (using PERP code T1).

examiners should telephone the attorney/applicant to advise that they intend


to limit the search and that an informal invitation to comment will be faxed to
them. If the attorney wishes to immediately discuss the matter in detail the
examiner should summarise the issues and note the comments made and
may amend the notification accordingly or determine that no further
opportunity to comment is required. A file note should be made in relation to
all communications with the applicant or attorney.

the finalised informal invitation to comment is to be left in the Invitation to Pay


Additional Fees in-tray and faxed to the attorney by the PCT unit

if a response is not received within 7 days, examiners are to proceed with a


search based on the limited subject matter identified. Extensions will
generally not be granted. However, if the applicant or attorney clearly requires
further time to comment, for example, because the applicant is uncontactable
and the attorney is unable to proceed without instruction, a further period may
be allowed but the total period for comment should not exceed 14 days
unless in exceptional circumstances

where comments are received the examiner and SST will reconsider their
finding on non-compliance and the proposed search strategy and proceed
accordingly. The examiner is not required to respond to any comments
provided or to further justify the search carried out. However Box VIII of the
ISO should indicate the nature and reason for the limitation on the search and
opinion as indicated in Claims Lacking Descriptive Support.

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1.1.8 Search Strategy

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In the course of classifying the document the search examiner, in conjunction with
the SST, 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 search [PCT/GL/ISPE/1 at para 15.37].

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/1 at para 15.33]

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 (e.g. NZ) during initial
processing and the case file flagged with a "REFUND ?" sticker if necessary.
[Rule 4.11, Rule 16.3, Rule 41.1]

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.

Where a refund may be due, then upon completion of the ISR (see 1.1.12
Search Report and Notification Form Completion) the case file including the
typed ISR, as well as details of any citations that were also cited in the earlier
search so as to avoid the problem of two sets of the same citation being
provided to the applicant (and therefore being double charged), is passed to
the examiner's supervisor, not the PCT Unit.

See 1.1.12.5.9 Refund Due, and para 4.3 of Annex S.

Where there has been an earlier search the search examiner will obtain the
earlier application's search report and citations from the PCT Unit. Where NZ
was the RO, any earlier search report completed on their application will have
been sent to AU at the same time as the search copy. A careful comparison
of present and earlier search requirements could produce major efficiencies in
search strategy eg. limitation to an earlier search update or extension to IPC
or US classification areas. Note also 1.1.12 Search Report and Notification
Form Completion.

All details of the search history are to be printed out and retained 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/1 at para
15.58, 16.58, 16.59]

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The names of the members of the three person team should be retained on the
search history print out on the correspondence file.

The relevant non-patent literature search area is also indicated on the inside of the
PCT report jacket. Full details of non-patent literature searching are given in Non-
Patent Literature.

The field of the international search must receive careful consideration. Some insight
may be gained on what area of the IPC should be searched by consulting patent
documents. Examiners should keep in mind that foreign offices may differ from this
Office in the interpretation of the IPC.

The main searching aids which will be used by examiners for searching foreign
patent documents are CAPRI lists for documents published prior to January 1974,
and DERWENT on-line database WPAT for documents published from 1974 and the
internet. WPAT is a composite of WPI and WPIL - in reports it can be called any of
DWPI, WPAT or WPIL on Questel-Orbit, and either WPIDS or WPINDEX on STN,
but the official name is "Derwent World Patents Index". The current guidelines for
use of the internet for searching purposes are set out in Annex V.1 and Annex V.2
(for Patent documents), Annex W (for obtaining full text Patent documents), Annex
X.1, Annex X.2 and Annex X.3 (for Japanese documents) and Annex Y (for NPL
documents).

The DERWENT databases cover all subjects from 1974 and chemistry back to 1963
for pharmaceuticals, 1965 for agriculture, 1966 for polymers and 1970 for other
chemical topics. Therefore for chemical cases some overlap with CAPRI will result
and duplicates will normally be removed by Exam Support & Sales (see 1.1.15.2
Capri). Also DERWENT databases are incomplete in the coverage of JP documents.

In those instances where CAPRI does not cover the sub-groups to be searched,
consideration will need to be given as to whether the alternative searching aids of US
sub-class lists and/or GB abridgements should be utilised. (These systems are
described in Foreign Patent Search Aids and Documentation).

Note: The non-availability of CAPRI does not affect the requirement to search non-
patent literature and DERWENT.

An appropriate search strategy must be developed by a three person Search


Strategy Team (SST) involving:

the search examiner; and

two consultant examiners including at least one examiner having relevant


searching experience.

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The names of the members of the three person team must be retained on the search
history print out on the correspondence file.

Consultant examiners should be drawn from examiners experienced in the relevant


technology regardless of examiner location. If the search examiner is an examiner
experienced in the relevant technology, then an examiner unfamiliar with the
technology may be included to ensure experience in the technology is passed on.
The team should include an on-line specialist if appropriate.

In the case where the on-line specialist is the search examiner, it is expected that a
third examiner with relevant expertise would be involved.

Sections are allowed to vary the mechanics of the 3 person team to suit their needs
so long as the general principles are retained. The 3 person time must always
comprise at least 3 people.

The search strategy adopted should ensure that the most relevant search area is
searched first.

The search strategy should be regularly reviewed given interim search results and
some feedback within the team on the results of the search should occur. This may
include doing another search with a modified strategy

The discussion of the appropriateness of the search strategy may well include, if not
already done, setting up sample searches of the AU documents or further sample
searches using PAIS, CAPRI or DERWENT IPC listings, US sub-class listings or GB
classified abridgements before determining the most effective international search.

AU designs will not normally be searched. However, experience has shown search
strategy/truncation benefits in a very limited number of arts e.g. toys and games, or
where an invention is characterised solely by pattern, shape or profile and a simple
illustration can serve as a citation, e.g. 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 areas.
Any citations are detailed in the format shown in Thai Applications Annex A.6

Where the search examiner is not an authorized officer, the person responsible for
the search, whether or not involved in earlier search discussions, should have a
sufficient appreciation to agree to the proposed search strategy and sign the PCT
report jacket. The person responsible will also check the status of abstract
preparation at this time - see 1.1.5.1 Abstract and 1.1.5.2 Title.

Difficulties should be referred to the supervising examiner or to the appropriate


supervising examiners if some conflict exists between possible search areas or
sections. Note also the services of a classification arbiter.

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Following determination of the field of search and searching aids, the on-line
specialist will acquire the necessary search lists and will enter details of the search
and the dates on the mainframe. The on-line specialist will perform an on-line
DERWENT search. [Annex L, Annex M]

The DERWENT references obtained from the on-line search are automatically sorted
according to the following preferred order using a PC program PATSORT or STN
SORT:

references to abstracts that have been placed on the Patent Abstract Image
System (PAIS)

other references to patent documents of US, GB, AU, CA, WO, EP, FR, DE,
CH, SU, AT, or JP and sorted according to that country order. This sorted
Derwent list is ready for direct Exam Support & Sales use since it has been
sorted and unwanted countries and duplicates have been removed. The on-
line specialist will import the search list of abstracts onto PAIS and will have
these abstracts printed if the examiner wants a paper based search, or
transfer to the examiner's PAIS file if a screen based search is preferred.

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1.1.9 Foreign Patent Abstract Retrieval


In most cases the on-line specialist will obtain the relevant abstract numbers from
Derwent. These will be sorted, imported into PAIS and then sent to the search
examiner to view.

However, in some circumstances, the following occurs.

Having prepared the printed lists of documents as mentioned in Search Strategy , the
Exam Support & Sales will delete, from the CAPRI search list(s), the following:

document references to countries other than AT, AU, CA, CH, DE/DT, EP,
FR, GB, JP, the former SU, US and WO

all B4 (publication level) and pre-1977 JP documents

duplicates (ie. later publications and documents already covered by the


DERWENT search)

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Exam Support & Sales staff will then extract copies of the relevant abstracts
according to the listings and photocopy the abstracts. Where no abstract exists, a
copy of the front page, first claim and where available, the first drawing page will be
provided. The set of abstracts will be placed in a file and forwarded to the search
examiner.

Where the on-line specialist has determined that a particular sub-group has been
searched before, the appropriate information will be forwarded to the Exam Support
& Sales with a request that an updated list and abstract set be prepared.

On receiving this request Exam Support & Sales will retrieve the earlier abstract file
and forward it together with the updated part of the search to the search examiner
immediately.

Exam Support & Sales works on a 'first-in-first-served' priority and expects to supply
search abstracts for all searches in less than two weeks, and preferably within one
week.

However, if a special situation arises where a search properly requires a faster turn-
around, a special high priority may be obtained by written request endorsed by one of
the Deputy Commissioners.

1.1.10 Non Patent Literature

1.1.10.1 Non Patent Literature Background


On reaching an agreed search strategy (see Search Strategy), the search examiner
should conduct any non-patent literature search deemed necessary at the same time
as the patent search is conducted. This is in line with expectations on search times.

The non-patent literature (agreed upon by the ISA's and listed in Annex A of the PCT
International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/1))
comprises periodicals specified in the list of periodicals established under PCT Rule
34.1(b)(iii) plus "Chemical Abstracts", where the publication date does not precede
the date of the search by more than 5 years. The IP Australia Library provides
access to these agreed periodicals (except a few which have since ceased
publication) and to Chemical Abstracts. Chemical Abstracts in paper form are held by
this Office from 1979 with the exception of 1981. Another database by which NPL
may be accessed is the Search Guidance Intellectual Property Digital Library
(available through the WIPO website).

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Searching Chemical Abstracts may provide access to abstracts from Japan and the
Soviet Union to which access is difficult by other means.

The recommended searching aids for non-patent literature are:

"Engineering Index" for mechanical and electrical inventions, "Chemical Abstracts"


for chemical inventions, the Internet (see Annex Y for Searching Guidelines) and the
Search Guidance Intellectual Property Digital Library (available through the WIPO
website).

Note: They are not indicated in Part B, Fields Searched, on the ISR form
PCT/ISA/210 at the second sheet (see Annexes B and C).

Details of the Engineering Index and the Chemical Abstracts as search aids and
procedure for their use are detailed below. To obtain citations from CA, the examiner
should give to IP Australia library the printed output sheet with those that are required
highlighted. Copies of the articles will be obtained by the library from on-line
databases ("fast track" system). Typically this should take less than 24 hours.

The request to the library must indicate the PCT number and the examiners name.
The library will phone the examiner when the article has been retrieved. In cases
where the cost of the article is high, the library will contact the examiner and discuss
further options for retrieval.

Full copies are to be requested only where, based on the abstract, it is reasonably
likely that the document will be cited. There should be no reason to order a full copy
merely to confirm non-relevance. Where the number of citations proposed to be
ordered in relation to a single search exceeds 10, the search examiner is to consult
another member of the 3-person team for validation of approach taken by the search
examiner.

Where an abstract is a citation in its own right, it may be cited. However if the
examiner feels that the full copy may reveal more relevant information that could be
cited then the full copy should be requested.

1.1.10.2 Engineering Index


This publication is available on CD-ROM held in the reference room of the IP
Australia Library. It is a collection of abstracts from articles in periodicals etc. The
database includes most of the "agreed" periodicals which contain electrical and
mechanical subject matter. The abstracts are arranged alphabetically according to

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subject headings. Again, if any of the abstracts appear to be relevant the library
should be requested to obtain photocopies. The photocopies of any articles which
are cited should be retained in the file.

Manual Procedure for using Engineering Index

The suggested procedure for manually searching electrical and mechanical


inventions is:

using the book "Subject Headings for Engineering" (SHE), determine the
appropriate subject heading or headings

using the volumes of Engineering Index held in the IP Australia Library,


search each annual volume under the selected subject headings back five
years from the date of the search

if any of the abstracts appear to be relevant the library should be requested to


obtain photocopies. The photocopies of any articles which are cited should be
retained in the file.

The Engineering Index is also available on the COMPENDEX PLUS file of ORBIT.
However normally access will be via the CD-ROM.

1.1.10.3 "Chemical Abstracts" - CA


This publication is both a searching aid for many of the minimum documentation
periodicals and is itself a non-patent literature publication which must be searched.
CA is accessible either through the printed material or by access via STN or Orbit.

Printed CA

This comprises the following series:

CA weekly issue - the source of the abstract

CA volume indexes (biannual)

Chemical Substance Index

General Subject Index

Formula Index

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Index of Ring Systems

Author Index

Numerical Patent Index

Patent Concordance

Note: There are CA Collective Indexes for all the above indexes, covering a 5
year period.

CA Handbooks

Registry Handbook

Parent Compound Handbook

CA Index Guide

Procedure for Printed CA

The suggested procedure for searching the non-patent aspect of a chemical


invention is:

check the Index Guide to determine if an appropriate nomenclature is to be


used.

using the appropriate nomenclature check the Chemical Substance Index,


General Substance Index, Formula Index or Index of Ring systems
(whichever is more appropriate for the task) to obtain a list of abstract
numbers. These numbers are in the form of a volume number followed by a
paragraph number eg. 82:80618p. The number 82 identifies the abstract
volume number and 80618p the closest paragraph.

in addition, two aids are also available - there are the Registry Handbooks
and the Parent Compound Handbook. The Registry Handbook is useful for
determining the molecular formulae for substances by using common
substance names. The Parent Compound Handbook is useful for determining
the CA index name of a ring system or natural product. Both handbooks
assist access to the Volume Indexes.

if any relevant abstracts are found, photocopies of the articles should be


obtained.

For access to CA via STN, examiners should refer to authorised users for
assistance in constructing search strategies.

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Procedure for on-line CA via Orbit

The suggested procedure for on-line searching the non-patent literature aspect of a
chemical invention is:

check the Index Guide and/or other aids to determine if an appropriate


nomenclature is to be used. Other aids are the Registry Handbook, Parent
Compound Handbook and numerous others (eg. Natural language terms list,
naming and indexing of chemical substances for CA, IUPAC nomenclature
reports and ACS nomenclature reports)

using the appropriate nomenclature, a primary search strategy is drafted by


the search examiner with an international on-line specialist (bearing in mind
any terms of nomenclature used in the manual search if undertaken). Note
there is not always a fixed nomenclature and some search terms may require
synonyms to be included as alternatives, particularly for topics falling within
the General Substance Index of the manual search.

the on-line output list includes the CA abstract number (as in the printed CA),
title and the journal reference. Patent number references are also given but
can be ignored in a non-patent literature search. The on-line output may
provide sufficient information to decide whether or not the abstract should be
seen. The same information is available on off-line prints which should be
requested if the list is excessive. Any abstracts required are ordered through
the IP Australia Library via the procedures above.

as with the printed CA search procedure, if any relevant abstracts are found,
photocopies of the articles should be obtained.

In a small proportion of cases, a search of the internet is carried out. The documents
identified are restricted to documents published on the internet. Where a document
is an "internet-only document", i.e. one published only on the internet, then the
document can only be retrieved from the internet. The difficulties of establishing a
publication date for such documents are well recognised. If a document retrieved
from the internet is stated to be a reprint of a paper document, the present practice is
to attempt to retrieve the paper version as this removes the publication date issue.
This means that one can then cite the written publication instead of the internet
disclosure. This option is relatively straight forward and reliable, and less likely to be
challenged by applicants when used in reports. A major resource available to do an
on-line search for technical magazines is the www.ecola.com news stand site
available through the IP Australia launch pad under General Reference.

1.1.11 Search Procedure


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1.1.11.1 Overview
The objective of the international search is to find the prior art which is relevant for
the purpose of determining whether the claimed invention to which the international
application relates is new (novel) or involves an inventive step, and, if not, the extent
to which the prior art anticipates the invention. [PCT/GL/ISPE/1 at para 15.01]

a. Newness, or novelty, under the PCT is substantially the same as Australian


novelty except that the concept of "essential" and "inessential" features does
not apply under the PCT. Thus, under the PCT, a document takes away the
novelty of any claimed subject matter when every element or step is explicitly
or inherently disclosed within the prior art defined in Rule 64.1 (see paragraph
12.01 of the PCT International Search and Preliminary Examination
Guidelines (PCT/GL/ISPE/1) ), including any features implicit to a person
skilled in the art (see paragraph 12.01 of the Guidelines; also see paragraph
13.11 of the Guidelines for a definition of the "Person Skilled in the Art").
However, the prior art disclosure must be an enabling disclosure (see
paragraph 12.02 of the Guidelines).

In considering novelty (as distinct from inventive step) it is not permissible to


combine separate items of prior art together (see paragraph 12.06 of the PCT
International Search and Preliminary Examination Guidelines). However, if the
document refers explicitly to another document to, for example, provide more
detailed information on certain features, the teaching of this latter document
may be regarded as incorporated into the relevant document, to the extent
indicated in the primary document.

Also, a dictionary or the like may be used to interpret special terms used in the
document. However, it is not correct to interpret the teaching of the document
such that well-known equivalents, which are not disclosed in the document, are
included. This is a matter for obviousness. Novelty and obviousness are
different criteria. Novelty does exist if there is a difference between the claimed
invention and the prior art, and this difference, being implicitly suggested within
the prior art, could not have been considered part of the common general
knowledge at the time of publication of the prior art (note, however that some
authorities have a different approach on this - see the annex to Chapter 12 of
the PCT International Search and Preliminary Examination Guidelines.

When searching for PCT novelty, whenever possible the search examiner
should use a "broad" approach to compare the claim(s) with each prior art
document in turn. See paragraphs below, for categorisation of full copies. If

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novelty alone is the criterion, then the document may be either accepted or
rejected.

b. The test for obviousness or inventive step is whether, at the relevant date
(usually the priority date of the claim) it would have been obvious to a person
skilled in the art, with regard to the prior art found by the examiner and the art
known by the examiner and this person at the time, to arrive at something
falling within the scope of the claim(s) under consideration. The term
"obvious" means "that which does not go beyond the normal progress of
technology but merely follows plainly or logically from the prior art". The
following are the basic considerations that apply in determining inventive
step/non-obviousness [PCT/GL/ISPE/1 at para 13.03]:

i. the claimed invention must be considered as a whole

ii. the references must be considered as a whole and the skilled person
must be motivated or prompted into combining the teaching of the
documents so as to arrive at the subject matter as claimed including
consideration of a reasonable expectation or likelihood of success -
see 2.5.2.5.6 Inventive Step Objections Involving a Combination of
Documents, and

iii. the references must be viewed without the benefit of impermissible


hindsight vision afforded by the claimed invention.

1.1.11.2 Inventive Step


In considering whether there is inventive step as distinct from novelty (see 1.1.11.1
Overview), it is permissible to combine the teachings of two or more prior art
references, for example, different published patents, or several teachings contained
in the same prior art reference, such as one particular book, but only where such
combination would be obvious to the person skilled in the art. In determining whether
it would be obvious to combine the teachings of two or more distinct documents, the
examiner should have regard to the following [PCT/GL/ISPE/1 at para 13.12]:

i. whether the nature and content of the documents are such as to make
it likely or unlikely that the person skilled in the art would combine
them;

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ii. whether the documents come from similar or neighboring technical


fields and if not, whether the documents are reasonably pertinent to
the particular problem with which the invention was concerned.

Therefore in searching for inventive step, it is necessary to search for documents, or


parts of documents, that provide disclosures whose combination would be obvious to
a person skilled in the art. The examiner must always consider each document in the
search as part of a possible combination of documents which could be cited. A
document cannot be eliminated from inventive step considerations as easily as it can
be when considering novelty. See 1.1.2.4 Extent of Search paragraph five.

Paragraph 13.13 of the PCT ISPE Guidelines specifies the practices of combining
teachings for Inventive step considerations. [In general the inventive step
consideration under the PCT is very similar to the approach used in Australian
National examination.

That is:

It would normally be obvious to combine with other prior art documents a well-
known text book or standard dictionary; this is only a special case of the
general proposition that it is obvious to combine the teaching of one or more
documents with the common general knowledge in the art.

1.1.11.3 Searching Product by Process Claims

When interpreting product by process claims, the approach to be followed is given in


Appendix A 5.26[1] of the PCT International Search and Preliminary Examination
Guidelines. That is, a product is not rendered novel merely by the fact that it is
produced by means of a new process.

Where an international application contains a product by process claim in relation to


a known product, it will be necessary to provide a citation directed to the product per
se. However, it may not be necessary to conduct an additional search in order to find
a citation that anticipates the claim. Thus relevant documents may be found during
the course of searching the process, or the application may contain relevant admitted
prior art. Where an application contains a broad product by process claim that
encompasses a wide range of compounds, the procedures outlined in 1.1.7 Claims
Lacking Descriptive Support or Clarity; Multitudinous Claims should be followed.
However, bearing in mind that the inventive concept lies in the process and not the

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product per se, the amount of time spent searching the product should be kept to a
minimum.

1.1.11.4 Dates Searched


The search is to be carried out among documents published prior to the international
filing date (as distinct from the priority date), which "must be taken as the basic
reference date for the search".

Note: For the purposes of the ISO the examiner must form a view as to validity of
the claimed priority date and examine for novelty and inventive step on the basis of
that valid priority date. An exception is that if the priority document is not yet
available at the time the ISO is being prepared, then the priority date is to be
assumed valid - see paragraph 17.26 of the PCT International Search and
Preliminary Examination Guidelines). [PCT/GL/ISPE/1 at para 15.03]

Because innovation patents are published relatively quickly after filing, circumstances
may arise where it is appropriate to cite an innovation patent as a "P,X" document in
an international search on an international application which is a family member.
Those circumstances will be when the publication date of the innovation patent is
earlier than the international filing date of the international application.

It should be noted that there is no provision under the PCT for a search for "whole of
contents" novelty as provided for under the Australian Patents Act 1990.

1.1.11.5 Conducting the Search


On reaching an agreed search strategy, the search examiner will ordinarily
immediately carry out any aspects of the search strategy which it is practicable to do
so. These aspects of the search may include inter alia a USPTO, ESP@CE,
Derwent on-line search using PAIS, Capri paper abstract search, AU search (full or
non-Convention) or a non-patent literature search (see 1.1.10 Non Patent Literature).
Where a PAIS search is to be carried out (as will be almost always the case) the
initial cull (whether fine or rough) should be done as soon as practicable after the
search set is available.

The search strategy should be regularly reviewed given interim search results.

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Where some abstracts are in the French or German language and the search
examiner requires assistance with that language, the examiner will use the services
of a suitable examiner (see 1.1.16 Assistance with Foreign Languages).

1.1.11.6 Useful Techniques ("piggy


back/forward" searching)
It is sometimes useful to peruse the related art (called piggy-backing/forwarding or
threading or streaming) for an identified abstract that is clearly highly relevant and
thereby locate other relevant documents at the abstract search stage. This practice is
especially useful for US, WO, EP and (some) GB abstracts, but should not be
continued ad nauseam and should cease when less relevant documents are
persistently located. This technique can also be used when only a few abstracts of
relevance are identified.

1.1.11.7 Obtaining Full Copies


On completion of the abstract search, the examiner either retrieves the documents
directly from Get the Patent or compiles a list of patents for which copies of the full
specifications are required and either obtains full copies from electronic sources
themselves, emails the list to the Exam Support & Sales, or completes the
International Full Specification Request form (form P/01/007) (see Annex G). The
number of abstracts on this list should not exceed the maximum number set by the
section for the technology of the search. Where it is necessary to select more than
the maximum number of abstracts (and obtain full copies therefor), the search
examiner must first consult with the other members of the Search Strategy Team
(SST). (There should be some justification for obtaining more full copies.) Any
secondary search, part II search, or additional search which is agreed by the SST
and which generates a new job number is treated as if it is a new search.

The search examiner should be selective and the list should, in the first instance, be
restricted to abstracts of clear perceived relevance (ie. relevant to the invention for X
or Y category purposes, not for more of the same or background prior art).

This list should amount to only a small fraction of the total search length. Exam
Support & Sales obtains photocopies of the full specifications required (using the

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documentation described in Foreign Patent Search Aids and Documentation) and


forwards them to the examiner to complete the search.

Requests for full copies are given priority over other work and should be delivered or
forwarded to the OIC Exam Support & Sales. The request should include the words,
FULL COPIES REQUIRED, and indicate the country and numbers of the
specifications required, and the AU Job No of the search for which the specifications
are required.

Exam Support & Sales will supply English full copies for documents listed by the
search examiner in accordance with the "Default" System stated in Annex G, unless
otherwise specified by the examiner.

The examiner may review full copies of less clearly relevant abstracts electronically
(if available). Where the search has revealed only A category abstracts, a minimal
number of these should be obtained as full copies (or viewed electronically) for
further consideration as possible citations in the report to indicate the current state of
the art.

1.1.11.8 XPRX or PQR Derwent Abstracts


Abstracts of the DERWENT XRPX type (see Annex N) or PQR type (see Annex O)
are compiled using the first published family member and may not include a
reference to the most preferred full text document currently available. When a full text
document of a DERWENT XRPX or PQR abstract is desired, the appropriate
concordance (part of the printed search list - see Annex N and Annex O) to the
preferred family member (available on the day when the online search was
conducted) should be consulted. In most instances the document indicated in the
concordance is the most preferred family member (ie. US). However if the online
search was conducted some time ago or the concordance does not indicate the most
preferred family member (eg. it indicates a DE or FR family member), then the Patent
Family Member Queries page accessible via the examiners' workbench can be used
to obtain a list of more up to date family members of the abstract. The most preferred
family member full text document is the document to be ordered for consultation.
Where the first published family member is a Japanese application by a Japanese
national, the abstract from DERWENT XRPX or PQR film might only include a brief
description of the invention (ie. title and drawing). It is highly unlikely (<1%) that there
is a more preferred family member. Accordingly, where the abstract is considered
relevant, a request for a corresponding abstract from Patent Abstracts of Japan

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should be made when ordering full text documents. This corresponding abstract can
then be either used as a citation, if appropriate, or ignored.
Where the abstract of the DERWENT XRPX or PQR type is not an abstract of the
PCT minimum documentation and the appropriate concordance does not indicate a
patent document number from the minimum documentation, then the Patent Family
Member Queries page accessible via the examiners' workbench should be consulted
to obtain reference to the preferred full text document. If such a preferred full text
document is not available, then the DERWENT abstract itself can be either used as a
citation, if appropriate, or ignored.
If any Japanese abstract (other than those Japanese abstracts identified above) or
Russian abstract appears relevant, the Patent Family Member Queries page
accessible via the examiners' workbench should be consulted to determine whether
English (or French or German) equivalents exist (if not already done in the course
above). If so, the full specification of the English equivalent should be requested, or,
depending on the relevance - the French or German if no English exists. The English
(or French or German) document is then cited if appropriate.
Unless examiners can understand Japanese or Russian there is little point in calling
for full specifications in these languages even if abstracts appear relevant. In view of
this and the difficulty associated with locating the full specifications, these should not
be requested from Exam Support & Sales.

In determining whether or not Russian and Japanese material should be cited, only
the English language abstracts themselves should be considered.

1.1.11.9 Considering and Culling the Documents


As soon as possible after receipt of the citations the examiner views the full
specifications obtained in the previous paragraph employing where possible, the
practices outlined in below. The most relevant foreign and AU documents are cited in
the report with English language documents being preferred over foreign language
documents disclosing the same matter. Follow the practice in 1.1.12.5 Documents
Considered to be Relevant where the English language specification actually viewed
is published after the filing date and an earlier published foreign language family
member exists. (Language assistance is obtained as outlined above.)

The copy of any foreign document cited is retained in the search file. A copy of any
AU citation is also retained in the search file and is to be obtained either by:

a. the examiner photocopying the citation at hand, or

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b. the examiner sending a request to Exam Support & Sales to supply


photocopies

If after one week the photocopies of AU documents in b. above have not been
supplied by Exam Support & Sales and no other matters are outstanding, the
examiner will follow up the request, making photocopies personally if necessary.

Copies of all citations should be of good quality (i.e. the best reproduction that was
possible and free of any highlighting, annotation or sketching).

Where some or all full copies of non-patent references have not been received and
only four weeks remain until the search report must be established, the examiner
should make enquiries about those full copies, then proceed to establish the search
report in the normal way on the basis of the material which is available.

1.1.11.10 Ending the Search


Reasons of economy dictate that the examiner use appropriate judgment to end the
search when the probability of discovering further relevant prior art becomes very low
in relation to the effort needed. The international search may also be stopped when
one or more documents have been found clearly demonstrating lack of novelty in the
entire subject matter to which the claims are directed or to which they might
reasonably be expected to be directed, apart from features the application of which
would not involve an inventive step and which are instantly and unquestionably
demonstrable as being well known in the field under consideration such that
documentary evidence seems to be unnecessary. [PCT/GL/ISPE/1 at para 15.57]

Note that while no special search should be made for features that are so well-known
that documentary evidence seems unnecessary; if, however, a handbook or other
document showing that a feature is generally known can be found rapidly, it should
be cited. [PCT/GL/ISPE/1 at para 15.24]

1.1.11.11 Categorising the Citations and


Grouping the Claims

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Search examiners should, whenever practical, perform some level of culling or


sorting of full copy documents prior to an in-depth categorising step in order that the
documents of highest perceived relevance are considered for categorising first.

Generally a cull/sort would involve a skim of the documents taking only a few minutes
for each document. This would identify a coarse rank of relevance of the documents
(whether possible X, Y or other category), and eliminate any document whose
disclosure is fully embraced by another document.

The publication level (A, A1, A2, B, C etc) should be indicated alongside its number.

Any relevant foreign language document should be considered in the categorising


step of the process and not culled from further consideration just because it is not in
English.

Note: For some technologies it may not be practical to identify either the perceived
relevance of a document or its level of relevance to other documents in a matter of
minutes to effectively perform a cull or sort prior to an in-depth consideration. Search
examiners in those technologies should therefore employ alternative practices with a
view to ensuring that their in-depth categorising starts with the most relevant
documents

Whenever possible search examiners should use a "broad" approach to categorise


citations against groups of claims. An in-depth approach to categorising citations
against all claims will not generally be necessary, and for most searches a "broad"
approach to categorising citations will suffice. That is, generalised statements can be
made about groups of claims. (By 'groups of claims' is meant an independent claim
and its dependent claims.) With a broad approach only minimal assessment need be
given to dependent claims within the group.

With this approach, dependent claims of a trivial nature would normally be


categorised in the same category as their base independent claim.

Provided a claim can be given a definite construction under Australian law and has
been subjected to a search, it should be categorised. Thus a properly worded
omnibus claim should be categorised, but it should be treated as a dependent claim
for grouping purposes.

Note that the objective of the international search is to discover relevant prior art for
the purpose of assessing novelty and inventive step. Decisions on novelty and
inventive step are the province of the designated Offices. Thus it is essential that the
search identify relevant items of prior art for novelty and inventive step purposes.
[PCT/GL/ISPE/1 at para 1.03 and 15.09]

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Indiscriminate application of the broad approach to all the claims based only on the
assessment of the independent claim(s) with no regard to the dependent claims is to
be avoided.

Note: An exception to using the "broad" approach may arise where a dependent
claim adds or subtracts a feature over the independent claim (rather than providing
more detail of an element figuring already in the independent claim) thus in effect
making the claim a de facto independent claim. An in-depth assessment of such
claims would then be warranted

Where a search examiner either after the abstracts viewing step or early in the
categorising step believes a broad approach should not be employed but another
approach is appropriate, the examiner is to consult the other members of the SST
regarding another approach. A senior or supervising examiner not on the SST is to
be consulted and assist if the SST is unable to agree.

Similarly if a search examiner employing the broad approach for a search


experiences difficulties that arise during categorising, the examiner is to discuss
these with the other members of the SST who together will determine a relevant
course of action/solution. A senior or supervising examiner not on the SST is to be
consulted and assist if the SST is unable to agree.

Search examiners employing the broad approach should not however approach the
SST merely to opt out of the responsibility for deciding the categories of citations to
the independent claims.

Once a document is determined to be of solely A category relevance, no further


analysis should be undertaken.

Hence in-depth analysis is only undertaken on documents determined to be of


particular relevance for the purpose of assessing novelty and inventive step in
accordance with the objective of the international search.

1.1.12 Search Report and Notification Form Completion

1.1.12.1 Background Search Report and


Notification Form Completion
Following completion of the search, the examiner will reconsider the Classification in
the light of experience acquired during the search and will prepare the ISR (form

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PCT/ISA/210) - refer Annexes B and C, the Notification of Transmittal of the ISR


(form PCT/ISA/220) - refer Annexes B, B1 and B2 and the ISO (see International
Examination). Once an examiner has completed the search, there should be no
delay in completing the search report. Once the ISR and ISO have been completed,
they should be immediately submitted for quality assurance. [PCT/GL/ISPE/1 at para
16.07]

Quality assurance should be given high priority.

The person responsible for the report must ensure that, under normal circumstances,
all matters are completed in time to allow the report to be established within three
months (see Annex T for apology time limits) from the receipt of the search copy, or
nine months from the priority date, whichever time limit expires later.

When unforeseen circumstances arise, such as the search examiner being


unexpectedly absent or abstracts not being delivered within the anticipated time
frame, and this is likely to prevent the search and opinion being completed within its
target time, counter measures should be adopted where practical. For example
transferring the case to another examiner for completion should be contemplated.

Annex A includes a sample form with references to paragraphs of this part of the
Manual, for detailed explanation of the required entry (the references will be
converted to bookmarks with implementation of the NPS)

Completed sample forms given at Annexes B and C should be carefully followed.

1.1.12.2 Completing the Search Report


Address for correspondence [Ad. Inst. 108]

PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file
is created.
When an agent represents the applicant, the address for service is listed in Box IV of
the PCT Request form.
For applicants processing their own applications, the address for service may be
listed in Box II of the PCT Request form.

Note:

. Check correspondence on file for any changes in the applicant or address for

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service.
. Check that the captured data that is entered by the macro is correct and current.

Date of mailing

Leave this space blank.

PCT Unit fills this box when the report is dispatched.

Applicant's or agent's file reference [Ad. Inst. 109]

PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file
is created.

Enter the most recent file reference from the latest correspondence from the
applicant or the agent as the original data may not have been updated.

Note: If the file reference is significantly different from the original, inform PCT Unit
which will inform the IB of the change. Additions of initials at the end of the original
file references are not considered a significant change.

International application number

When entering data using the Word macro, the application number initially entered
automatically appears in all relevant places in the notification and report forms after
all the dialogue boxes for data entry have been completed. This number is in the
expanded format PCT/AU20xx/123456 which came into effect on 1 January 2004.
The expanded format will occur for all PCT applications, even those which were filed
before 1 January 2004. Note, however, that the number will continue to be stored on
the mainframe in the abbreviated form PCT/AUxx/12345, even for applications filed
from 1 January 2004.

International filing date

The PCT Unit upon receipt of the international application assigns this date. This
date is recorded on the PCT Request Form and on the front of the jacket.

Applicant [Ad. Inst. 105]

PCT Unit captures this applicant data and when the examiner selects the "PCT - ISA"
Word macro button, and the application number is entered, it appears as an applicant
Choice Box in the macro.

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When there is more than one applicant indicated in the Request of a PCT application,
only the first mentioned of these has to be indicated in the International Search
Report. The other applicants, if any, are indicated by the words et al following the
first applicant's name. The first mentioned applicant is indicated in Box II of the PCT
Request form, a second applicant is listed in Box III, further applicants will be listed
on the continuation sheet if there are more than two applicants.

Example (a) AMERICAN EXPLOSIVES INC. et al.

Example (b) SMITH, John Doe

Note: As shown above, company names are written in capital letters; for personal
names the family name is given first in capital letters and the given names are in
mixed case - this helps to identify the family name.

1.1.12.3 Reporting
Establishment of search report

Refer to Subjects to be Excluded from the Search, which deals with subjects to be
excluded from the search, e.g. scientific and mathematical theories, plant or animal
varieties, schemes, rules or methods of doing business, or computer programs.

Non-establishment of report

Refer to Subjects to be Excluded from the Search, which indicates the course of
action to be taken in this case: discussion with senior examiner and confirmation with
supervising examiner.

Payment of fees under protest

Refer to 1.1.4.11 Payment of Additional Search Fees Under Protest, which indicates
the course of action to be taken in this case.

Authorized Officer

Where the search examiner is an authorized officer his or her name will appear on
the search report.

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Where the search examiner is not an authorized officer the name of the responsible
examiner who will be supervising the report should be entered as the authorized
officer.

Earliest priority date

This information is given in the PCT Request form (PCT/RO/101) in Box VI. This data
is initially captured by the PCT Unit and automatically appears in the dialogue box
when entering the application number in the ISA macro. However, the Examiner must
check that the correct date has been captured.

Note: Inform the PCT Unit if an error in the priority date is found.

Total number of sheets

The first sheet of the ISR will indicate the total number of sheets in the report. This
number is automatically calculated and entered on the front sheet by the macro.

It is also accompanied by a copy of each prior art document cited in this


report box.

Leave this space blank.

The PCT Unit is responsible for completing this box.

Translation of the international application furnished under Rule 23.1(b)

Where a translation of the international application is furnished under Rule 23.1(b), a


copy of that translation and of the request, which together shall be considered to be
the search copy under PCT Article 12(1), shall be transmitted by the receiving Office
to the International Searching Authority, unless no search fee has been paid. In the
latter case, a copy of the said translation and of the request shall be transmitted
promptly after payment of the search fee.

Rectifications of Obvious Mistakes

Where there is an indication on the file that the rectification of an obvious mistake (or
obvious error where the rectification has occurred before 1 April 2007) has been
authorized the international report shall indicate this and the report should be
established on the basis of this rectification. See 1.1.17 for information regarding
obvious mistakes.

Nucleotide and/or amino acid sequence listings

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The considerations for nucleotide and/or amino acid sequence listing may be found
in 1.1.18.1 Nucleotide and/or Amino Acid Sequence Listings.

Where a nucleotide or protein sequence is used to conduct the search, the examiner
should identify the source of this sequence by marking the appropriate checkbox at
item 1c of the front sheet of the ISR and completing items 1 or 2 of Box I. The
sequence that is identified is the specific sequence used to conduct the search.
Sequences that are present but not used to conduct the search should be indicated
under item 3 of Box I.

For example, if both a printed sequence listing and a computer readable sequence
listing are provided at the time of filing, and the computer readable sequence listing
is used to conduct the search, then the examiner will mark the box "Filed together
with the international application in computer readable form." The examiner would
not mark the box "Contained in the international application in printed form."
If a sequence listing is provided in the specification, but the search is not conducted
in respect of this sequence listing, then no reference is to be made to a sequence in
items 1 and 2 of Box I. In this situation Examiners should indicate under Item 3
that: There was a sequence listing originally filed but it was not used for the
purposes of this search.

Certain claims found to be unsearchable

Subjects to be excluded from the search. Refer to Subjects to be Excluded


from the Search

Claims lacking descriptive support or clarity; multitudinous claims. See 1.1.7


Claims Lacking Descriptive Support of Clarity, Multitudinous Claims

Unity of invention

Refer to Unity of Invention

Title

Refer to 1.1.5.2 Title

Abstract

Refer to 1.1.5.1 Abstract

Drawings to be published

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When indicating the Figure No. of the drawings, the Applicant's suggestion is found
at Box IX of the International Application Request (PCT/RO/101).

Where none of the figures is considered useful for the understanding of the abstract
(paragraph 4.2(c)), indicate this at the appropriate box (item 6, first sheet).

When no drawings accompany the application do not cross any boxes.

It is not recommended to select more than one figure; however, if it is necessary to


do so then change the wording to reflect the change from single case to plural case.
For example, change figure to figures, is to are and No. to Nos.

Excluded subject matter

Refer to Subjects to be Excluded from the Search

No meaningful search possible

Refer to Obscurities, Inconsistencies or Contradictions

Note: Omnibus claims are searched and reported upon following normal Australian
national law practice. Any breach of Rule 6.2(a) - no reference to the description or
drawings except when absolutely necessary is not required to be noticed, or
commented upon, in the ISR (apart from normal search reporting), in the ISO or in
the international preliminary examination opinion/report, in accordance with the
Quality Standards for Patent Examination.

Multiple dependant claims

Refer to

Ignore this box as our national law allows multiple dependent claims.

Lack of unity

Refer to 1.1.4.2 Determining Lack of Unity

Remarks on lack of unity fees paid under protest.

Refer to 1.1.4.11 Payment of Additional Search Fees Under Protest

Text of the abstract

Refer to 1.1.5.2 Abstract

Abstracts should not be more than about 150 words.


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IPC Symbols

The first IPC symbol listed in the ISR should have particular significance in that it
most adequately characterises the invention. All IPC symbols are to be validated on
the date of completion of search reports and examination reports. For intermediate
reports (i.e. examination opinions) that do not have a date of completion, the IPC
symbols are to be validated for the system date (i.e. today's date) and the Word
template will print this date as the "Action Date" below the IPC symbols. The
validation and the ST.10/C display will be used wherever the IPC symbols are
presented (in the IPC box) in any report.

1.1.12.4 Fields Searched


Minimum documentation searched

Refer to 1.1.2.4 Extent of Search and Annex A of the PCT International Search and
Preliminary Examination Guidelines.

where the IPC marks were searched, without restricting the search by using
keywords enter the marks searched. DO NOT use IPC: AS ABOVE, and

if keywords were used in conjunction with IPC marks to restrict the search
then leave this section blank.

Documentation searched other than minimum documentation

This section is used for non-electronic databases searched, e.g. paper or microfilm.
It is used for example, for:

Capri (shoe boxes)enter CAPRI and the appropriate IPC mark


searched e.g., CAPRI: IPC F16B 1/02.

AU classenter AU classification searched e.g., AU Class 53.6.

AU volume searchenter the IPC marks searched e.g., AU: IPC B65G
51/-.

This section is also used for searches of AU applications only that have been done
on PAIS, even though this is an electronic databaseenter the IPC marks searched,
e.g., AU: IPC B65G 51/00.

Electronic database consulted

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The names of any electronic databases consulted should ALWAYS be included.

Where keywords (search terms) are used, they should ALWAYS be included. If the
number of keywords used is large then a representative sample of the keywords
could be used (for example, Keywords: A, B, C, and similar terms). Truncation
symbols need not be included. The logic used in relation to the search terms should
not be included.

Partial structure searches are not conveniently indicated on the search report. If a
partial structure search was carried out this can be indicated by a statement such as
partial structure search carried out based on the quinoline nucleus in formula (I).

Sequence searches should be dealt with in the same way as partial structure
searches (search of SEQ ID 1-5).

Examples:

DWPI & keywords: A, B, C, and similar terms (note that DWPI includes
WPAT, WPI, WPIL)
JAPIO & keywords: A, B, C, and similar terms
MEDLINE & keywords: A, B, C, and similar terms
DWPI IPC A01B 1/- & keywords: A, B, C
CA & WPIDS: IPC C07D 409/- & keywords: A, B, C
CA: Structure searched based on Formula (I)
ESP@CE keywords: A, B, C.

Note:

. Merely putting keywords searched without specifying the actual keywords used is
not acceptable.

. There is no need to indicate the way the database was accessed, e.g. there is no
need to specify that ESP@CE was accessed via the Internet, or MEDLINE via STN.

1.1.12.5 Documents Considered to be Relevant

1.1.12.5.1 Background Documents Considered


to be Relevant
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The completion of this part of the international search report can be considered as
having three components. These are:

the citation category

the 1.1.12.5.3 Citation of the Documents together with identification of


relevant passages where appropriate, and

the identification of relevant claim numbers.

These three components are discussed in 1.1.12.5.2 Citation Category, 1.1.12.5.3


Citation of the Documents and 1.1.12.5.4 Citation of URLs. [Rule 43.5
PCT/GL/ISPE/1 at para 16.57 et seq]

Some general points to note are:

in completing an ISR examiners must not cite more documents than is


necessary, but care must be taken not to inappropriately exclude documents
of particular relevance from the report. That is, documents in either X or Y
category, even if they are also P category, should not be excluded where they
disclose subject matter of particular relevance not disclosed in other
documents, as these documents will be of interest to some Designated
Offices, for example the USA. Be alert also to documents that could be
relevant to AU whole-of-contents novelty considerations at a later stage [Rule
33.1 PCT/GL/ISPE/1 at para 16.58]

in most cases there should be no need to cite A category documents when X


and/or Y category documents are cited (if needed, then it would normally be
expected that no more than two category A documents would be necessary).

documents selected for citation should be relevant to the largest number of


claims possible.

while the number of documents cited in an Australian ISR does not normally
exceed about ten, this number can and should be exceeded if it is necessary
to do so to cover all of the claims.

Note: Documents should not be cited simply to top-up the number of documents
cited to some 'magical' number.

documents cited should be based on the full copy of the document and not on
the abstract thereof, except where section practices allow otherwise.

English language documents must be cited whenever available.

in cases where an English language document has a publication date after


the filing date of the international application, but has a family member of non-

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English language with a publication date earlier than the filing date, then both
documents should be identified. In these circumstances the English language
document actually viewed is cited first and then the non-English language
family member not viewed is mentioned afterwards in brackets, e.g. US
4282353 A (GREEN) 4 August 1981 col 2-3, fig 2 (& DE 2947734 A1).
[PCT/AI/1 Section 507 (g)]

where the search has revealed patent and non-patent literature documents
disclosing the same subject matter of particular relevance, preference should
be given to citing patent documents in the search report.

because innovation patents are published relatively quickly after filing, the
situation can arise where the publication date of an innovation patent is earlier
than the international filing date of an international application which is a
family member. In these circumstances it is appropriate to cite the innovation
patent as a "P,X" document in the international search on the international
application which is a family member. See 1.1.11 Search Procedure.

1.1.12.5.2 Citation Category


Documents which are cited are given a category indication by way of an alphabetic
character, details of which are given in Administrative Instructions 505 and 507 (see
completed example ISRs in Annex B and Annex C to this part). The categories for
citations are also explained under the Documents considered to be relevant
section of the report. A category should always be indicated for each document
cited. [Ad. Inst. 505 Ad. Inst. 507 PCT/GL/ISPE/1 at para 16.66]

It is possible that a particular document may have more than one category specified
in the report. For instance a citation may be an anticipation and so be indicated as X,
and also in its introductory portion contain a good description of the developments in
the appropriate field up to that time, and so also be indicated as A. [Ad. Inst. 508]

A separate line, with references, is employed for each category assigned. Particularly
relevant passages of citations should be indicated where the particular relevance
might not be otherwise readily apparent from the document. (Refer Annexes B and C
to this part for examples.)

Where several documents are cited as Y category, and the association of the
particular documents for inventive step relevance is not self-evident from the claim
listings, a brief explanatory note may be included at the end of Box C of the search
report indicating the association. Indicative wording could be as follows:

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for a citation having both X and Y indications, for the purposes of the Y
indication the citation is to be combined with one or more of the Y-only
indicated citations with relevance to the same claim(s)

for a Y-only indicated citation, it can be combined with one or more of the
other Y-only indicated citations with relevance to the same claim(s)

for the Y indications, citation C can be combined with any one of the other Y-
only indicated citations with relevance to the same claim(s)

(See Annex B for an example.)

Note: A Y category indicates the document is relevant when combined with


another document. This implies that there must always be at least two Y
documents.

1.1.12.5.3 Citation of the Documents


Identification of any document should be made according to WIPO standard ST.14
[Ad. Inst. 503 ST.14, ST.16]

For the method of identifying documents see ST.14, ST.16 and to the completed
example ISRs in Annex B and C to this part. The method is in accordance with
Administrative Instruction 503.

Where a Kind Code for a particular document also comprises a number (e.g., "A3"),
either as indicated on the document itself or as known from the background
knowledge of the examiner, the full "Kind Code" should be cited unless the examiner
is aware that no uncertainty as to the content of the disclosure would ensue from an
omission to do so.

When the examiner is compiling the Search report the document actually viewed in
the assessment of relevance is cited. Examiners are not precluded from viewing and
citing B level publication documents but nevertheless should remain alert to the fact
that a B level document is published later than, and may also omit subject matter
originally disclosed in, the corresponding A level document.

Note that on 2 January 2001 the US introduced pre-grant publication, resulting in


new identifying codes appearing on published US Patents. Annex Z is a notice by
the USPTO explaining the new system.

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For articles published in a periodical or other serial publication, internationally


recognized abbreviations are permitted.

In the case of JP documents, as the citation may be on the basis of the DERWENT
or Patents Abstracts of Japan abstract, the appropriate method for identifying the
citation should be used. For the SU documents, the citation is presently based on the
DERWENT abstract (see Annex Q). Sample DERWENT and Patents Abstracts of
Japan abstracts are included as Annex R. [Ad. Inst. 507(g) Ad. Inst. 507(h)]

Note: Where the abstract does not indicate all the elements for identification (as
shown in the citation details of Annex N to R to this part) it may be identified with
whatever elements are available from the abstract.

The date of publication of foreign patent documents can be identified by the date
following the relevant INID number i.e. 41-47. For older documents not bearing INID
numbers identification includes looking for terms such as:

US granted or patented

GB acceptance date

FR
publication de la deliverance
publie

DE
Offenlegungstag
Bekanntmachung Ausgabe der Auslegeschrift
ausgegeben

CH
veroffentlicht
expose d'invention publie le

CA
issued

The patentee (or applicant) for a foreign patent can be recognised by the name
following the relevant INID number i.e. 71-76 (for US patents 75 or 76)
e.g. (71) Name(s) of applicant(s)
(73) Name(s) of grantee(s)

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1.1.12.5.4 Citation of URLs


Any URL cited should show the address of the internet site that the citation came
from and the date that it was retrieved.

The URLs cited in all parts of this Volume are examples only and may only be valid
for the stated retrieval date.

For direction to any Internet site, such as PAJ machine translations or USPTO, the
examiner's workbench should be used to access the latest website address (and not
any example shown in this Volume).

The citation in the ISR of such a machine translation should indicate that it is a
machine translation, such as by placing the words machine translation in brackets
next to the URL plus the date of retrieval, following the citation of the actual
document.

For further instructions on Internet searching refer to Annex Y.

1.1.12.5.6 Relevant Claim Numbers


For X and Y citations the relevant claims to which the category applies are given
as prescribed in Administrative Instruction 508. [PCT/GL/ISPE/1 at para 16.73]
For A citations it is not necessary to indicate the relevant claims unless there is
good reason to do so; for example where there is a clear lack of unity a priori and the
citation is relevant only to a particular claim or group of claims.

Further documents listed in continuation box.

If more documents are cited than will fit in the space provided and a supplementary
sheet is used cross this box.

1.1.12.5.7 Family Member Identification


Cross this box if a family member listing is included with the report.
The search report is published with the specification and distributed worldwide. To
enable any reader in any country to consider the citation in the most convenient
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document/language, the known family members of each citation are listed in the
patent family annex sheet of the ISR (See Annex B and C). The annex sheet of the
ISR is to be prepared by the examiner using the Patent Family Member Queries
page from the examiners workbench:
following the instructions on this page, citations can be entered and a
list of family members obtained. The list can be saved as a text file in the
R:\Online\Inpadoc folder.
the examiner accesses this saved list by selecting the family listing icon in the
tool bar of the Word macro. This will automatically bring up the
R:/online/inpadoc file.

select appropriate file and click Open. This triggers the system to
automatically transfer the list to the family member annex.

Note:
. If no family members are indicated for a cited document then indicate this by
entering the word NONE where the family members would appear. This indicates
to the applicant that a search for family members has been carried out and there was
a nil result.

. If none of the citations has a family member the See patent family annex box
should still be crossed and the practice as indicated above should be followed for all
citations.

1.1.12.5.8 Date of Actual Completion of the


Search
Where the search examiner is an authorised officer then the date will be the date of
completion of the search report and he or she will so enter it on the search report.

Where the search examiner is not an authorised officer , upon completing the
notification and report, the search file including notification, report and citations is
passed to the responsible examiner. The date of the actual completion of the
international search will be the date on which the responsible examiner concurs with
the search report. Note, however, 1.1.13 Reissued, Amended or Corrected ISRs and
ISOs, relating to re-issued and corrected reports.

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Under normal circumstances the ISR and the ISO should be completed within 8
weeks of filing of the PCT application, and in all cases within 3 months of receipt of
the search copy (see Annex T for apology time limits).

Examination sections have prime responsibility for eliminating the errors


occurring in reports. They must aim to eliminate errors in reports with effective
quality assurance procedures. An ISR check sheet is provided at Annex U and a
check sheet for international examination is provided at IPE Quality Checklist.

The search copy file, including all citations and the ISO, is forwarded to the PCT Unit
(unless a refund may be due - in which case refer below. Forwarding may be via the
internal mail (out-tray) or by personal delivery to the PCT Unit. Where forwarding is
via the internal mail the front of the case-file must indicate that the file is being
referred to PCT Unit.

If abstract sets (e.g. CAPRI boxes) were searched, at the completion of the search
the examiner should place them in a nominated location for Exam Support & Sales to
collect.

In cases where it may not be obvious to an applicant why a later search report differs
from an earlier search report referred to in Box VII of the request of the later
application, it may be appropriate for an explanatory letter to accompany the search
report. Such a letter could anticipate possible complaints by stating for example that
new citations were reported because they were found in an updated search, or that
the claims searched in the later application were of a different scope than the earlier
search statement, or the like. A senior or supervising examiner should authorise such
explanatory letters.

1.1.12.5.9 Refund Due


Where a refund may be due, then upon completion of the ISR and ISO the case file
including the ISR, Notification and ISO is passed to the examiner's supervising
examiner prior to forwarding to the PCT Unit (see Annex S).

A brief note on the extent of the search in the light of the earlier search should be
placed on file as well as details of any citations that were also cited in the earlier
search to avoid the problem of two sets of the same citation being provided to the
applicant (and therefore being double charged). The case file should be referred to
the supervising examiner at least 1 week prior to the 8-week date for establishment
of the ISR and ISO. The examiner should refer to the guidelines for International
search refunds (see Annex S) when drafting their brief note.

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Note: All refunds are to be stated in Australian dollar amounts only.

After consideration the file passes to the PCT Unit with the resulting form
PCT/ISA/213 for refunds or PCT/ISA/224 if a refund is inappropriate.

Date of mailing of ISR and ISO

Leave this blank as PCT Unit will complete this section when mailing the report. The
ISR and ISO must have a common date of mailing.

1.1.12.6 Contents of Case File at Completion


As well as the ISR and the ISO, the search file must include:

a full copy of each citation where the cited reference is a full document
viewed by the examiner (for AU documents - see below).

a full copy of each AU document if the examiner decided to cite them after
comparing them with the relevant foreign specifications, or a copy of the
request to the Exam Support & Sales if the examiner has not received copies
of AU citations after one week from the request to Exam Support & Sales.
(See Search Procedure, for explanation as to obtaining copies of AU
documents).

where the cited reference is itself an abstract eg. JP or SU - a copy of that


abstract.

where the cited reference was not viewed, a full copy of the family member
which was viewed.

all the copies will be of good quality (ie. they will be the best reproduction that
is possible and be free of any highlighting, language or other annotation and
sketching).

unless it has been previously despatched, a copy of the board decision which
ISA/AU has taken on the protest by the applicant against payment of an
additional fee because of lack of unity of invention.

copies of all details of the search history, including both patent and non-
patent literature searches as well as searches conducted on the Internet,
along with the names of the members of the three person team, should be
retained on the correspondence file.

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Actions by the PCT Unit

Upon receipt of the search copy file the PCT Unit will perform the final processing
steps:

enter the date of mailing of the ISR and the ISO; the date of mailing must be
the same for the ISR and ISO

make three copies of the ISR and ISO and one copy of the notification

where the applicant/attorney has requested a copy of the citations and has an
account with this Office then make one, or more, copy of each citation and
prepare an invoice

under the cover of the original notification form PCT/ISA/220 dispatch two
copies of the ISR and ISO (and one, or more, copy of the citations, provided
that the applicant does not already have these citations as a result of them
having been cited in an earlier search, and invoice if attorney/applicant has an
account) to the applicant/attorney

where a refund for an earlier search consideration has been approved include
the notification PCT/ISA/213, or if not approved the notification PCT/ISA/224,
in the dispatch to the applicant/attorney

forward the original of the ISR and ISO to the IB under cover of form
PCT/ISA/219; the ISO must be placed on top of the ISR where the applicant
has protested against payment of an additional fee because of lack of unity of
invention, include a copy of the decision by the ISA/AU protest board, unless
previously dispatched (note also that at the time of such supply to the
applicant the IB must be forwarded a copy of both the protest and the
decision thereon, as well as any request by the applicant to forward the texts
of both to the designated Offices) [Rule 44.1]

retain the search file (including a copy of the ISR, the notification and ISO)
and separately the citations in a citation file, in the PCT Unit [Rule 40.2(c), Ad.
Inst. 502]

update the PCT database with the date of mailing.

1.1.13 Reissued, Amended or Corrected ISRs


and ISOs

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On rare occasions it will be necessary to replace a previously issued ISR and/or


ISO. This can arise if, for example, a further relevant document is discovered or if an
error has been made in the transcribing of details into the report. Where the error or
omission is not one which would have procedurally disadvantaged the applicant
(such as an incorrect IPC mark or a misspelling of the applicants name), a
Corrected report should be issued bearing the same date of establishment and
same date of issue (mailing) as the original report. Where the error or omission is
one of real substance which would procedurally disadvantage the applicant if the
original dates of establishment and issue (mailing) were maintained (such as a new
citation or a citation whose number has been misrecorded), an Amended report
having the actual date of establishment and actual date of issue (mailing) of the
amended report should be issued. [PCT/GL/ISPE/1 at para 15.68]

If an error or omission concerns only one or the other of the ISR and ISO, then it is
only necessary to amend the document in which the fault occurs (although the
reissuing or correction of one will often require reflection in the other, in particular to
ensure that any change to the deemed date of mailing was properly reflected as one
or the same in both documents

The discovery of a further relevant document may arise out of the following
circumstances:

the discovery that the full international search has not been done (eg.
DERWENT update left out of the original search) thus requiring a further
search

an (international) search in a later related application which provides


documents relevant to the original search

notification by a third party of the existence of a relevant document.

If the person discovering the need for a search, or the existence of relevant
documents, is not the original search examiner, they must, if practical, immediately
inform the original search examiner. If that is not practical, another examiner will
need to take carriage of the case. The search copy file is retrieved and, if practical,
the original three-person team or, if not practical, a new three person team
determines the need for an amended search or the relevance of the later search.

If there is a need for a further search as above, then the three-person team
determines the appropriate search strategy and proceeds according to the procedure
in a normal international search (see 1.1.12.1 Search Report and Notification Form
Completion).

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If a later search report provides relevant documents then the search examiner
prepares an Amended ISR comprising the relevant citations of the later
(international) search report depending on whether it is wholly or partly relevant.

If the task above is completed in sufficient time for the amended report to arrive at
the IB at least two weeks before normal publication of the original international
application, then the amended search report is treated in the same way as a normal
search report (see 1.1.12.1 Search Report and Notification Form Completion for the
procedure). If not, then an amended report may be issued any time up to entry into
the National Phase, less a publication lead time.

An amended ISO may also need to be issued with the amended search report (see
para above).

There is no macro specifically for an amended or corrected search report or an


amended or corrected ISO. Any such report should be handed directly to the OIC
PCT Unit, with instructions to mark it with an Amended or Corrected stamp and, in
the case of an Amended report, give it an issue date of the actual date of issue of
the new report or, in the case of a Corrected report, give it the date of issue of the
original report.

International - International Searching Patent Manual of Practice & Procedures

1.1.14 Priority Document


Although the validity of the priority date claimed by a PCT application (including any
right of priority restored under PCT Rule 26bis.3 see 3.24 Extensions of Time -
Restoration of the Right of Priority) is not an issue in so far as international searching
is concerned, it may need to be assessed when producing an ISO - see below. For
the purpose of an international search report the priority date is assumed to be the
filing date of the PCT application (ie any citation published prior to the filing date of
the PCT application [rather than the priority date] should be cited as a prior
publication). For the purpose of an ISO, however, it may be necessary to determine
what priority date a PCT application is entitled to if a citation in the ISR is published
after the earliest priority date. In this case it will be necessary for the examiner to
view the priority document, if possible. [PCT/GL/ISPE/1 at Chapter 6]

Examiners may also have a need to view a priority document for reasons unrelated
to priority date determination, such as to gain a better insight into the subject matter
of the PCT application.
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In the most common situation viewing a priority document will be straightforward as it


will be an Australian provisional or standard application which can be accessed by
the examiner using PAMS. However, a situation can arise where the priority is
sought from an earlier application which is not available by this mechanism (that is, it
is a foreign document, as will most likely be the case when the PCT application was
originally filed with RO/NZ) and the document is not already in the search file of the
PCT application (as may well be the case as the applicant has until 16 months after
the priority date to file it). If an examiner needs to view such a priority document, the
examiner is to request a copy of the document together with a translation where
appropriate from the PCT Unit (through Lotus Notes email to PCT- which can be set
up in stationery). If the PCT Unit proves unable to obtain the document, the priority
date is to be assumed valid - see paragraph 17.26 of the PCT International Search
and Preliminary Examination Guidelines (PCT/GL/ISPE/1).

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1.1.15 Foreign Patent Search Aids and Documentation

1.1.15.1 Background Foreign Patent Search Aids


and Documentation
The main aids available to examiners for searching foreign patent documents are
DERWENT for documents published since January 1974, and CAPRI for documents
published prior to January 1974.

DERWENT on-line database DWPI (available for documents from 1974) will be
used by the on-line specialist to produce lists corresponding to the IPC sub-groups or
to a larger IPC area combined with Keywords, chosen for the search as a result of
the search strategy conference. These lists will be produced by (i) downloading the
relevant data fields and (ii) sorting and printing offline into preferred country order.

1.1.15.2 Capri

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CAPRI (Computerised Administration of Patent Documents Reclassified according to


the IPC) is the name given to a project to reclassify the patent documents of various
countries according to the IPC. The CAPRI file consists of about 15 million
documents over most IPC sub-classes. PATINDEX can provide the number of
documents in each sub-class. The CAPRI file on PATINDEX covers minimum
documentation from 1920-1973 and is accessed using valid IPC marks. (see Annex
M)

The reclassification has been carried out by DE, AT, EP, JP and the former SU; JP
and the former SU reclassifying only their own specifications. This means that, for
instance, US specifications will have been reclassified to European standards so that
the CAPRI entry will very often be different to that given by the US Office and printed
on the specification.

The CAPRI file was supplied on magnetic tape and has been reprocessed onto
microfiche, combining the originally separate former SU data with all the rest.

1.1.15.3 Documentation
Exam Support & Sales holds numerically arranged patent document collections and
certain abstract collections for the "Minimum Documentation" countries. These
documents are in various hard copy forms however ES&S rely on on-line retrieval for
the majority of documents supplied to examiners.

International - International Searching Patent Manual of Practice & Procedures

1.1.16 Assistance with Foreign Languages


Where a search examiner requires assistance with a foreign language, he or she
should consult the list of foreign language translators and the services of a suitable
examiner.

Whilst as many as three examiners will often be involved in the conduct of any one
search, only one examiner - the person whose normal duties cover the technical area
of the search - will have the immediate responsibility for both the conduct of the
search and the indicating of the special categories of cited documents.

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It may on occasions be possible for a search examiner with no foreign language


capability to nevertheless perform a preliminary culling of relevant material on the
basis of drawings or formulae. Where possible this should be done before foreign
language documents are given to other language searchers.

It is the search examiner's duty to inform the foreign language searcher of the nature
of the invention and to indicate to him the nature and scope of the search. Copies of
the written search statement and/or copies of the broadest claim(s) should be
provided for each foreign language searcher. It is not expected that these searchers
should be required to determine this information, since apart from duplication of effort
there is a danger of inconsistency.

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International - International Searching Patent Manual of Practice & Procedures

1.1.17 Rule 91 Obvious Mistakes in Documents


Rule 91.1 provides that obvious mistakes may be rectified. Any request for
rectification will be in the form of a letter from the applicant. Where rectification in
respect of any document other than the Request form is sought before the ISR is
established (or an Article 17(2) declaration made), PCT Unit will forward the request
for rectification, the search file and necessary forms to the search examination
section for consideration. [Rule 91.1, Ad. Inst. 511 PCT/GL/ISPE/1 at Chapter 8]

The search examiner considers whether the mistakes is rectifiable under Rule 91.1,
and completes form PCT/ISA/217 (see Annex J to this part). Once PCT/ISA/217 is
completed it should be taken to PCT Unit for mailing.

Note:

. Rule 91.1(c) to (g) is the only source of instruction when considering requests for
rectification, i.e., case law does not exist.

. Although Rule 91.1(h) allows the ISA to invite rectifications (form PCT/ISA/216), it
is not envisaged that such invitations will be issued since any error which can be
rectified under Rule 91 will not cause any problems in establishing the search report.

. Authorisation of rectifications is determined solely by Rule 91.3(a) and (b) while

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Rule 91.1(c) determines if they are of effect. Whether such rectifications can be
effective is not a consideration in authorizing and thus of no examiner concern. [Rule
91.1(c) to (g), Rule 91.3(c)]

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1.1.18 Nucleotide and/or Amino Acid Sequence Listings

International - International Searching Patent Manual of Practice & Procedures

1.1.18.1 Background Nucleotide and/Or Amino


Acid Sequence Listings
Nucleotide and/or amino acid sequence listings are representations of the sequence
in a standardised format set down in Annex C of the Administrative Instructions under
the Patent Cooperation Treaty. This listing(s) may be supplied with an international
application in addition to the sequence disclosed in the specification.

The listing may be filed as part of the specification or it can be furnished separately at
a later date. Where the sequence listing was originally filed as part of the description
or where it was filed in response to an Article 14 objection (certain defects in the
specification) by the receiving Office, the sequence listing forms part of the
description (Rule 5.2) and hence forms part of the pamphlet. If however the
sequence listing is only filed in response to a rule 13ter request by the ISA then the
sequence listing does not form part of the description (unless the subject of an Article
34 amendment) and will not be part of the pamphlet (rule 13ter (f)).

Examiners should note that the expressions "nucleotide sequence" and "amino acid
sequence" are defined to mean an unbranched sequence of ten or more contiguous
nucleotides and an unbranched sequence of four or more contiguous amino acids,
respectively; branched sequences are specifically excluded (Annex C).

Where the international application contains a disclosure of a nucleotide and/or


amino acid sequence, the description shall contain a type written sequence listing, or
(as of 11 January 2001) a sequence listing on a (ISO9660) CD-ROM or CD-R, of the
sequence complying with Annex C. [Rule 5.2 Ad. Inst. 208 Ad. Inst. 801]

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According to section 208 of the Administrative Instructions, the standard prescribed


for a sequence listing is that specified in Annex C. An application, where the
sequence listing is provided in type-written form may also contain copies of the type-
written sequences, in computer readable form to comply with Rule 13ter. [Ad. Inst.
208 Ad. Inst. at Annex C]

If the applicant has filed the sequence listing on CD-ROM or CD-R, then the
applicant may, if they wish, also file a type-written form of the sequence listing, which
conforms to Annex C. This type written copy will be retained as the record copy. [Ad.
Inst. 801a(ii) Ad. Inst. 804(b)]
If the sequence listing is not provided at filing in a computer readable form, or if one
is provided which does not comply with Annex C, the International Searching
Authority, under Rule 13ter.1(a), may issue an invitation to the applicant to furnish a
sequence listing in a computer readable form, within a prescribed time, (usually one
month) to provide a listing which does comply with the standard. (PCT/ISA/225)
[Rule 13ter.1(a) Ad. Inst. 513(a)]

If the applicant does not comply with an invitation, the International Search Authority:

"shall not be required to search the international application to the extent that such
non-compliance has the result that a meaningful search cannot be carried out." [Rule
13ter.1(c)]

Any limitations placed upon the scope of the search, as a result of non-compliance
with this request, should be discussed with the Supervising Examiner.

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1.1.18.2 Office Practice


IP Australia practice, in its role as an ISA, is:

An applicant is required to file a sequence listing in a type-written form, or (as


of 11 January 2001) on a (ISO9660) CD-ROM or CD-R if the specification
discloses a nucleotide and/or an amino acid sequence. The PCT filing
section can issue a defect notice to the applicant if the type-written or CD-
ROM or CD-R sequence listing is missing, or if it does not conform to the
standard prescribed in Annex C of the Administrative Instructions under the
Patent Cooperation Treaty. If the applicant does not file a sequence listing
with the application, and subsequently files the listing in type-written form, the

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examiner must ensure that the applicant also has filed a statement to the
effect that [Rule 5.2 Ad. Inst. 208]:

"The sequence listing does not include matter which goes beyond the
disclosure in the international application as filed". (Annex C paragraph 37)

If the listing is not accompanied by such a statement, the examiner will then
issue an Invitation to furnish such a statement. (PCT/ISA/225). The invitation
will normally allow 14 days for the supply of the statement.

As of 1 October 2000, the Commissioner requests, that if the applicants only


file a type-written form of the sequence listing, that applicants file an
additional copy of those sequences in a computer readable form. Any
sequence listing in computer readable form submitted in addition to the type-
written sequence listing contained in the specification must be identical to that
type-written sequence listing, and must be accompanied by a statement that
[Rule 13ter.1(a) Ad. Inst. 513(a)]:

"The information recorded in computer readable form is identical to the written


sequence listing" (Annex C paragraph 40).

If the computer readable listing is not accompanied by such a statement, then


the PCT filing unit will bring this to the attention of the examiner on the file.
The examiner will then issue an Invitation to furnish such a statement.
(PCT/ISA/225).

If the applicant has not supplied a computer readable form of the listing, then
the examiner should consider whether or not a computer readable sequence
listing is necessary for a comprehensive search. If it is decided that a
comprehensive search can be completed, without the computer readable form
of the listing, then the search should proceed. For example, if the application
relates to a single 10 amino acid sequence, then it may be possible to
undertake a search without such a listing in the computer readable form. If
however, the application relates to extensive sequence listings, then the
examiner, may issue the invitation to supply such a computer readable listing.
(PCT/ISA/225).

The computer readable form for Rule 13ter may be CD-ROM, CD-R or floppy
disc.

The Office will accept the accuracy of any filed listing. The listing so supplied
should comply with Annex C, however the Office will not necessarily check
the listing for compliance. The Office will check for any physical damage to
the disc, and for the presence of viruses.

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1.1.18.3 Summary
In summary:
examiners will check for the presence of a sequence listing, if there is a
sequence disclosed in the specification. However, examiners are not
required to check for compliance of the sequence listing with Annex C of the
Administrative Instructions under the Patent Cooperation Treaty
examiners with the approval of the Supervising Examiner, may issue the
invitation as stated in Rule 13ter.1(a).
examiners will accept the sequence listing in the type-written form filed by the
applicant, but are not obliged to require that the applicant supply a computer
readable form of the sequence listing.
if, in the establishment of the ISR, or international-type search report, the
search was carried out on the basis of the sequence listing, examiners should
mark the appropriate check boxes under 'Basis of the Report' on the first
sheet and in Box I on the second sheet of PCT/ISA/201 or PCT/ISA/210
forms. In the ISO the examiner should mark the appropriate checkboxes
under Items 3 and 4 of Box I 'Basis of the Report' of the form PCT/ISA/237.
At the international preliminary examination stage examiners should mark the
appropriate check boxes under Item 2, 3, and 4 in Box I 'Basis of the Report'
in the PCT/IPEA/408 and PCT/IPEA/409 forms, plus regarding the last check
box in Item 2, include relevant information, in the Supplemental Box Relating
to Sequence Listings in the PCT/IPEA/408 and PCT/IPEA/409 forms.

As a receiving Office, with effect from January 11, 2001, the Administrative
Instructions under the PCT have been amended to allow the sequence listing part of
an International Application to be filed on an electronic medium in the computer
readable form referred to in Annex C of the Administrative Instructions. The medium
must be one acceptable to the relevant receiving Office [Ad. Inst. Part 8].

For the purpose of this new provision, the Australian Patent Office will accept the
filing of such sequence listing parts on a standard (IS09660) CD-ROM or CD-R.

If this option is used, the filing fee is based on:

the usual fee based on the number of pages filed on paper; together with

an amount equal to 400 times the fee per sheet as referred to in item 1 (b) of
the schedule of Fees to the PCT, regardless of the actual length of the
sequence listing part.

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If the specification comprises a sequence listing on a CD-ROM or CD-R, there is no


requirement to supply the listing in printed form during the international phase of the
application.

Note: Where the sequence listing part of a specification is filed under this new
provision, that sequence listing will also fulfil the requirements of Rule 13ter.1(a)(ii),
which relates to the requirement of a computer-readable form of the sequence being
supplied for search purposes.

1.1.19 Annexes

Procedures for ordering full copies of citations


Procedures for ordering full copies for International Searches from
ES&S

1. After finalising the list of patent documents for which full copies are required
for further consideration, Examiners should fill out the "International Full
Specification Request" (IFSR) from their lotus notes email stationary items (a
copy of which is attached to this annex at Annex G.3). They should first fill in
the box that identifies if the request is for a paper case file or for an electronic
file. If documents are required for an electronic file the examiner is to fill in all
the boxes in relation to the type of case. The first choice is for National or
International cases then, depending on the type of the case, the choices are
Standard, Innovation or 15(5).

2. ES&S will deliver paper requirements including a copy of the examiners


request back to the examiner on completion of the request.

Electronic documents will be downloaded or scanned into the V drive, including


a copy of the IFSR, and the examiner will receive an email when the request is
completed.

3. If the required document is in the English language, this is how the document
will be received by the examiner.

If the required document is in a foreign language, ES&S will access Esp@ce


and check for any equivalents that are in the English language. The order of
preference that will be supplied is US, GB, EP (English), WO (English), AU and
others (eg CA).

4. If the examiner requires the document in the foreign language, the examiner
must annotate in the request under the "Comments" column, eg "DE only" or

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'"FR only", next to the foreign number. ES&S will then supply the document
as required.

5. For JP or SU/RU requests, ES&S will look for equivalents in the English
language. If no equivalents are available in English, no document will be
supplied, unless specifically requested.

Abstracts for these countries need to be specifically requested.

6. If you request a JP abstract number, please indicate whether the number you
are requesting is a Publication number or an Application; subject title is also
helpful. If there are no equivalents for the JP request, the Derwent abstract
will be used as the main document for citing purposes.

7. A preferred maximum number of citations ordered is around twelve (12).

NOTES

1. With the documents ordered, ES&S will write comments in regard to what
they have supplied in the "Comments" column on the IFSR form.

2. ES&S will contact the search examiner if comments in the IFSR are not clear.

3. When supplying full copies of specifications, ES&S use the following


procedure:

If the cited document is in English, then the cited document is


prepared and sent up;

If the cited document is in a foreign language, then ES&S sends up a


full copy of the family equivalent in the order of preferences listed:

US, GB, EP (English), WO (English), AU and others (eg CA)


and,

If there are no English equivalents, then the foreign language


document is prepared, with the exception of JP/SU/RU abstracts (see
Item VII in the new procedures)

4. The following instructions (Annex G.3) and form are for setting up the FULL
SPECIFICATION REQUEST form in Lotus Notes (R5) as a stationery item so
that you can use this form to order documents from EXAM SUPPORT. The
form and instructions can be found on the Intranet ES&S database under
[Customer Service/Examination Support (ES&S)/Ordering Full Specis
(Examiner's only)].

IFSR email Form Instructions

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1. Highlight the entire template below

2. Place the cursor over the highlighted text and right mouse click.

3. Select Copy from the menu (left mouse button). You can keep this message
open to follow the rest of the instructions.

4. Ensure your Inbox is displayed.

5. Select Stationery | New Stationery | Memo Stationery

6. Address the new stationery message to Exam Support/CBR/IPAustralia (this


can be obtained from the IP Australia address book under File Management,
Patent). Enter a subject, ie FULL SPECIFICATION REQUEST.

7. Place the cursor in the message body and right mouse click.

8. Select Paste

Result: The template is copied to your current location.

9. Enter your name, location and phone extension.

Note: Do not Tab between tables. Use the mouse to move from one table to
the next.

10. When you have entered your details, click Save

Result: A dialog box is displayed asking for a title for the stationery.

11. Enter FULL SPECIFICATION REQUEST

12. Click OK

13. Each time you need to send Exam Support a request for a document, open
this stationery item and enter the relevant numbers needed

14. Click Send or Send and File

15. To amend the stationery, select the form in the stationery folder but do not
open it.

select Actions | Edit

amend any of the details

click Save

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Annex S - Refund of search fees


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Guidelines for PCT International Search Refunds

1. Introduction

PCT Rules 4.11, 16.2, 16.3 and 41.1 deal with refunds of international search
fees.

Rule 16.2 sets out particular circumstances in which it is appropriate to refund


the search fee in its entirety. Those circumstances are:

i. the applicant withdrew the PCT application before any work had begun on
the search; or

ii. the Receiving Office i.e. AU Patent Office, declares that the PCT
application shall be considered withdrawn e.g. due to non-compliance
with Article 14 of the Treaty and no work has commenced on the search.

PCT Rules 4.11, 16.3 and 41.1 relate to partial refunds pursuant to the clause in
the agreement between the Australian Patent Office (in its capacity as an
International Searching Authority) and WIPO which states:

Where the Authority benefits from an earlier search, 25% or 50% of the
search fee shall be refunded, depending on the extent to which the
Authority benefits from that earlier search.

A partial refund may be applicable in the following circumstances:

i. an international application claims priority from an earlier international


application for which Australia was the International Searching Authority;
or

ii. where specific reference is made in item VII - 2 in the Request for a
refund in view of an earlier search performed by any International
Searching Authority or national Office. In the case of an earlier search
which is not carried out by the AU Patent Office, the earlier search results
or a reference to where the search results can be accessed must be
furnished at the time of filing or indicated in the request form, respectively.
Additionally, In the case of an earlier search which is not carried out by
the AU Patent Office, if considered necessary the applicant may be
invited to provide:

a copy of the earlier application

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a translation of the earlier application if not in English

a translation of the search results if not in English; or

The invitation should be made by the examiner on PCT form PCT/ISA/238


and forwarded to PCT Unit for despatch.

Note: that although the PCT Rules also permit an ISA to invite an
applicant to provide copies of documents cited in the earlier search
reports, this is not to be done. Examiners should obtain copies of cited
documents by using the usual mechanisms, namely from the internet or
by requesting the library to obtain the document(s). If a citation cannot be
accessed in this way it should be disregarded and this should be taken
into account when determining the quantum of the refund.

Apart from the refunds mandated by PCT Rules 4.11, 16.2, 16.3 and 41.1,
another situation in which the AU Patent Office may partially refund the
international search fee is if it declares a PCT application unfit subject matter for
a search and/or is unsearchable.

2. Guidelines for the quantum of refund under Rules 16.3 and 41.1, or where
a PCT application unfit subject matter for a search and/or is unsearchable

a. Refund 50%

Applicable in circumstances where:

i. the search report is wholly based on the results of an earlier


search, i.e., no additional searching effort is required other than a
top up search of the intervening period, and no significant
categorising of citations is needed; or

ii. the ISA declares PCT application unfit subject matter for a search
and/or is unsearchable, hence no search report to be established.

b. Refund 25%:

Applicable in circumstances where:

i. the search report is substantially based on the results of an earlier


search, but additional searching effort, which does not need the
formation of a 3-person team, is required; or

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ii. the relevance of the earlier search results upon which the search
report is wholly based needed to be reconsidered due to
significant changes in scope of the invention claimed

Cases which require the formation of a 3-person team to consider the


search strategy even though the original search could be used are not
eligible for any refund.

For the purposes of these Guidelines, where the subject matter is the
same as that for the earlier search, the earlier search was conducted by
the AU Patent Office and the earlier search conducted was clearly
inadequate in respect of that subject matter, no account should be taken
of the additional searching effort arising from the inadequacy of the earlier
search. This does not apply in the case of earlier searches conducted by
other offices. Reliance on these searches is discretionary.

3. Preliminary Actions

3.1 Before the Search file is sent to the examination sub-sections, PCT Unit
checks the request inter alia to see if box VII contains information relating
to an earlier search. Typically, this information might include a provisional
application number, a date of the request for search and a search job
number, or a reference to where the search results can be accessed.

3.2 Where such a notification is found, PCT Unit will staple a tag Refund? to
the file jacket.

4. Search Examiner Actions

4.1 The search examiner should also check the request to see if there is a
notification of an earlier search.

If the request cites an Art 15(5) search and that the applicant wishes this
to be taken into account during the searching of the current application,
then the examiner should consult PAMS to find the details of the prior
search to determine how much new searching is required and what
amount of refund would be due.

If the request cites a search report carried out by another International


Authority or Office, the examiner should assess whether it is necessary to
invite the applicant to provide any of the following:

a copy of the earlier application

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a translation of the earlier application if not in English

a translation of the search results if not in English

4.2 The search examiner formulates the proposed search for the PCT
application and, together with the sections international on-line specialist,
decides whether:

i. only an update of the earlier search need be prepared; or

ii. the search needs to be extended into other classification areas not
considered in the earlier search.

In formulating the proposed search, the claims and/or search statements


of both applications should be carefully compared to determine whether
the proposed search is to differ from the earlier search.

4.3 On completion of the search, the file should be given by the examiner to
his or her Supervising Examiner. A brief file note (see 1.1.12.5.9 Refund
Due) as to the extent of the search, in the light of the earlier search, and
advising as to the quantum of refund to be granted should be included in
the file to assist the Supervising Examiner in deciding the amount of
refund, if any. The Supervising Examiner should indicate on the file
concurrence, or otherwise, with the approach taken by the examiner,
giving reasons where appropriate.

4.4 Upon receipt of the completed search report, the Supervisor considers
whether a refund is appropriate, and if so what proportion of the search
fee should be refunded. Cases involving circumstances which are out of
the ordinary and which the Supervisor is unable to resolve should be
referred to DC(A).

4.5 Form PCT/ISA/213 is completed if a refund is recommended.

4.6 If a refund is not appropriate, form PCT/ISA/224 is completed; this should


include notification of why no portion of the search fee is to be refunded,
eg:

Reference is made at Box VII of the Request accompanying


PCT/AU199x/xxxxxx to an earlier search carried out on Australian
Provisional Application No. Px xxxx. The results of the earlier
Search were taken into account when preparing the search report
on the PCT application but an entirely new Search had to be
performed. Since this Office as the International Searching
Authority did not benefit at all from the prior search, the payment of
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a refund is not appropriate.

4.7 The Supervisor signs the appropriate form as authorized officer and
forwards the search file to PCT Unit.

4.8 If a refund has been approved, PCT Unit completes a Treasury claim for
refund and arranges for the refund and notification (form PCT/ISA/213) to
be sent with the ISR to the applicant or its agent.

4.9 If a refund has not been approved, PCT Unit arranges dispatch of form
PCT/ISA/224 together with the ISR to the applicant or its agent.

ISR quality checklist


ISR Quality Checklist

Reference: International Searching Search Report and Notification Form Completion

Address for service is that on the latest correspondence from the applicant or
agent.

Applicant's/agent's reference number is from the latest correspondence from


the applicant or agent must be used. Note that the latest correspondence from
PCT will not necessarily indicate the latest reference number.

Filing date is automatically entered when the International Search Report word
macro is used. This information is on the front of the jacket and also on the front
page of the PCT Request Form.

Priority date is automatically entered when the International Search Report


word macro is used. This information is also in PCT Request Form Box VI.

All relevant Boxes crossed and related explanation given.

IPC marks are valid in the current edition of the IPC.

Electronic data bases identified correctly and relevant keywords used are
noted.

Citations

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Identification for example, Correct Derwent Accession Numbers,


Application numbers, Journals etc.

Publication date

ISO completed

Evidence of Examination sheet completed

Annex V - Internet searching

Internet searching 1
Internet Patent Searching Guidelines

Introduction

The Internet searching group was asked to investigate the usefulness of the Internet
for patent searching purposes and to recommend guidelines with the following
constraints:

Searching is of PCT minimum documentation

Searching patent information NOT NPL (NPL to be considered later)

Limited to sites currently available to examiners ("free sites")

The group collected data on current searching practice and consulted with a
technical panel of examiners and senior examiners on the features offered by the
sites available.

The following comments and guidelines apply to all original searching.

Usefulness of the Internet

The working group agrees that patent searching on the Internet presents
opportunities to reduce costs and improve the quality of our searches but only where
that tool is used intelligently to enhance the effectiveness of the standard WPAT or
CAS search. In this regard the time resource expended on Internet searching must
be regarded in terms of the time saving it will produce in the WPAT or CAS search.
Generally this will be by a narrowing of the search field. Internet use without a clear
strategic objective is not justified.

Generally the data collected showed that examiners are making appropriate
judgements and are receiving benefit from their Internet use. However some
feedback suggests that long Internet sessions are being conducted (up to 3 hours)
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without any benefit identified. Hence it is appropriate to provide some guidelines to


assist examiners in their value judgements concerning the Internet.

Security

The Commissioner, Deputy Commissioners and employees of the Patent Office are
under legal obligation not to disclose information about matters proceeding under the
Act except where required or authorised by the Act, eg at OPI (Section 183). See
also Article 30 of the PCT. Our customers rely on these provisions in their
commercial and IP strategies and a perceived failure in our confidentiality obligations
would have serious implications for our ability to attract searching work and for the
prestige of the Office; an actual failure could result in a legal claim for damages.

Before commencing a search on the Internet it is paramount that examiners consider


whether their proposed search terms would amount to disclosing the searched
invention over the Internet. A selective keyword search, generally associated with
mechanical and electrical technologies, is unlikely to disclose the invention. To avoid
such disclosure it is best to use only a few search terms, at least initially. The
number of search terms can then be increased in stages until an appropriately
focused result is achieved. However it is essential to check at each stage that the
invention would not be disclosed by the increased number of search terms.

In some areas of chemistry and bio-chemistry, the entry of a specific alloy, compound
or gene sequence may disclose the invention over the Internet. Consequently the
entry of such terms over the Internet is unacceptable. It is more appropriate to use a
dedicated and secure communication medium for this purpose.

Generally the Internet is an insecure communication channel. Hence it does not


matter whether database providers assure confidentiality or not, or whether providers
log accesses to their databases or not. The primary issue is the level of security of
the communication medium to the database. It may be that the Internet could be
made secure if appropriate encryption techniques over the Internet were employed.
While such developments may overcome security concerns in the future, the
principle to be followed is that we are not to enter anything over the Internet that
discloses the invention.

Guidelines

The attached flow chart (Annex V.5) outlines the recommended procedure with
guidelines for key decision points. Ultimately the optimum use of search tools for any
particular case is dependant on those individual circumstances and examiners are
expected to use their professional judgement in conjunction with the views of the
three person search team and if necessary in consultation with senior or supervising
examiners. The guidelines are repeated below with their explanation.

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Will a quick Internet patent search assist in refining or validating the search
strategy?

An Internet patent search may be appropriate where:

IPC doesn't cover invention well

Not confident about keywords

US uses different terminology

Art is largely US based

Technology is not well understood.

Search is not dependant on viewing drawings or chemical structures

"King Hit" citation is very likely

Explanation:

The points listed above are some of a number of situations where the benefits of
using the Internet are likely to justify the time spent. It should be remembered that the
databases on the Internet are a subset of those available through Derwent and if an
Internet search is not likely to produce a change in the eventual WPAT/CAS search
strategy, or confirm the validity of a narrowly focused strategy, it shouldn't be done.

Choose Internet site/database.

Irrespective of the site/database chosen, we are not to enter anything over the
Internet that discloses the invention.

Keyword searching: USPTO site (abstract search) is most recommended followed


by Espace.

Piggy back searching: IBM site is most recommended followed by USPTO.

Explanation:

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The choice of the internet site used in any particular case will ultimately depend on
the nature of that case. However, there are a number of limitations that should be
taken into account when deciding which site to use. In summary these are:

USPTO At the USPTO site it is possible to conduct complex searches of US patents


on either the abstract database or the full text database. In most cases the abstract
search would be adequate. Full text searching is much slower and should only be
done in cases where there are good reasons for doing so (perhaps the three person
team should be consulted in these cases if a significant amount of time is going to be
spent). Claim searching is possible and may be a useful option in some cases. It is
possible to do piggy back searches however titles of the prior art are not provided.

Espace In Espace it is not possible to perform a complex search. The maximum


number of search terms is about 5. Another major disadvantage is that truncation of
the search term is not possible. The major advantage of Espace is that one search
can cover patents from the main countries. It can also be useful for searching
excluded subject matter that would not be patentable in the US. Piggy back
searching is not possible in Espace since the prior art is not listed anywhere as a
hyperlink.

IBM The IBM site is a commercial site. Consequently we need to be sensitive to our
customers' views about using this site. For instance a patent applicant, who may be
a competitor of IBM, may view our use of the IBM site as leading to possible
disclosure of their invention to a competitor. The use of the IBM site must be
determined with such considerations in mind. The same considerations apply if use
of any other commercial site in any other technological field is contemplated.

At the IBM site it is possible to conduct complex searches of the abstract and claims
of US patents and complex searches of the abstracts of EP, WO and JP patents. It
is noted that on this site each country must be searched separately.

Piggy back searching is very convenient on this site because the titles of the prior art
documents are provided with each patent. This allows scanning of the titles before
looking at the abstract of the prior art. This makes the IBM site the preferred choice
for piggy back searching. If appropriate, patent numbers can be extracted from a
keyword search on USPTO or Espace and then transferred to the IBM site for piggy
backing purposes.

Continue Internet search?

Stop if highly relevant art is not found after several set of keywords are entered.
Normally the benefit of an Internet search is obtained in the first 10 to 15 minutes.

Any search taking more that 15 to 30 minutes which has not produced significant
value should be terminated and the matter discussed with the three person team.

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Explanation:

The data collected indicates that best practice lies in short Internet searches that
produce either citations or better keywords that help to confine the WPAT/CAS
search. Elaborate keyword strategies developed on the Internet (often with the full
text option) are usually too narrow to transfer to WPAT and this suggests that the
time taken to develop them is not well spent.

There are however rare circumstances when narrow full text searching is
appropriate, eg if a key distinguishing feature of a claim is likely to be mentioned only
in the detailed description of the prior art.

Piggy backing?

Piggy backing (on the Internet or otherwise) is justified where there is some certainty
that better X citations will be found and (if done before the WPAT search) there is
some risk that they will not be identified in the WPAT/CAS search.

Explanation:

Piggy backing (or forwarding) is an old technique that is facilitated in many ways by
the linking of documents on the Internet, particularly from US reference lists but also
from EP and GB search reports. It is however a time consuming activity and should
not be done merely because the facility exists. Usually it is done after the WPAT/CAS
search and potentially produces highly relevant art that would not otherwise be
located. If it is done before the WPAT/CAS search there must be a good indication
that better citations will be obtained that allow a narrowing of the subsequent search
or that could not be located by other means. Using piggy backing to locate
documents that are not more relevant or that will be turned up anyway by the
WPAT/CAS search is a waste of time.

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Obtaining full text from internet


Obtaining full text patent documents for ISRs from the Internet

Background

The section heads group is currently investigating searching and retrieval of patent
documents for ISRs from the Internet. The purpose is to ensure that the best
practice is achieved from our use of the Internet. It is expected that a number of
Internet sites will be thoroughly investigated and best practice in their use for
searching and retrieval will be identified.

As a temporary measure, the section heads group recommend the following as


current best practice to examiners for obtaining for ISRs the full text of published
patent documents.

Definitions

By obtaining, is meant viewing the full text of the patent document on-line, printing
the full text on-line, or ordering the patent document from ES&S.

For the purpose of this document a distinction is made between a text form and an
image form of the patent document. A text form is one comprising text only,
without columns, page, and line numbers of the published paper document.
Drawings and chemical formulae are not present in the text document. On the
other hand, an image form is an electronic photocopy of the published paper patent
document. Drawings and chemical formulae are present in the image version.

Practice

Based on the information available at present, we have identified the following as


current best practice has been identified. (Examiners should remember that these
recommendations are merely reflective of our current understanding about the
Internet and may be modified later). The expectation is that examiners will follow
current best practice. The starting point for this practice is when examiners, having
completed an abstract search, have a short list of abstracts for which they want to
obtain full specifications for detailed culling.

Paper copies on file

The current practice of placing paper copies of the 'image' versions of the citations on
file remains unchanged. Image versions of patent documents are currently much
slower to view and print as compared to the text version of the document.

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Ordering from ES&S

Examiners should continue to order all the documents from ES&S where they
have any doubts about the value of using the Internet.

Culling on line

Examiners should only cull from text. If the examiner needs to view drawings or
chemical formulae then retrieval of the full documents from ES&S is recommended.

This issue of culling on line is currently being looked at and further advice will be
given in due course. However, at this stage, it is clear that it would be a waste of
examiner time to cull using the image version of the document.

Printing on line

Printing of the image from the Internet is more efficient than retrieval from ES&S in
the following circumstances.

if only a few documents are required to be printed for the ISR report,

if there are only a few pages in each document,

Espace is the recommended site because it is the only site that examiners currently
have access to capable of providing high quality for image retrieval.

Flow Chart

A flow chart of the current process for obtaining documents for ISRs is attached.

Observations

The following observations about the 3 major Internet sites are also made:

The IBM site is currently not suitable for obtaining full text documents
because of the poor quality of its images and because its prints contain site
references.

Currently the USPTO full text site provides text versions of US patents from
1975 without drawings or chemical formulae. While image versions are
becoming available, the site is not yet reliable.

Espace has full image versions including drawings and chemical formulae of
EP, WO and US since 1920. The database contains an English language
abstract of the patent document from 1975. From 1975, the full text of the
patent may come either as text and/or as images but prior documents may
be only available as images. The image version is as good as the quality

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obtained from ES&S. The image version is a clean copy in that it does not
contain any site references on its pages.

A number of patent sites including USPTO and Espace are currently being looked at
in detail. When these investigations are complete, the above practice will be
reviewed.

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Annex X - Search and retrieval of Japanese patents

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Search and retrieval of Japanese patents 1


Guidelines for Searching and Retrieval of Japanese Patents
on the Internet
(20 September 1999)

Part A: Searching Japanese Patents on the Internet

Introduction

The Internet Searching Group was asked to investigate the usefulness of the Internet
for patent searching purposes and to recommend guidelines. The document
"Internet Patent Searching Guidelines" which has already been released provides
guidelines relating to the use of the Internet as a preliminary search tool before
searching the existing commercial databases (WPAT, CAS etc.).

This present document is primarily concerned with providing guidelines to assist


examiners in their judgement as when to search Japanese documents by the Internet
as a replacement to the existing procedure involving Orbit.

Security

This issue has been dealt with in the document "Internet Patent Searching
Guidelines" and the policy provided there applies equally to searching Japanese
documents on the Internet. In summary, the policy is that examiners must be careful
in their use of search terms so as not to disclose the invention on the Internet.

Advantages of the Internet for searching Japanese documents

In looking at the advantages of the Internet for searching Japanese documents, it is


necessary to first look at the present procedure of searching JAPIO via Orbit. To
search JAPIO the on-line examiner enters the search terms into the JAPIO database
to obtain a list of numbers. The documents that have already turned up in the WPAT
search (and viewed on PAIS) are then subtracted from JAPIO list. The remaining
abstracts are then retrieved either by (a) printing on-line (where no drawings or
chemical structures are required) at US$1.00 per abstract, or (b) sending a list of
document numbers to ES&S who retrieve the abstracts from CD or paper volumes.
Either way the procedure of retrieving the abstracts is expensive in on-line costs and
sometimes labour costs. During 1998 approximately $14000 was spent in on-line
costs for searching JAPIO (compared to $60000 for searching WPAT). Due to these
retrieval costs the examiner/search strategy team in most cases will conduct the
Derwent search before determining whether a JAPIO search is worthwhile.

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A disadvantage of the Internet is that the subtraction of the documents obtained via
WPAT cannot be performed and so the Internet search would in many cases turn up
at least some documents that the examiner has already viewed.

At present there are four free sites on the Internet which allow searching of Japanese
patents. This presents an opportunity for significantly reducing our costs in searching
Japanese patents.

Searching Guidelines

The attached flowchart (Annex X.6) outlines the recommended procedure with
guidelines for key decision points. Ultimately the optimum use of search tools for any
particular case is dependant on those individual circumstances and examiners are
expected to use their professional judgement in conjunction with the views of the
search strategy team. The guidelines are repeated below with their explanation.

Summary

If a JAPIO search is necessary, the examiner should use the internet (TUI site is
most recommended) to view abstracts and/or to obtain a search list for ES&S unless
Orbit can be used to obtain a significantly smaller search listing or in a manner that
significantly reduces examiner time and/or costs. The examiner/search strategy
team can use their judgement based on past experience of similar cases in
determining whether to first try the internet for searching JP documents or to go
straight to Orbit.

Is a JAPIO search worthwhile?

The current practice is that after the examiner has viewed the Derwent abstracts on
PAIS, the examiner/search strategy team decides whether to search JAPIO. The
factors that are taken into consideration in making this decision include:

The level of JP coverage by WPAT in the particular technology. See Annex


X.9.

Whether good citations have already been found

The likelihood of finding better citations in JAPIO

The relevance of the Derwent abstracts of Japanese documents viewed on


PAIS

The level of Japanese activity in the art (can be assessed from the Derwent
search)

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This practice should remain unchanged. The search strategy team should be
consulted in making the decision as to whether JAPIO is searched.

Enter safe search terms

For security reasons the examiner must only enter search terms on the internet that
do not disclose the invention. In the first instance only a small number of terms
should be entered and the results that are obtained are then used to evaluate
whether extra terms should be entered in order to obtain a search listing of
manageable size. The examiner must ensure that any extra terms that are entered,
in conjunction with the initial terms, do not disclose the invention. If in doubt the
examiner could consult the search strategy team to determine which search terms
are likely to be "safe" for entering into the internet.

Which Internet site?

There are four free sites that enable Japanese patents to be searched. These are
listed in detail in Annexes X.7-X.8. In summary, the recommended site is Technische
Universitat Ilmenau (TUI) for most cases. However, other sites are not excluded and
may be preferred in certain circumstances. This is left up to the examiner's
judgement. In summary the sites are:

Technische Universitat Ilmenau (TUI) This site allows complex searching back to
January 1976, it is fast and it generally only contains abstracts of Japanese patent
applications without foreign priority.

The complex search is probably best performed by entering the search terms in the
"Words anywhere" field in the format: (C23C022$ or C23F011-18) and (mo or
molybd$). Other ways of entering the search terms are possible.

Espace This site only allows simple searching back to November 1976. The
maximum number of search terms is about 5 and truncation is not possible. No
drawings or chemical structures are easily viewable with the abstracts (although
drawings are accessible if one is prepared to wait).

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Japanese Patent Office This site allows searching back to January 1993. A major
advantage of this site is that the drawing or chemical structure is available as an
image embedded in the text of the abstract. Truncation of search terms is not
possible but the database automatically "stems" the keyword. IPC marks can only be
entered at the subgroup level and cannot be truncated. Also, although the site
seems to indicate that more than one IPC mark may be entered, it seems that only
documents related to the first IPC mark are retrieved. This site is sometimes slow.

IBM This site allows complex searching back to January 1994. No drawings or
chemical structures are available with the abstracts.

The Espace and IBM sites provide access to the drawings/chemical structures but
not in a format that would be efficient for searching purposes.

Size of search list

If after entering the safe search terms a small search list is obtained then the
abstracts are viewed on the internet or if drawings are required the search list should
be printed and sent to ES&S who will retrieve the abstracts (with drawings) from CD
or paper sources. Where possible the examiner should cull (by title or abstract) the
list that is sent to ES&S in order to reduce the labour involved in retrieval.

If a large search list is obtained, the examiner should enter extra safe search terms
if possible. If this is not possible and titles cannot be conveniently used to cull the list
then the examiner should consider whether an Orbit search would significantly
reduce the size of the search list (see below). The three person search strategy
team could be consulted as to whether an Orbit search should be conducted instead.

The terms small and large as used in the flowchart are dependant on the nature of
the invention being searched. In some cases a quick scan of the title and/or abstract
is all that is needed to determine the relevance of the abstract. In these cases a
small listing may be somewhat larger than in those cases where a more detailed
consideration of the abstract is necessary (for example in very close arts). This
decision is left up to the examiner as to whether the search list is of adequate size.
The three person search strategy team could be consulted as to whether an Orbit
search should be conducted instead.

Would an Orbit search reduce the numbers significantly?

The size of the search list may be significantly reduced for one or both of the
following reasons:

if there are extra search terms that could not be used on the internet for
security reasons

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if there is a reasonable overlap with the WPAT search that could be removed
from an Orbit search list. See Annex X.9 to evaluate the overlap.

If the Orbit search would lead to a significant reduction size, time or cost of the
search then this would be the most efficient way to go in terms of overall efficiency. If
Orbit would not lead to a significant reduction in the search size then the examiner
should use the internet to view the abstracts and/or to obtain a search list to send to
ES&S. The examiner/search strategy team can use their judgement based on past
experience of similar cases in determining whether to first try the internet for
searching JP documents or to go straight to Orbit. However, if in doubt it may be
worthwhile to try the internet first.

Search and retrieval of Japanese patents 2


Part B: Retrieval of Japanese Documents via the Internet

Abstracts

In our normal search procedure we cite English language abstracts of Japanese


patent applications. These documents are normally found during a WPAT or JAPIO
search and the abstract viewed is the one that is cited. Therefore, the retrieval of
abstracts of Japanese documents is normally not an issue. Occasionally the
examiner may need to order an abstract from ES&S.

With our revised procedure where the examiner may use the Internet for searching
Japanese documents, the examiner may need to retrieve a paper copy of a cited
abstract which can be placed on file in case the attorney orders a copy. The four
sites listed above all provide the JAPIO abstract. However, only the JPO site
provides the drawings in the search abstract. The IBM site offers an image of the
abstract containing the same content as the JPO abstract but set out in a different
format. Espace offers the abstract in text form and the first page of the drawings in
image form (this may be the same or different to the drawings in the JAPIO abstract).
TUI does not provide the drawings in any format. The question as to whether
examiner need only to supply the abstract that is available from the Internet or to
supply the "official" version from ES&S has yet to be resolved. Until this issue is
resolved, examiners should obtain the "official" version from ES&S of any JP abstract
that is cited in an ISR.

Where the examiner has a JP patent number (e.g. admitted prior art) and wishes to
view the abstract then the site chosen to view it will depend on the year and whether
a drawing or chemical structure is required. A summary of the sites is provided
below:

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Full Document

On the odd occasion the examiner needs to access the Japanese full document in
order to view drawings etc. which may provide the additional information required for
a citation. In the present process the examiner orders this document from ES&S who
retrieve it from Hume. ES&S are retrieving full text JP documents about once a week
and they estimate that the real cost of storage and retrieval is probably about $100
per ordered document. Espace provides the image version of the Japanese full
document in its B3 database from 1974 (its completeness is uncertain).

It would seem that Espace would be a quicker and more efficient method of retrieving
the full document rather than ordering from ES&S, especially since the examiner may
only need to view the drawings rather than the full document. Therefore, whenever
possible the examiner should check Espace before ordering full text JP documents
from ES&S.

Search and retrieval of Japanese patents 3


Searching Japanese Patents on the Internet

Summary

If a JAPIO search is necessary, use the internet (TUI site) to view abstracts and/or to
obtain a search list for ES&S unless Orbit can be used to obtain a significantly
smaller search listing or past experience has shown that Orbit will be more efficient.

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NPL searching of internet

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Guidelines for Non-Patent Literature Searching on the Internet

The same security considerations apply for NPL searching as for patent searching.
For a discussion of the security issues involving use of the Internet, see Annex V:
Internet Patent Searching Guidelines.

Some NPL databases are available both over the Internet and via dedicated
connections such as STN and Questel/Orbit. All search considerations being equal,
it is preferable that searches be performed via dedicated connections for reasons of
added security. It is essential that searches, involving the use of search terms that
might disclose the invention, be conducted via dedicated connections.

In some areas where potential disclosure of inventions through search terms is not
an issue, experience amongst examiners has shown the Internet to be more efficient
than dedicated connections. Predominantly this has been due to the ease of use of
Internet sites and particularly the ability to cross-link from various sites. For reasons
of efficiency it is appropriate that the Internet is used in this way in such
circumstances.

When is it appropriate to search NPL?

In the majority of cases the expectation is that a search of patent literature will
suffice. If no citable art is found in the patent literature but examiners believe citable
material should exist in the NPL, then it may be appropriate to consider a NPL search
on the Internet. However NPL searches on the Internet should not be a routine
activity.

In some technologies (eg biotech, electronic commerce) NPL is known to be more


valuable than patent searches. In such cases it is appropriate to make NPL
searches the primary search.

Which NPL sites and databases should be searched?

The ISAs have agreed on a set of minimum documentation for international


searching. The recommended searching aids are Chemical Abstracts for chemical
inventions and Engineering Index for mechanical and electrical inventions. Further
examples in more specific fields are Medline and ANGIS.

There may be many other more updated sites and databases that are equally
appropriate for search purposes. The primary determinant of where to search is
those sites and databases likely to yield, in examiners' experience, the most relevant
prior art. Consequently the decision on choice of areas to search rests with
examiners. It is not possible to be prescriptive in this area. Any sites and databases
that are discovered to be of potentially wider or longer term use should be brought to

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the attention of the Internet Technical Team for assessment and the issuing of
appropriate guidelines across patent examination.

Another determinant in selecting search areas is the ability to establish publication of


material found on electronic journal sites, databases, and independent web sites. If
equivalent paper versions are found to exist then there is no issue regarding
establishment of publication and such material can be readily cited.

On the other hand, sources of material found solely on the Internet fall into two
categories. The first is that of respected electronic journals, magazines and abstract
services. Many scientific, electrical and medical journals are now published only
electronically; e.g. on the Internet. Since existing material in these databases
remains static, the publication dates associated with such material can be accepted
at face value as we do for patent specifications.

The second category is that of independent web sites. The material found on such
sites can be very fluid, being subjected to continual change in content or even
removal altogether with little indication of what content was available at any point in
time. In these circumstances it is difficult to uphold arguments of publication of
appropriate material, the Internet Archive Wayback Machine may be able to establish
a prima facie publication date for the web page, or to find out what the particular web
site looked like and what information it disclosed at a particular date in the past.

However, if the only citation (or the best citation) is that found on an independent web
site, and a publication date cannot be established using the Internet Archive, then
this should be cited with a print out of the relevant web page placed on file. Any
indication of the Internet publication date (e.g. "site last modified 5 May 1999) should
be taken in the first instance as the publication date. The aim of a search is to
identify relevant material. This should remain the case even for material having
dubious publication dates. The citation may not be able to be upheld during
examination in the light of applicants' submissions due to the uncertain publication
date. Nonetheless applicants ought to be made aware of relevant material that
would otherwise render a claim lacking novelty but fails to do so only on account of
an uncertain Internet publication date.

In the light of publication difficulties with independent web sites, it is far more
preferable to search and rely on material from sources in the first category rather
than the second category.

For international searches the citing of an Internet citation is under category "L"
together with "X", "Y", or "A" as appropriate. The L category should be used even
if the examiner is unable to establish the date of publication of the Internet disclosure.
The application of symbol "L" for Internet citations is documented in paragraph 11.18
of the PCT International Search and Preliminary Examination Guidelines
PCT/GL/ISPE/1.
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An example of the format for citing Internet citations is as follows (from WIPO
standard ST.14 page 3.14.5-3.14-7):

SMITH, J., How To Do An Online Search, Database Journal [online], Volume 17, No.
2, January 1999, [retrieved on 1999-05-30]. Retrieved from the Internet

How much time should be spent searching NPL on the Internet?

Experience amongst examiners suggests NPL searches on the Internet are generally
quick searches. The nature of Internet search engines and sites gives quick results.
Furthermore the Internet allows quick testing and refining of keywords.

The prevailing view amongst examiners is that if a search does not come up with
some citable art in 10 - 20 minutes then it's likely not to be found anywhere.
Consequently NPL searches on the Internet should be restricted to no more than 20
minutes unless there are exceptional circumstances.

Other uses of the Internet

Examiners also reported using the Internet for preliminary investigation of the art.
The main objects of this exercise were to enable examiners to maintain or update
their understanding of relevant technologies, to access technical dictionaries,
determine the state of the art, test and refine keywords, and to assist in
understanding the specification at hand. Such practice is acceptable to assist
examiners in their work so long as the practice is managed in reasonable proportion.

There was also a suggestion that sections using the Internet for NPL searching
develop and provide a list of favourite sites for their technologies. This would
enhance the efficiency of search strategy development where NPL is considered.
Where searches cross the technologies of more than one section this would also
enable sections to readily determine and conduct appropriate searches across the
two or more sections. Alternatively sites recommended by the Internet Technical
Team could be placed on the Intranet. This issue will be considered at some point in
the future. If sections identify suitable web sites, they should consider including them
on the appropriate section specific site on the Examiners Workbench on the Intranet.

USPTO kind codes


"Kind Codes" Included on USPTO Patent Documents

On January 2, 2001, the United States Patent and Trademark Office (USPTO) began
printing the World Intellectual property Organization (WIPO) Standard ST.16 code on
each of its published patent documents. WIPO Standard ST.16 codes (kind codes)
include a letter, and in many cases a number, used to distinguish the kind of patent

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document (e.g., publication of an application for a utility patent (patent application


publication), patent, plant patent application publication, plant patent, or design
patent) and the level of publication (e.g., first publication, second publication, or
corrected publication). Detailed information on Standard ST.16 and the use of kind
codes by patent offices throughout the world is available on the WIPO web site under
the links for WIPO standards and other documentation.

In addition, some kind codes assigned to existing USPTO patent documents were
changed due to the upcoming introduction of USPTO patent application publications
resulting from the American Inventors Protection Act of 1999 (AIPA). The first patent
application publications are expected to be published in Mid-March 2001. Thereafter,
patent application publications will be published weekly on Thursday. Additional
information on the AIPA, including the rules pertaining to publication of patent
applications, is posted on the USPTO web site.

The tables below give a summary of the kind codes which are no longer being used
on certain published patent documents as well as a summary of the kind codes which
will be used on published patent documents after January 2, 2001. It is
recommended that USPTO documents be identified by the following three elements:
1) the two-character country code (US for United States of America); 2) the patent or
publication number; and 3) the WIPO ST.16 kind code. For example, "US 7,654,321
B1" for US. Patent No. 7,654,321 where there was no previously published patent
application publication, and "US 2003/1234567 A1" for U.S. Patent Application
Publication No. 2003/1234567, published in 2003. Each year the numbering of
published patent applications will begin again with the new four digit year and the
number 0000001, so the number of a patent application publication must include an
associated year.

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1.2 International Type Searching

1.2.1 Procedural Outline - International Type


Search
Refer to 5.12 for PAMS processing of International Type Searches

1. Initial processing by ERA

2. Check person requesting search is applicant

3. Determine classification

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4. Consider unity of invention

5. Consider excluded subject matter

6. Request written search statement (if applicable)

7. Search performed using 3 person team

8. Order foreign patent abstracts through international on-line specialist and


perform PAIS search

9. Search non-patent literature

10. Order relevant non-patent literature from library

11. Order full copy documents from Exam Support & Sales (or download on-
line)

12. Assess which documents (incl. AU) to be cited

13. Receive and assess non-patent literature full copies

14. Prepare the search report

15. Attach EoE, Search Strategy and apology (where required) to the Ecase

16. Ensure the citations are on the V drive

17. Reassign the Edit Ecase Task and the Exam Corro Task to ERA via a
responsible examiner

18. Final processing by ERA

1.2.2 Introduction International Type Searching


The optional international-type (or Article 15(5)) search assists prospective PCT
applicants in determining, at an early date, whether or not to seek protection for their
domestic origin inventions in one or more foreign countries via the PCT route.

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International-type searches are by definition similar to PCT international searches


and similar considerations apply. [PCT/GL/2 Ch III/4.2]

"If the national law of the Contracting State so permits, the applicant who files a
national application with the national office of or acting for such state may, subject to
the conditions provided for in such law, request that a search similar to an
international search ("international-type search") be carried out on such application".
[Article 15(5)(a)]

Our Act provides authority for such a search to be carried out. The search must be
requested within 10 months of making the application and the fee payable is
specified in Schedule 7 Part 2 item 27. [Sec 194(c) Reg 19.2 (2)]

Should the applicant withdraw the request for an Article 15(5) search before an
examiner has taken any action with regard to the request, the applicant may request
a partial waiver of the fee, which will be considered in light of the particular
circumstances and will generally be 50% of the applicable fee. Upon a request being
made, the case will be referred by ERA to AGM(A) for consideration.

Note: When the situation arises that a request is made after 10 months, the PCT Unit
will contact the applicant/agent to inform them that we cannot guarantee that the
search results will be available within 12 months of the priority date. If,
notwithstanding this, they still wish to have the search carried out, then the 15(5)
case file will be sent to the relevant examination section.

All reasonable measures should be taken to complete these searches as quickly as


possible. The potential consequences of not doing so extend beyond Customer
Service Charter issues to the risk of there being financial detriment to the applicant.

The search examiner should aim to dispatch International-type searches within 4


weeks (See International Searching Annex T for apology time limits) of request date
and have the highest priority of all international searching. The priority for
international-type searches over other searches in the same category is determined
by request date order. There may at times be departures from the set time limit
where justifiable delays for unity, search statement requests or resources exist.

Nucleotide and/or amino acid sequence listings. The considerations for these listings
are found here.

1.2.3 Classification and Search Indication

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National applications on which an international-type search is requested will usually


be:

a provisional application, but could be

a complete application for a standard patent, or

an innovation patent application.

All examination details for PAMS cases are found in 5.12 of this manual

Upon receipt in this Office such requests are forwarded to ERA who will:

acknowledge receipt to the applicant/attorney along with any query relating to


search fees.

create an Edit Ecase task corresponding to the Australian application to which


the request for an International-type search relates

check that the search request was made by the applicant

establish a search request date which will be the date of receipt in this Office
where sufficient material exists for the search file to be assigned to the
examination branch and full fee payment has been made

establish the search report completion date as 4 weeks from request date

assign the edit ecase task to the preliminary sorter for reassignment to a
section.

On being assigned the edit ecase task [see 5.12.1 - Art 15(5) Examination Overview
and 5.12.2 Entering Art 15(5) Examination Details] the search examiner, and, if the
search examiner is not authorized, the authorized officer, should check to see that
the person requesting the Article 15(5) search is the patent applicant. If that is not the
case, the search cannot proceed. The underlying cause when this situation occurs
will usually be a clerical error somewhere in the process.

An international search is made on the basis of the claims, with due regard to the
description and the drawings (if any). It has been determined that a provisional
application which does not include a claim may be the subject of an international-type
search based only on the description and drawings. A notice has been placed in the
AOJP advising applicants to file a search statement with any search request based
on a provisional application. [Art. 15(3) Art. 15(5) Rule 33.3]

Where a search is carried out on the basis of a search statement provided by the
applicant, the search is not to be conducted on the basis of the search statement in
isolation. In formulating the search the search statement must be considered in the
context of the specification as a whole.

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Where the examiner has difficulty in determining the subject matter area which the
applicant desires to be searched, the examiner should not commence the search but
should advise the applicant of the situation and request them to provide a written
search statement by the responsible examiner (see 5.12.3).

If no reply is received within one month, the responsible examiner will send a
reminder letter to the applicant. If after a further month there is still no reply, or the
reply does not indicate any likelihood that a search could be undertaken in the near
future, then the responsible examiner, with the supervising examiner's concurrence,
will reassign the edit ecase task to ERA, informing them of the situation. ERA will
then advise the applicant that though IP Australia is unable to refund the fee paid for
the filing of the request under regulation 19.2(2) - see IP Australia's Refund Policy -
they may request a partial waiver of the fee, which will be considered in light of the
particular circumstances and will not generally exceed 50% of the applicable fee.
Upon a request being made, the case will be referred to AGM(A) for consideration.

1.2.4 Unity of Invention


An international-type search may be established on one invention only for each fee
that is paid (Schedule 7 Part 2 Item 27).

The examiner will consider the question of unity of invention in the same way as for a
normal international search (see 1.1.4 Unity of Invention). However, unlike PCT
applications, there is no statutory provision for inviting the applicant to pay additional
fees and the following procedure applies:

if the examiner considers there is lack of unity and a senior examiner is in


agreement, the senior examiner will write to the applicant advising that the
application does not comply with the requirements of unity of invention, giving
reasons, inviting an indication of which invention is to be searched and
advising that we are prepared to search one or more of the other inventions
upon payment of the search fee for each invention for which a search is
required (see Annex B for an example). A signed copy of the letter is to be
dispatched to the applicant, and a copy is to be attached to the Ecasefile
using the Create Corro function in PAMS (see 5.12.3 Requesting a Search
Statement).

no further action is to be taken by the examiner until a reply has been


received from the applicant. If no reply is received within one month, the
senior examiner will send a reminder letter to the applicant. If after a further
month there is still no reply, or the reply does not indicate that the search
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could commence in the near future, then the senior examiner, with the
supervising examiner's concurrence, will reassign the edit ecase task to ERA
with relevant comments. .ERA will then advise the applicant that though IP
Australia is unable to refund the fee paid for the filing of the request under
regulation 19.2(2) - see IP Australia's Refund Policy - they may request a
partial waiver of the fee, which will be considered in light of the particular
circumstances and will not generally exceed 50% of the applicable fee. Upon
a request being made, the case will be referred to AGM(A) for consideration.

the basis of the search actually conducted will be indicated in a search


statement on the first sheet of the report (see Annex C).

1.2.5 Subjects to be Excluded from the Search


The considerations described in International Searching - Subjects to be Excluded
from the Search apply equally to International-type searches. However, form
PCT/ISA/203 is not applicable to international-type searches and is not to be used.

Where the examiner considers that the application relates to excluded subject matter
to the extent that it is inappropriate to conduct the search, the matter should be
discussed with a senior examiner and confirmed by the supervising examiner. The
senior examiner should then write a letter addressed to the applicant advising that an
international-type search report will not be established on the application and give the
reasons. The letter should also state the following:

" In view of our finding that your application contains no patentable subject matter,
you may, if you wish, withdraw the application. Please note that IP Australia is unable
to refund the fee paid for the filing of the request under regulation 19.2(2) - see IP
Australia's Refund Policy. However, you may request a partial waiver of the fee.
This will be considered in light of the particular circumstances and will not generally
exceed 50% of the applicable fee.

Any request or other issues relating to fee waivers should be referred to DC(A).

However, as indicated in Subjects to be Excluded from the Search, the search is


done where practicable. If the search is conducted for some of the claims or aspects
of the application but not for others because they relate to excluded matter, the
reason for non-establishment of the report in relation to those claims or aspects
should be detailed in a REMARKS statement at the end of the report (using an extra
continuation of the second sheet if necessary).

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1.2.6 Obscurities, Inconsistencies or


Contradictions
A similar procedure to that given in 1.2.5 Subjects to be Excluded from the Search is
to be followed where the search examiner considers that a meaningful search is not
possible because of obscurities, inconsistencies or contradictions in the specification,
to the extent that it is impossible to arrive at a reasonable conclusion as to the scope
of the claimed invention.

1.2.7 Abstract and Title


The considerations which apply to an international application in this regard do not
apply to a national application and the examiner will take no action in the event that a
title or abstract is absent or unsatisfactory.

1.2.8 Search Report


Following completion of the search, the examiner will reconsider the classification in
the light of experience acquired during the search and will prepare an International
Type Search Report guided by the instructions in Chapter X of the PCT Search
Guidelines (PCT/GL/2). A completed example using an APO report form is shown in
Annexes C.1, C.2 and C.3.

Note: In view of the effort required and because international-type search reports are
never published internationally, provision of full citation family member details is not
necessary.

Although there is no PCT-imposed time limit for the establishment of the report the
responsible examiner will be responsible for ensuring that no unavoidable delays
occur in the prosecution of the search. The target time for completion of Article 15(5)
searches is 4 weeks (See Annex T for apology time limits) from receipt in a State

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Office. The usefulness of the search may be diminished for future applications after
12 months from the priority date of the subject application.

All bibliographic information for the report should, where possible, be extracted from
the patent request and not the letter requesting the search. This ensures that if the
situation referred to in 1.2.3 Classification and Search Indication occurs but is not
detected, the search will at least not be forwarded to someone other than the
applicant.

The first sheet of the International Type Search Report will indicate the total number
of sheets in the report. Blank sheets will be omitted from the report.

Note: Do not cross the box to indicate that the report "is accompanied by a copy of
each prior art document" as PCT Unit will determine if the applicant or attorney has
an account with us or should be sent a letter to allow them to request, and pay for,
citations.

The basis of the search that was actually conducted will be indicated in a search
statement on the first sheet of the report. (Annex C.1)

On occasion a specification will comprise a number of claims of which only some are
set out in the search statement but all of which are reported on against the
documents cited in the search report. In these circumstances the search statement
should contain, as a precursor, a sentence along the following lines: "The claims ......
to ...... have ... independent claims which are set out below. However the search has
covered all the claims of the specification as filed."

Where the invention searched involves a nucleotide and/or amino acid sequence
listing, the search statement should be set out in a format approximating as closely
as possible that used for an international search report.

Where the search examiner is not an authorised officer then, on completing the
report, he or she will include a copy of all citations in the search file, and forward the
completed search file to the responsible examiner. The copies of the citation will be
of good quality (ie. they will be the best reproduction that was possible and free of
any highlighting, language or other annotation and sketching).

Note: 15(5) reports do not require family listings.

The responsible examiner will, if in agreement with the report, indicate his or her
name as the "Authorised Officer". The Authorised Officer" will perform a quality
check in line with the Quality Standards, simultaneously bringing to the search
examiners attention any typographical errors in the process before forwarding the
search copy file to the PCT Unit. Examination sections have prime responsibility for

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eliminating errors occurring in reports. Effective quality assurance procedures should


be in place.

Upon return of the search copy file the PCT Unit will perform the following final
processing steps:

make three copies of the search report

where the applicant/attorney has requested a copy of the citations and has an
account with this Office then make one copy of each citation and prepare an
invoice. Otherwise prepare a covering letter stating that the citations are
available, itemising the cost

dispatch the original, one copy of each citation if the applicant/attorney has an
account and the invoice to the applicant/attorney. Otherwise dispatch only the
original under the covering letter

send to Records the search file containing the file corresponding to the
Australian application, one copy of the report and one copy of each citation

update the 15(5) search register with the date of mailing to the
applicant/attorney.

1.2.9 Public Availability


Article 15(5) searches are available to the public upon an FOI request being made,
provided that the search is in respect of a complete application or a provisional
application associated with a complete application, and provided that the relevant
complete application has been made open to public inspection. Otherwise the Article
15(5) search is protected by "commercial in confidence" considerations.

1.3 International Examination

Procedural Outline - Written Opinion of the ISA


and International Preliminary Examination
1. Initial processing (for international preliminary examination only)

2. The "report establishment" date (for international preliminary examination


only)

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3. Consider excluded subject matter

4. Consider validity of amendments (for international preliminary examination


only)

5. Consider unity of invention

6. Consider ordering priority document

7. Consider clarity and descriptive support

8. Consider novelty, inventive step and industrial applicability

9. Note formality deficiencies

10. Prepare a written opinion on form PCT/ISA/237 (ISO) or PCT/IPEA/408


(IPEO) or establish a report on PCT/IPEA/409 (IPRPII)

11. PCT Unit actions on opinions

12. Consider response to IPEO

13. Establish the IPRPII on form PCT/IPEA/409

14. Complete a Notification of Transmittal form PCT/IPEA/416 for IPRPII

15. Final processing by the PCT Unit

1.3.2 Introduction International Examination


The following procedures relating to international examination are supplementary to
the PCT International Search and Preliminary Examination Guidelines
(PCT/GL/ISPE/1) and are intended to facilitate an understanding and application of
the Guidelines by highlighting the essential steps to be taken by examiners and by
directing their attention to the relevant passages of the Guidelines, PCT Articles,
Rules and Administrative Instructions.

These procedures are to be used for international applications that were originally
filed either at RO/AU, or any other country such as RO/NZ for which Australia is a
competent International Searching Authority (ISA) and/or International Preliminary
Examining Authority (IPEA) (see 1.10.6 Current Status of APO AS AN RO ISA and
IPEA) as long as AU is the specified ISA and/or IPEA. The search may have been
performed by another ISA.

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The Guidelines are formulated to comply with the Regulations under the PCT in force
from 1 January 2004. They thus apply to all PCT applications filed on or after this
date. Such applications are readily differentiable from those PCT applications
filed prior to 2004 by the year component of the international application
number PCT/AU20xx/123456 used on the casefile cover and all official
communications, publications and other official documents applying from that
date.

Note: The expanded numbering system PCT/AU/20xx/123456 and WO


20xx/123456 took effect from 1 January 2004, and in the case of Australia applies to
all official communications, publications and other official documents in respect of all
PCT application numbers and publication numbers whether the PCT application was
filed before or after that date. The citing of pre 2004 documents in the new format
extends to the citing of such documents in reports and opinions, even if the
document has been cited in an earlier opinion or report according to the old format.
However, the old numbering system will be retained for data held in the mainframe
computer (PATADMIN, etc). This applies even for applications filed from 1 January
2004.

The primary objective of international examination is to formulate a preliminary and


non-binding opinion on the questions of whether the claimed invention appears to be
novel, to involve an inventive step (to be non-obvious) and to be industrially
applicable. A secondary objective is to identify whether the claims appear to have
any defects in the form or contents of the international application, the clarity of the
claims, the description, and the drawings, or whether the claims are fully supported
by the description. [Article 33.1 PCT/GL/ISPE/1 at para 3.02 and 19.02]

1.3.3 The Demand and IPRPII


The objectives of international examination (see 1.3.2) are achieved by establishing,
firstly, a Written Opinion of the International Search Authority (ISO), which, provided
no Demand is filed for international preliminary examination, is converted by the
International Bureau (IB) into an examination report entitled "International Preliminary
Report on Patentability (Chapter I)" (IPRPI) and issued 30 months after the priority
date of the application.

For many PCT contracting States who do not have an examining capability this
examination report serves as the only examination report in relation to the particular
application. The ISO therefore serves an important role and the examination must be
carried out according to a high standard.

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If international preliminary examination is demanded, the objective of international


examination is achieved by establishing an examination report entitled "International
Preliminary Report on Patentability (Chapter II)" (IPRPII).

The IPRPII is issued at 30 months after the priority date, as with the IPRPI. No IPRPI
is issued if international preliminary examination occurs. The IPRPII should be
preceded by at least one written opinion of the International Examining Authority
(IPEO) if and only if important matters arise. Unimportant matters, even if recognised,
are not to be raised in international preliminary examination.

The international preliminary examination will normally be performed by the examiner


who did the ISR and the ISO. If this examiner is not available and another examiner
authorised the ISR, then this examiner should perform the examination. If this
examiner is also not available, the section which has current responsibility for the
relevant IPC subclass is responsible for the conduct of the international preliminary
examination.

When unforeseen circumstances arise, such as the examiner being unexpectedly


absent within the anticipated time frame, and this is likely to prevent an international
preliminary examination action being completed within its target time, counter
measures should be adopted where practical. For example, transferring the case file
to another examiner for completion should be contemplated.

The person responsible for the international preliminary examination must ensure
that, under normal circumstances, all matters are completed in time to allow an IPEO
or IPRPII to be established within 4 weeks from filing of the Demand or response to a
previous opinion, as the case may be, in order to comply with the Customer Service
Charter Standards. The examiner must also allow at least three days for the PCT
Unit to process the IPEO or IPRPII. The 4 week period begins on the date the
Demand is filed, or the date a response is filed, and ends on the date of despatch
from IP Australia. If the IPEO or IPRPII is not established within the time frame stated
above, an apology must accompany the opinion/report.

Quality assurance should be given a high priority. Thus:

third and subsequent IPEOs, and

adverse IPRPIIs issued after a second IPEO - but only if the report is issued
following a response to the previous opinion

are, as a matter of practice, to be referred to supervising examiners for approval


before transmission.

Supervising examiners do not, however, need to routinely supervise:

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adverse IPRPIIs that are issued after a second opinion without a response to
the previous opinion having been received, and merely repeat the substance
of that previous opinion;

IPRPII's generally; or

ISO's.

Before international preliminary examination is commenced, the applicant may make


amendments according to Article 34.2(b) and the international preliminary
examination shall initially be directed to the claims, the description, and the drawings,
as contained in the international application at the time the international preliminary
examination is commenced, including any amendments made according to Article 19
(claims only), to the extent that they are not superseded or reversed by the
amendments under Article 34.2(b). [Article 19 Article 34.2(b) Rule 66.1]

In the case of the ISO, there is no provision in the PCT to amend the claims,
description or drawings up to this stage in the life of a PCT application when the ISO
is produced, other than to correct an obvious error under Rule 91. A Rule 91
amendment does not alter the scope of the claims, description or drawings.

International preliminary examination involves the following steps:

1. The applicant demands international preliminary examination.

2. The Demand is submitted directly to the competent IPEA (but see paragraphs
22.02 - 22.05 of the PCT International Search and Preliminary Examination
Guidelines (PCT/GL/ISPE/1) concerning Demands not submitted to the
competent IPEA); that IPEA conducts the international preliminary
examination which is essentially directed to the questions whether the
claimed invention is new, involves an inventive step (is non-obvious) and is
industrially applicable.

3. The IPEA may issue one or more written opinions and the applicant and the
IPEA communicate with each other during the international preliminary
examination and the applicant is given at least one opportunity to amend the
claims, the description, and the drawings; the IPEA issues its report which
does not contain any statement on the question whether or not the claimed
invention is or seems to be patentable according to the law of any country; it
merely states-by a "Yes" or "No"-in relation to each claim whether such claim
seems to satisfy the said three criteria and each such statement is
accompanied by citations and other explanations (see paragraph 3.22 of the
PCT International Search and Preliminary Examination Guidelines
(PCT/GL/ISPE/1)) finally.

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4. The report and, where requested, copies of the documents cited therein
which were not cited in the ISR, are communicated to the applicant and the
national Offices of the States in which the applicant wishes to use the IPRPII
("elected States").

The first international preliminary examination action will either be a second IPEO (as
the ISO is treated as the first IPEO) or an IPRPII (see 1.3.5 First IPE action for
further guidance).

1.3.4 Timeframe for Demand and IPRPII


The applicant must file the Demand with the competent IPEA before the expiration of
the later of the following time limits [Article 17(2)(a) Rule 43bis.1]:

three months from the date of transmittal to the applicant of the ISR and ISO
established under Rule 43bis.1, or of the declaration referred to in Article
17(2)(a) that no ISR will be established (and, the ISO established under Rule
43bis.1); or

22 months from the priority date of the international application.

Demands for international preliminary examination are received by the PCT Unit,
which in turn notifies the IB. [Article 31 Rule 61.1] provided that:

the applicant has not indicated on the Demand that examination is to be


postponed

copies of any amendments referred to by the applicant are available, and

all other formal requirements have been met

The PCT Unit will then forward the file to the Examination section with current
responsibility for the relevant class once the formal "start" date for international
preliminary examination is reached.

Otherwise the file will be so forwarded when the amendments become available or
after expiration of the appropriate time limits.

The International Preliminary Examining Authority normally starts the International


Preliminary Examination (the start date) when See PCT/GL/ISPE/1 at para 3.13]:

a) it is in the possession of:


the demand

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the amount due (in full) for the handling fee and the international
preliminary examination fee, including, where applicable, the late
payment fee under Rule 58bis.2

if the applicant is required to furnish a translation under Rule 55.2, that


translation

either the ISR and, the ISO established under Rule 43bis.1, or a
notice of the declaration by the ISA under Article 17(2)(a) that no ISR
will be established

and
b) the time limit within which the applicant was permitted to file the Demand
(see above and PCT/GL/ISPE/1 at para 3.07) has expired. That is when
the applicant has filed the above the formal start date for international
preliminary examination is the expiration date of the time limit for filing
the Demand (normally 22 months from the priority date) unless the
applicant has expressly requested an earlier start and has met the above
conditions.

Where an ISO which has been prepared by another authority is not on file, the
examiner is to contact PCT unit and ask them to request the ISO from the IB, and
wait until they receive the ISO before carrying out international preliminary
examination.

However, exceptions to this requirement can arise in the following cases


[PCT/GL/ISPE/1 at para 19.10]:

1. An international preliminary examination may, if that national Office or


intergovernmental organization that acts as the ISA and IPEA so wishes, start at the
same time as the international search, provided that the examination is not to be
postponed according to the statement concerning amendments. The ISO will still be
issued by the ISA, with subsequent opinions and the IPRPII issued by the IPEA. The
only exception to this is if the ISO would be "clear", in which case the IPEA will issue
an IPRPII instead of a clear IPEO.

2. Where the statement concerning amendments contains an indication that


amendments under Article 19 (see Article 19 or Article 34(2)(b) Amendments) are to
be taken into account (Rule 53.9(a)(i)), the IPEA does not start the international
preliminary examination before it has received a copy of the amendments concerned.
[Rule 53.9(a)(i)]

3. Where the statement concerning amendments contains an indication that the


start of the international preliminary examination is to be postponed (Rule 53.9(b)),
the IPEA does not start the international preliminary examination before whichever of
the following occurs first [Rule 53.9(b)]:

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it has received a copy of any amendments made under Article 19

it has received a notice from the applicant that he does not wish to
make amendments under Article 19, or

the later of three months from the transmittal of the ISR and ISO or of
the declaration that no ISR will be established, or the expiration of 22
months from the priority date;

4. Where the statement concerning amendments contains an indication that


amendments under Article 34 (see Article 19 or Article 42(2)(b) Amendments) are
submitted with the Demand (Rule 53.9(c)) but no such amendments are, in fact,
submitted, the IPEA does not start the international preliminary examination before it
has received the amendments or before the time limit fixed in the invitation referred
to in Rule 60.1(g) has expired, whichever occurs first. [Rule 53.9(c)]

These examination procedures before the IPEA are set out in detail in Chapter 19 of
the PCT International Search and Preliminary Examination Guidelines
(PCT/GL/ISPE/1) [Rule 60.1(g)]

PCT applications are deemed amended when the applicant files amendments (i.e.
the familiar concept of "proposed amendments" in national examination does not
exist).

The IPRPII must be established within [Rule 69.2 PCT/GL/ISPE/1 at para 3.23]:

28 months from the priority date

six months from the time provided under Rule 69.1 for the start of the
international preliminary examination

six months from the date of receipt by the IPEA of the translation furnished
under Rule 55.2.

whichever expires last.

The start date of the international preliminary examination is determined by Rule


69.1.

The report establishment date will be marked on the file front cover by the PCT Unit.

So far as Australia is concerned, while it is in the international phase a PCT


application effectively proceeds as both an application for a patent and for a patent of
addition. An indication of the form or form(s) of protection in respect of which a PCT
application is made is only effective when the indication is given to a designated
Office when performing the acts required for national phase entry (although reference
to a parent application can be made in the Request). Our systems do not recognise

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an application as being for one or another form of protection until entry into the
national phase has occurred.

The following chapters deal with subjects as they would arise in the course of
international preliminary examination.

1.3.5 First IPE action


The first IPE action will be either an IPRPII or a second written opinion depending on
the circumstances. In this regard the ISO (whether produced by the Australian Patent
Office or some other International Authority) is deemed, for Australian purposes, to
constitute the first written opinion of the international preliminary examination.

See Form PCT/IPEA/237 (Written Opinion-ISA) for a completed example of form


PCT/ISA/237.

At the commencement of international preliminary examination at 22 months after the


priority date of the application the examiner will again consider the PCT application
using the guidance contained in 1.3.8 Completing ISO, IPEO and IPRPII Forms and
1.3.9.3 General Notes on Form Completion provided that the applicant has filed
amendments under Article 19 or 34C or at least submissions responsive to the
ISO. If a second written opinion is required the examiner will complete form
PCT/IPEA/408 and set the time limit for response at two months (one month for
subsequent changes - see 1.3.4 Timeframe for Demand and IPRP). However, if a
response to the second written opinion is not received an IPRPII is not to be
established until one month before the final date for that to occur, and account must
be taken of any response filed before the report is established - see 1.3.6.1
Response to Opinion

If the applicant does not file amendments or submissions responsive to the ISO
before the IPE start date (see 1.3.4 Timeframe for Demand and IPRP), then in view
of the fact that the Demand will be, in effect, a response to the first written opinion,
the Report is to be established immediately on the basis of the ISO. The only
exception to this is if the examiner is certain that a finding made in the ISO is
incorrect, in which case a second written opinion should be issued.

Where issues arise as to the completeness of the demand, eg submissions or Article


34 amendments referred to but not included, these will be handled by the PCT Unit
and the file forwarded to the Examination section only after any further time allowed
for filing the amendments or submissions has expired (usually one month).
Consequently once the file has been transferred to the Examination section it will be

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ready for examination to proceed and no further extension of time is to be given by


the Examiner.

Note: Requests by applicants for the examiner to defer examination or to issue an


opinion instead of an IPRPII (other than when an examiner agrees the ISO was
incorrect) should be refused.

Occasionally the applicant may refer to or submit Art 19 amendments when they file
the Demand. When Art 19 amendments are referred to or submitted with the
Demand and no evidence exists on file that Art 19 amendments had been received
by the IB, the PCT unit should check at the IPE start date WIPOs PatentScope
website (WIPOs International Patent Applications Advanced search website) for an
indication or other evidence that the IB has received the Art 19 Amendments. If the
amendments are confirmed to have been received then the file is sent for
examination as per the normal process. If there is no indication or evidence of any
such filing of Art 19 amendments, the PCT unit should send a letter to the applicant
seeking clarification as to whether they want examination to proceed disregarding the
amendments filed with the Demand, or that they want to convert the amendments
filed with the Demand to Art 34 amendments and examination to proceed having
regard to the converted amendments. The PCT unit should retain the case until a
response is received from the applicant. If Examiners cannot determine if the Art 19
amendments have been received from the IB they should contact the PCT unit for
confirmation.

Where there are no matters arising from 1.3.8 Completing ISO, IPEO and IPRPII
Forms and 1.3.9.3 General Notes on Form Completion, requiring an IPEO to issue,
proceed to establish the IPRPII - see 1.3.7 IPRPII and Notification

Note: An examiner is not to perform a search at the international preliminary


examination stage and should only raise new citations if they are aware of them.

When using the macros to create the opinion or report, the following details are
automatically filled in on the form (for further details on completing this part of the
IPEO or the IPRPII form see 1.3.8 Completing ISO, IPEO and IPRPII Forms):

Address for correspondence

Applicant's or agent's file reference

International filing date

Priority date

Applicant

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Note:

1. Examiners must check the latest correspondence on file to ensure that these
details are correct at the time of completion of the report.

2. If any of the above application details have been updated, the examiner must
enter the latest updated detail in the form.

3. Two compulsory boxes on the first sheet of the IPEO or ISO, in Item 2, will be
crossed automatically on the Word Processing Template. The two compulsory boxes
are: Box I - Basis of the opinion, Box V - Reasoned statement under Article 35(2) d).

4. If there is insufficient space in any Box provided use a Supplemental Box


sheet(s), remembering to indicate the Box number I-VIII from which it is a
continuation.

5. Any document cited in an IPEO which was cited in the ISR may be cited in a
shortened form, provided that the reference to the document is unambiguous. Any
document cited in the IPEO which was not cited in the ISR shall be cited in the same
form as required under Section 503 for ISR's. Similarly all documents cited in the ISO
may be cited in shortened form. [Ad. Inst. 503 Ad. Inst. 611]

Although, in principle, international preliminary examination is based on the ISR, the


examiner should not be deterred from looking for relevant documents which he
personally knows, or has reason to suspect, exist, if he can locate such documents in
a short time from material available to him. Such documents shall be considered on
the same footing as the documents cited in the ISR. If such an additional document is
mentioned by the examiner in an IPEO, a copy of the document will be transmitted to
the applicant, if the agreement between the IPEA and the IB so provides. [Article
33(6) PCT/GL/ISPE/1 at para 17.66]

Claim groupings used in an ISR in accordance with 1.1.11 Search Procedure, are not
automatically transferable to an ISO, IPEO or IPRPII. For example, a citation may
have been accorded an "X" category because it is a novelty citation or an inventive
step citation.

Guidelines for the considerations for items for Boxes I-VIII in the opinion are given in
1.3.8 Completing ISO, IPEO and IPRPII Forms and 1.3.9.3 General Notes on Form
Completion.

See Form PCT/IPEA/408 (Written Opinion-IPEO from 2004) for a completed example
of form PCT/IPEA/408.

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1.3.6 Response to Opinion

1.3.6.1 Response to Opinion


If there is no response to an Opinion and there is less than one month remaining to
establish the IPRPII examiners should establish the report as in 1.3.7 IPRPII and
Notification [Rule 66.4bis]. PCT unit will forward these files to the section which
issued the opinion when less than one month remains.

Where a response is received in the form of arguments only, reconsider the IPEO in
the light of those arguments. [Rule 66.4(b) PCT/GL/ISPE/1 at para 19.17 et seq}

Where a response is received which includes amendments (Rule 66.5 - "Any


change, other than....... obvious errors,....... shall be considered an amendment"),
consider the amended description, drawings, and/or claims as in 1.3.9.3 General
Notes on Form Completion [PCT/GL/ISPE/1at para 20.04 et seq]

Where a response is received after PCT unit has forwarded the file to an examination
section to establish the report, but the report has not yet been established, then that
response may be considered if it is reasonable to do so. In this regard, note Rule
66.4bis (amendments or arguments need not be taken into account).

Where a response which includes amendments, but does not include the letter
referred to in the second sentence of Rule 66.8(a) (explaining the differences
between the replaced sheets and the replacement sheets) then, unless the presence
of this letter is critical to the understanding of the amendments, its absence should
not interrupt processing and the response should receive immediate detailed
consideration. Where, because of exceptional circumstances, the letter is required,
and time permits, then a request for this letter may be despatched using the form
PCT/IPEA/424 - available from the PCT Unit.

Where, upon consideration of an applicants response, there are still Rule 66.2
matters (general international preliminary examination considerations) which apply,
then, except in the case of Rule 6.2(a) matters, provided there is adequate time for
the applicant to make a further response and for the examiner to properly consider
that response and establish the IPRPII, the examiner should issue another opinion.
Otherwise, the examiner should issue the IPRPII - see 1.3.7 IPRPII and Notification.
As a general rule, if there is less than 3 months to go until the final date for
establishing the IPRPII, then no further opinion should be issued, and either the
IPRPII should be established - or, if the circumstances favour it, the examiner may
make informal communication with the applicant - see 1.3.6.2 Extensions of Time to
Respond to Opinions.

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Note:

1. The time limit set in this new opinion should be one month.

2. Where an informal communication is made with the applicant (Rule 66.6 - informal
communication with applicant) it should be formalised by a subsequent despatch
summarising the content and results of such a communication. Forms PCT/IPEA/428
and PCT/IPEA/429 are available from the PCT Unit.

There is no barrier to resuming international preliminary examination after an IPRPII


has been issued, provided the circumstances justify such an action. Any replacement
report resulting from the re-opening of international preliminary examination should
be clearly labelled as such so that elected offices are aware of its status.
[PCT/GL/ISPE/1 at para 19.25, 19.26]

PCT Unit will advise WIPO to disregard the earlier report. If the resulting response is
a further IPEO, then this opinion will be sent to the applicant only. However when the
resulting response is another IPRPII, this will be sent to both the applicant and WIPO
as a "corrected version" of the IPRPII.

The type of circumstance prima facie justifying the re-opening of international


preliminary examination is where the IPRPII was issued earlier than it otherwise
would have, by reason of an error or omission on the part of either the
Commissioner, applicant or attorney. For example, where it had been the intention of
the applicant to respond but as a result of an omission by the applicant's attorney no
response had been made.

Note: Once examination of a particular application has been re-opened, any


subsequent request to re-open examination of that application should not be
entertained.

1.3.6.2 Extensions of Time to Respond to


Opinions
No consequences flow from the failure by an applicant to respond to an IPEO within
the time set to provide such a response. Any response from the applicant is to be
taken into account in establishing the IPRPII providing that circumstances justifying
the invoking of Rule 66.4bis do not exist. No request for an extension of time is
required to be filed by the applicant when responding to an IPEO outside the time set

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to do so in the opinion. If by 1 month before the final date for establishment of the
IPRPII no response has been made to an IPEO, the case file will be forwarded to the
examiner to establish the IPRPII. No extension of time beyond this point will be
granted.

If a response to an IPEO is filed more than 1 month but less than 3 months before
the expiration of the final date for establishing the IPRPII, then under normal
circumstances no further IPEO is to be issued, and the IPRPII is to be established
forthwith.

1.3.7 IPRPII and Notification


The final response comprises:

Notification of Transmittal form, PCT/IPEA/416, and

IPRPII form PCT/IPEA/409

The above forms are available as a single template under PCT/IPEA in MS Word.

See Form PCT/IPEA/416 (Notification of Transmittal of IPRP from 2004) and Form
PCT/IPEA/409 (IPRP from 2004) for completed examples of forms PCT/ISA/416 and
PCT/IPEA/409, respectively.

The applicant receives both the Notification of Transmittal and the IPRPII, whereas
WIPO is only sent the IPRPII.

When using the macros to create the Notification of Transmittal and the IPRPII, the
following details are automatically filled in on the forms (for further details on
completing this part of the IPRPII form see 1.3.8 Completing ISO, IPEO and IPRPII
Forms):

Address for correspondence

Applicant's or agent's file reference

International filing date

Priority date

Applicant

Note:

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1. Examiners must check the latest correspondence on file to ensure that these
details are correct at the time of completion of the report.

2. Two compulsory boxes on the first sheet of the IPRPII, in Item 4, will be crossed
automatically on the Word Processing Template. The two compulsory boxes are: Box
I - Basis of the report, Box IV - Reasoned statement under Article 35(2)d).

3. Examiners are requested by the PCT Unit not to copy citations or annexes as this
will be done by ES&S.

4. If there is insufficient space in any Box provided use a Supplemental Box


sheet(s), remembering to indicate the Box number I-VIII from which it is a
continuation.

5. The "date of completion of this report" will be the date that the authorising
officer completes or concurs with the report. This date will be the date of
establishment of the report and should not be after the mailing date shown on the
Notification of Transmittal sheet of the written report. In the situation where a
corrected report is required to be issued, the "date of completion of the report"
shown in the report should be the date of completion of the original report, unless the
correction is one of real substance and doing this would procedurally disadvantage
the applicant, in which case the actual date of completion of the corrected report
should be shown.

6. Any document cited in the IPRPII which was previously cited in the ISR may be
cited in a shortened form, provided that the reference to the document is
unambiguous. Any document cited in the IPRPII which was not cited in the ISR shall
be cited in the same form as required under Section 503 for ISR's. (Note - no
document should be cited for the first time in an IPRPII. Any new citation should be
raised first in an IPEO). [Rule 43.5 Rule 70.7 Ad. Inst. 503 Ad. Inst. 611]

Guidelines for the considerations for items for Boxes I-VIII in the IPRPII are given in
1.3.8 Completing ISO, IPEO and IPRPII Forms.

1.3.8 Completing ISO, IPEO and IPRPII Forms

1.3.8.1 Front Page and Notification Application


Details
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Address for correspondence [Ad. Inst. 108]

PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file
is created.

When an agent represents the applicant, the address for service is listed in Box IV of
the PCT Request form.

For applicants processing their own applications, the address for service is listed in
Box II of the PCT Request form.

Note:

1. Check correspondence on file for any changes in the applicant or address of


service.

2. For applicants not using the services of a Patent Attorney, the address for service
may not be in the proper format and will need to be corrected and it may not include
the name of the addressee.

3. No change of address for correspondence is allowed unless the applicant has filed
a request under PCT Rule 92 bis.

Date of mailing

Leave this space blank.

PCT Unit fills in this box when the report is dispatched.

In the case of an ISO, the date of mailing shown on the ISO must be the same as the
date of mailing shown on the ISR - Search Report and Notification Form Completion.

Applicant's or agent's file reference

PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file
is created.

Enter the most recent file reference from the latest correspondence from the
applicant or the agent; this may be different from the correspondence from WIPO and
may include the Attorney's initials, etc indicating the person responsible for the case
file.

Note: If the file reference is significantly different from the original, inform PCT Unit
which will inform the IB of the change. Additions of initials at the end of the original
file references are not considered a significant change.

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Reply due date

In international preliminary examination for PCT applications, a second IPEO is


required (the ISO being considered to be the first IPEO - see 1.3.5 First IPE action).
Complete form PCT/IPEA/408 and set the time limit for response at two months.

For subsequent opinions set the time limit to one month

International application number

When entering data using the Word macro, the application number initially entered
automatically appears in all relevant places in the notification and report forms after
all the dialogue boxes for data entry have been completed.

International filing date

The PCT Unit upon receipt of the PCT application assigns this date. This date is
recorded on the PCT Request Form and on the front of the jacket.

Priority date

This information is given in the PCT Request form (PCT/RO/101) in Box VI. This data
is initially captured by the PCT Unit and automatically appears in the dialog box when
entering the application number in the ISA macro. The Examiner must check that the
correct priority date has been captured. Even if the file indicates that there has been
a request by the applicant to restore the right of priority under PCT Rule 26bis.3
see 3.24 Extensions of Time - Restoration of the Right of Priority - but this has been
refused, the priority date shown in the application details should still be whichever
date is given in the PCT request.

Note: Inform the PCT Unit if an error in the priority date is found.

IPC symbols

All IPC symbols are to be validated on the date of completion of search reports and
examination reports. For intermediate reports (i.e. examination opinions) that do not
have a date of completion, the IPC symbols are to be validated for the system date
(i.e. today's date) and the Word template will print this date as the "Action Date"
below the IPC symbols. The validation and the ST.10/C display will be used
wherever the IPC symbols are presented (in the IPC box) in any report.

Applicant [Ad. Inst. 105]

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PCT Unit captures this data and, when the "PCT - IPEA" button is selected and the
application number is entered into the Word macro it appears as an applicant Choice
Box.

When there is more than one applicant indicated in the Request, only the first
mentioned of these has to be indicated in the International Search Report. The other
applicants, if any, are indicated by the words "et al" following the first applicant's
name. The first mentioned applicant is indicated in Box II of the PCT Request form,
a second applicant is listed in Box III, further applicants will be listed on the
continuation sheet if there are more than two applicants.

Example (a) AMERICAN EXPLOSIVES INC. et al.

Example (b) SMITH, John Doe

Annexes [Rule 70.16 Rule 66.8 Ad. Inst 205 PCT/GL/ISPE/1 at para 17.16 -
17.23, 20.10]

Replacement sheets containing amendments under Article 19, Article 34, or


rectifications of obvious errors authorized under Rule 91.1(e)(iii) shall, unless
superseded by later Amendment Replacement Sheets, be annexed to the report.
See Rule 70.16 of the PCT. The only exception to this is that all Amendment
Replacement Sheets (that is superseded and superseding sheets) are to be included
in the annex IF the superseding Amendment Replacements Sheets go beyond the
disclosure as filed. See 70.16 (b) of the PCT ISPE Guidelines.

Any "Substitute Sheets (Rule 26) or RECTIFIED SHEETS (Rule 91.1) filed before
the Demand is filed (that is, are not authorised by the IPEA) are not to be included as
annexes to the IPRPII. These are considered to be part of the application as filed.

The annexation of replacement sheets is performed by the examiner, who will


detachably (such as by use of a paper clip) assemble the annex to the IPRPII and
place the whole in the typing (blue) jacket. The examiner is also required to enter the
number of replacement sheets comprising the annex at Item 3a of the first sheet of
the IPRPII and detail the amendments in check box 1 of Box I. Where the annex
consists of replacement sheets which the examiner has found go beyond the
disclosure, the examiner must deliver the case file to PCT Unit by hand and draw
their attention to this situation. This is because sheets which have been
superseded by such sheets are required to be marked "SUPERSEDED
REPLACEMENT SHEET (RULE 70.16(b)", which will be done by PCT Unit.

If a sequence listing is provided the examiner is also required to enter at Item 3b of


the first sheet of the IPRPII the type and number of electronic carriers annexed to the
IPRPII. Such electronic carriers will have been furnished subsequently to the filing of
the application for the purposes of search and/or examination, or received as Article

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19 or 34 amendments. The electronic carrier(s) is(are) to be sent to the IB by the


PCT unit.

1.3.8.2 Box I Basis of Opinion/Report for ISOs,


IPEOs and IPRPs
Substitute pages or sheets, filed in response to an invitation by the receiving Office to
correct defects in the international application, are deemed to be part of the
international application "as originally filed". If the applicant responds to the invitation
to correct defects by substituting sheets of the application, these sheets are identified
with " SUBSTITUTE SHEET (RULE 26)" stamped on them.

Rectified sheets filed as Rule 91 amendments (obvious mistakes (or, pre 1 April
2007, obvious errors)) are also regarded as originally filed sheets and are identified
in Box I Basis of the Opinion/ Basis of the Report (they are transmitted as
RECTIFIED SHEET (RULE 91) amendments to the IB by PCT unit once the
examiner has accepted them).

A) Basis of Opinion for an ISO - Box I

Note: Box I of the ISO "Basis of the Opinion" must always be included in the ISO.
(Note: in the ISO macro, the Box I (Basis of Opinion) sheet is automatically
selected).

Item 1:

For language considerations refer to the PCT Rules (in practice, problems in this
area rarely occur). [Rule 23.1(b) Rule 48.3(b) Rules 55.2 &/or 55.3]

Item 2:

Where there is an indication on the file that the rectification of an obvious mistake (or
obvious error where the rectification has occurred before 1 April 2007) has been
authorized the international report shall indicate this and the report should be
established on the basis of this rectification. See 1.3.9.4 for information regarding
obvious mistakes.

Item 3:

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If a sequence listing is provided in the specification, but the search and opinion are
not conducted in respect of this sequence listing, then no reference is to be made to
a sequence in items 3 or 4 of Box I. In this situation Examiners should indicate
under Item 4 that: There was a sequence listing originally filed but it was not
used for the purposes of this search and opinion.

If a sequence listing is provided in the specification and the search and opinion are
conducted in respect of this sequence listing, then reference is to be made to the
sequence in items 3 and/or 4 of Box I.

The considerations for nucleotide and/or amino acid sequence listing may be found
in 1.1.18.1-3 Nucleotide and/or Amino Acid Sequence Listings.

Where a nucleotide or protein sequence is used to conduct the search and opinion,
the examiner should identify the source of this sequence. The sequence that is
identified is the specific sequence used to conduct the search and opinion.

For example, if both a printed sequence listing and a computer readable sequence
listing are provided at the time of filing, and the computer readable sequence listing is
used to conduct the search, then the examiner will mark the box under item 3b
format of material labelled in computer readable form. The examiner would
not mark the box labelled "in written format."

Item 4:

Check this item box to indicate that the applicant has submitted the required
statements that the information in any subsequent or additional copies is identical to
that in the application as filed or does not go beyond the application as filed.

The considerations for nucleotide and/or amino acid sequence listings may be found
in 1.1.18.1-3 Nucleotide and/or Amino Acid Sequence Listing.

Item 5:

Additional comments for example see Item 3 above.

B) Basis of Opinion for IPEOs and IPRPs - Box 1

Item 1:

See Item 1 of the Basis of Opinion for an ISO above.

Item 2:

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Where all documents examined are as originally filed, only the first check box (i.e.
"the international application as originally filed") in Item 1 of Box I should be marked.

In response to an opinion an applicant may file amendments with a covering letter.


On receipt of these amendments, PCT Unit will indicate on the top right hand corner
of the Amended sheets the application number and the date of receipt. Note that the
date stated on the covering letter may differ from the filing date. [PCT/GL/ISPE/1 at
para 18.03 et seq]

Where amendments to the claims have been made under Art 19, they should be
referred to in Box I Item 1 as "pages....as amended (together with any statement)
under Art 19". Note that under Article 19 only claims may be amended. These sheets
are usually identified by "AMENDED SHEET (ARTICLE 19)"

Where amendments have been made to the description, claims or drawings under
Art 34, these should also be referred to in Box 1 Item 2 as "pages....received by this
Authority on....with the letter of ....".

The latter should indicate the dates placed on the amendments by the IPEA as the
"received by this Authority on" dates and the associated applicant's correspondence
date as the "with the letter of" date. For all PCT applications, superseded
amendments are to be included as well as superseding amendments if and only if
the superseding amendments go beyond the disclosure.

In relation to the final checkbox of Item 2, which references a Supplemental Box


Relating to Sequence Listing, the considerations for nucleotide and/or amino acid
sequence listings may be found in 1.1.18.1-3 Nucleotide and/or Amino Acid
Sequence Listing. See Item 3 of the Basis of Opinion for an ISO above, for details
on the level of reporting required for sequence listings in the Supplemental Box
(taking note that the relevant item numbers in Box I of the ISO differ to the relevant
item numbers found in the Supplemental Box).

Item 3:

Where amendments under Art 19 or 34 have been made which result in gaps in the
numbering sequence of the claims, these must be referred to in Item 3 of Box I of the
written opinion or IPRP. (See Annex C.2). More importantly, the report in Box V (the
reasoned statement) must reflect the claims reported upon.

Refer to 1.3.9.1 Article 19 or Article 34(2)(b) Amendments for further Art 19/34
considerations.

Item 4:

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Where amendments have been made which go beyond the original disclosure, this is
indicated in Item 4 of Box I of the IPEO or IPRPII. The particular amendments are
identified and brief reasons given in a Supplemental Box sheet(s). [Rule 70.2(c)]

For all PCT applications replacement sheets which are superseded by replacement
sheets all of which go beyond the disclosure as filed are required to be annexed to
the IPRPII, along with the superseding replacement sheets. (If there is more than one
version of these superseding replacement sheets, then only the later or latest version
is to be annexed.) The second checkbox at Item 3a of the IPRPII cover sheet is to be
marked, and the total number of replacement sheets annexed is to be indicated.
[Rule 70.16(b)]

See 1.3.8.1 Completing ISO IPEO and IPRPII Forms/Annexes for further details of
the procedures in respect of annexes to be followed by examiners when
amendments go beyond the disclosure.

In the case of abstracts, they cannot be amended under Article 34 and consequently
if an applicant includes an amended abstract with their Article 34 amendments it
should not be included in any Annex to an IPRPII. A note stating that the
amendments to the abstract are of no effect since the abstract cannot be amended
under Article 34 should be inserted after item 3 a., checkbox 2 (sheets of the
description ) on the IPRPII cover sheet.

Item 5:

Where there is an indication on the file that the rectification of an obvious mistake (or
obvious error where the rectification has occurred before 1 April 2007) has been
authorized the international report shall indicate this and the report should be
established on the basis of this rectification. See 1.3.9.4 for information regarding
obvious mistakes.

1.3.8.3 Box II Priority


Where the application has no priority claim, or where all citations mentioned in the
ISR were published prior to the EPD, Box II is not required to be completed.

Where one or more citations of the ISR were published after the EPD, the validity of
that EPD requires checking. That checking will need to take into account whether
the PCT application has been filed within the 12-month priority period, and if not,

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whether any right of priority has been restored under PCT Rule 26.3bis see 3.24.6
Extensions of Time Under Subsection 223(2A). If neither of these is the case, then
the checkbox at item 2 will need to be marked. If a request for restoration of right of
priority has been made and has been granted, then this should be noted at item 3. If
a request for restoration of right of priority has been made, but has not yet been
determined, this should also be noted at item 3, including the following comment:

The applicant has requested a restoration of right of priority under Rule


26bis.3 which is yet to be determined.

Validation of the right of priority also requires an assessment as to whether the


priority document contains an adequate disclosure of the invention which is the
subject of the PCT application. In order to be able to do this, the examiner should:

where the priority document is an Australian document (e.g. AU provisional),


view the document on PAMS

where the priority document is a foreign document (this will most likely be the
case when the application was originally filed with RO/NZ) and it is not
already in the file, request a copy of the document together with a translation
where appropriate from the PCT Unit (through Lotus Notes email to PCT-
which can be set up in stationery). If timing considerations require the
issuance of an opinion before the priority document has been obtained, then,
in the case of an ISO, the ISO should be issued with the checkbox at item 1
of Box II marked without waiting to obtain the priority document. In the case
of an IPEO an appropriate comment should be made under the heading
"Additional observations, if necessary:" in item 3 of Box II of the IPEO. If such
a copy is not available because of non-compliance with Rule 17.1 by the
applicant, the IPRPII may be established as if the priority had not been
claimed and this is to be indicated in the IPRPII. [Rule 66.7 Ad. Inst. 421]

Where the right to priority is assessed and is invalid, Box II of the ISO, IPEO or
IPRPII must be completed. [PCT/GL/ISPE/1 at para 17.27 Rule 64.1]

One situation where the validity of right to priority may require consideration is when
the priority document is an AU complete application which itself is associated with an
AU provisional and only the complete was made within the 12 months before the
PCT filing date. A claim in the PCT application to material disclosed in the provisional
and the complete application would only have a priority of the PCT filing date. The
provisional and/or complete application then may also be citable against that claim;
most probably as either an "E", "L" or "P" document.

Where the right to priority is assessed and is found to be valid, an observation to this
effect should be included in item 3 "Additional observations".

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"Additional observations" relate to priority considerations only and not to clarity,


descriptive support, defects or any other consideration relevant to Box VIII.

1.3.8.4 Box III Non-Establishment of Opinion


with Regard to Novelty, Inventive & Industrial
Applicability
Rule 67.1 establishes that no International Authority shall be required to examine the
subject matter of a PCT application to the extent that it is any of items a) - f) below.
The agreement between WIPO and Australia further qualifies this by excepting from
exclusion any subject matter which is examined under national grant procedures. [Art
17(2)(a)(i) Rule 67 PCT/GL/ISPE/1 para 17.30]

For Rule 67.1 subject matter that is not excluded under Australian law (e.g. methods
of treatment of humans), examiners should disregard Box III ("Non-establishment of
opinion...") of PCT/ISA/237, PCT/IPEA/408 or PCT/ISA/409 and establish the written
opinion or IPRPII with regard to novelty, inventive step and industrial applicability in
the usual way.

The subject matter specified in Rule 67.1 is:

a. scientific and mathematical theories

b. plant or animal varieties or essentially biological processes for the production


of plants and animals, other than microbiological processes and the products
of such processes

c. schemes, rules or methods of doing business performing purely mental acts


or playing games

d. methods for treatment of the human or animal body by surgery or therapy, as


well as diagnostic methods

e. mere presentations of information

f. computer programs

Where excluded subject matter under Australian law has not been claimed, go to Box
IV Unity of Invention

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Where some or all claims claim excluded subject matter, this observation must be
included in Box III checkbox 3 of an ISO (form PCT/ISA/237) and Box III checkbox 3
of an IPEO and IPRPII (forms PCT/IPEA/408 and PCT/IPEA/409, respectively).

Where the description, the claims, or the drawings are so unclear, or the claims are
so inadequately supported by the description that no meaningful opinion can be
formed on the questions of novelty, inventive step, or industrial applicability of the
claimed invention, then the ISO and IPEO may be restricted to those claims that are
sufficiently clear and supported by the description to enable an opinion to be
prepared (4th and 5th checkboxes). [Rule 66.2(a) PCT/GL/ISPE/1 para 18.13, 18.18,
19.13(vi), 17.09, 17.31, 17.35, 17.58]

Applicants must be given at least one opportunity to consider these observations (the
ISO counts as at least one opportunity) before an IPRPII is established see 1.3.5
First IPE action.

The issues of clarity and descriptive support of claims may be raised separately to
considerations of novelty, inventive step and industrial applicability at Box VIII of the
written opinion or IPRPII. See Box VIII Certain Observations.

Where the ISA has not established an ISR (for all or some of the claims) and instead
issued a declaration under Art 17 (relating to excluded subject matter, clarity, lack of
unity, etc), the questions of novelty, inventive step and industrial applicability cannot
be gone into since there are no documents to consider under Art 33(6), and such
reasoning is added to the 'non-establishment' Box of the ISO, IPEO and IPRPII form.
(Note that this applies even where Art 34 amendments may have overcome
consideration under Art 34(4)(ii)). [Art 33(6) PCT/GL/ISPE/1 at para 19.16]

For those claims of the nature described above, the questions of novelty, inventive
step and industrial applicability will not be gone into. [PCT/GL/ISPE/1 at para 17.58]

A failure to supply nucleotide and/or amino acid sequence listing information, or have
it complying with the Administrative Instructions standards, will preclude any
meaningful international preliminary examination being carried out (see Box III
checkbox 7 for the IPEO and IPRPII form). [Ad. Inst. Annex C].

1.3.8.5 Box IV Unity of Invention


Where lack of unity of invention is evident, it may, depending on the circumstances,
be appropriate to issue an "Invitation to Restrict or Pay Additional Fees" (form
PCT/ISA/206 and PCT/IPEA/405). Due to the strict time limits for establishing the

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ISR/ISO and IPRPII this issue should be considered at the earliest possible
opportunity. [Rule 13 Rule 66 Rule 68 Ad. Inst. 206 PCT/GL/ISPE/1 at Chapter 10]

The requirements for unity of invention are specified in Rule 13 and discussed fully in
1.1.4 Unity of Invention.

An invitation to pay additional fees should not be issued by an IPEA (the


circumstances in which an ISA should issue an invitation are discussed in 1.1.4.9
Issuing the Invitation to Pay Additional Search Fees where:

the ISA has not raised the issue of lack of unity; note that international
preliminary examination is not applicable to claimed inventions that were not
the subject of the ISR.

the ISA raised the issue of unity and additional fees were not paid; in this
case examination is to proceed in respect of those claims which were
searched, the ISO, IPEO or IPRPII clearly specifying for the other claims that
no ISR is available and thus no meaningful opinion can be given
[PCT/GL/ISPE/1 at para 17.62]

In relation to a PCT application undergoing international preliminary examination, an


invitation to pay additional fees may be issued where:

the ISA raised the issue of lack of unity and the applicant paid additional
search fees for further searching and examination, or

the ISA found there was lack of unity but did not invite additional search and
examination fees for additional inventions.

The decision on whether to issue an Invitation in these circumstances is somewhat


discretionary, and should be based on likely additional effort involved and hence
costs incurred in considering the additional invention(s). The following may be
relevant to the decision:

the number of citations relevant to each invention,

whether citations are common to different inventions,

the number and nature of claims for each invention, and

the perceived effort needed to deal with each invention through the
examination stage (opinions and report).

As a guide, if the overall additional effort involved to examine an additional invention


is estimated to require more than about 2 hours of time over the first invention then
an invitation should be issued.

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If it is determined that an invitation should be issued, then form PCT/IPEA/405 is to


be completed and passed with the case file to the supervising examiner who will, if in
agreement, authorise the invitation as "Authorised Officer". [PCT/GL/ISPE/1 at para
10.75 -10.78]. The time limit for responding to the invitation to pay additional fees is
one month. [Rule 68.2].

The invitation must include a logically presented, technically reasoned statement


setting out the basis for the finding of lack of unity. The requirements in this regard
are the same as specified in 1.1.4.9 Issuing the Invitation to Pay Additional Search
Fees. The invitation must also include at least one possible restriction of the claims
which would avoid the objection of lack of unity. The invitation should also include the
basis for the number of additional examination fees invited and, where applicable,
indicate which inventions can be examined with another without requiring a separate
examination fee.

Example as in : Annex F - invitation to restrict/pay additional fees-unity illustrates the


required level of detail.

As the applicant's response will determine which of the claimed inventions will be
examined, the international preliminary examination should be largely deferred until a
response is filed or the time limit for response expires.

Where an invitation issues, the time limit for establishing the report does not alter.

If the applicant fails, within the time allowed, to restrict the claims or pay the
additional fees, the international preliminary examination should proceed in relation
to the main invention or where this is not readily apparent the invention first
mentioned in the claims. Otherwise, the examination is to be carried out for those
claimed inventions for which fees are paid or for the invention defined in the
restricted claims. [PCT/GL/ISPE/1 at para 10.75]

Where the applicant pays the additional fees under protest, the case should be
referred as soon as possible to DC (OH&L) (through the supervising examiner) who
will arrange for the protest to be reviewed by a supervising examiner constituting the
protest board. The international preliminary examination should proceed in relation to
all the claimed inventions for which fees are paid. [PCT/GL/ISPE/1 at para 10.78]

A protest may be upheld and the fees refunded (fully or in part), for several reasons
including:

that, having regard to the facts of the case and the PCT Rules, there is no
lack of unity,

the invitation fails to give either sufficient or substantially correct reasons for
the finding of lack of unity and the lack of unity is not manifestly obvious from
the claims themselves,

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that the amount of the additional fees, in the circumstances, is excessive.

Irrespective of whether an Invitation has been issued, where unity of invention is


lacking this observation must be included in the ISO, all IPEOs and the IPRPII for
which that is the case. The ISO, IPEA and IPRPII do not require an observation on
lack of unity in Box IV if no lack of unity has been found, except if any entry in Item 1
of Box IV of IPEO or IPRPII has been required to be made. As a corollary to this
checkbox IV in Item 2/3 at the front page of the opinion/report, respectively, should
only be crossed if Box IV of the opinion or report contains an observation. [Rule 68.1
PCT/GL/ISPE/1 at para 17.36, 17.37]

"Annex B Written Opinion IPEO from 2004" includes an example IPEO produced
under international preliminary examination where lack of unity was raised. Note that
Item 2 of Box IV of an opinion (when applicable) should include both the basis for the
finding of lack of unity as well as the reasons why the applicant was not invited to
restrict or pay additional fees. In each opinion, if an invitation was issued, Item 1 of
Box IV should be completed and, if lack of unity is present, the reasons for the finding
of lack of unity stated on a supplemental sheet. Item 1 should then also include a
cross-reference to the supplemental sheet.

Annex D - IPRPII from 2004 includes an example where a lack of unity finding is
noted. Note that Item 1 of Box IV of a report is to be completed where an invitation
was issued, and in addition Item 3 completed to indicate the lack of unity position of
the application at the report stage.

Item 3/4 of Box IV of the opinion/report, respectively, should be filled in to indicate to


the reader what claims have been examined.

1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step &


Industrial Applicability

1.3.8.6 Box V Reasoned Statement Regarding


Novelty, Inventive Step & Industrial Applicability
Box V at Item 1 provides the opportunity to make concise positive and/or negative
statements for Novelty (N), Inventive Step (IS) and Industrial Applicability (IA) e.g.
"Claims 1-3 and 10 NO", whereas Item 2 will provide reasons. Where a document
combination is relied upon this should be fully explained.

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Note: Claim groupings used in an ISR in accordance with Search Procedure are not
automatically transferable to an ISO, IPEO or IPRPII. For example, a citation may
have been accorded an "X" category because it is a novelty citation or an inventive
step citation.

Where all claims meet the criteria of Novelty, Inventive Step and Industrial
Applicability then the sixth sheet containing Box V should still be included, with the
relevant claim numbers on the YES line for N, IS and IA

Where no meaningful opinion can be formed on the questions of novelty, inventive


step or industrial applicability of the claimed invention, then the ISO, IPEO and
IPRPII may be restricted to those claims that are sufficiently clear and supported by
the description to enable an opinion to be prepared. See Box II Priority for further
guidance.

Documents other than those mentioned in the ISR may be cited, but only where they
are within the examiner's knowledge; a search should not be conducted
[PCT/GL/ISPE/1 at paras 11.08-11.10]. The citing of documents in shortened form,
in accordance with PCT Administrative Instruction 503, is acceptable.

Non-patent literature "P,X" documents are to be listed in Box V "Citations and


Explanations" as, according to Rule 64.3, Rule 70.10 of the PCT, it is inappropriate to
list them in Box VI "Certain cited documents".

Whilst non-patent literature documents do not have a priority date per se, these
documents still need to be cited at the ISO, IPEO and IPRPII stage for consideration
during national phase examination (they are potentially useful in some foreign
jurisdictions, or in the situation where the priority becomes invalid).

In Box V under "Citations and Explanations", examiners must, in relation to every


claim and every cited document (included in which must be every document cited as
an X or Y category document in the ISR), give explanations whenever [Art 35(2) Rule
70.6(b) Rule 70.8 Ad. Inst. 604]:

the statement in relation to the novelty or inventive step of any claim is


negative;

the statement in relation to the novelty and inventive step of all claims is
positive unless the reasoning for making appositive statement in relation to
any document is easy to imagine on the basis of consultation of the
document; and

the statement in relation to industrial applicability is negative; if the statement


in relation to industrial applicability is positive and the reasons for this being
the case are obvious, then no explanation is required.

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1.3.8.6.1 Novelty
A claimed invention shall be considered novel if it is not anticipated by the prior art.
The prior art is defined as "everything made available to the public anywhere in the
world by means of written disclosure (including drawings and other illustrations)"
before the priority or international filing date of the international application. [Art 33(2)
Rule 64 PCT/GL/ISPE/1 at Chapter 12]

A document takes away the novelty of any claimed subject matter when every
element or step is explicitly or inherently disclosed within the prior art defined in Rule
64.1 (see paragraph 11.01 of the PCT International Search and Preliminary
Examination Guidelines), including any features implicit to a person skilled in the art
(see paragraph 13.11 of the Guidelines for a definition of the "Person Skilled in the
Art") (see paragraph 12.01 of the Guidelines).

In considering novelty (as distinct from inventive step) it is not permissible to combine
separate items of prior art together (see paragraph 13.12 of the PCT International
Search and Preliminary Examination Guidelines). However, if the document refers
explicitly to another document to, for example, provide more detailed information on
certain features, the teaching of this latter document may be regarded as
incorporated into the relevant document, to the extent indicated in the primary
document.

Also, a dictionary or the like may be used to interpret special terms used in the
document. However, it is not correct to interpret the teaching of the document such
that well-known equivalents, which are not disclosed in the document, are included.
This is a matter for obviousness.

Novelty and obviousness are different criteria. Novelty does exist if there is a
difference between the claimed invention and the prior art, and this difference could
not have been considered part of the common general knowledge at the time of
publication of the prior art (note, however that some authorities have a different
approach on this - see the annex to Chapter 12 of the PCT International Search and
Preliminary Examination Guidelines).

However, the prior art disclosure must be an enabling disclosure (see paragraph
12.02 of the PCT International Search and Preliminary Examination Guidelines). A
chemical compound, the name or formula of which was mentioned in a document, is
not considered as known unless the information in the document, together, where
appropriate, with knowledge generally available on the effective date of the

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document, enable it to be prepared and separated or, for instance in the case of a
product of nature, only to be separated.

In considering novelty, it should be borne in mind that a generic disclosure does not
usually take away the novelty of any specific example falling within the terms of that
disclosure, but that a specific disclosure does take away the novelty of any generic
claim embracing that disclosure, for example, a disclosure of copper takes away the
novelty of metal as a generic concept, but not the novelty of any metal other than
copper, and one of rivets takes away the novelty of fastening means as a generic
concept, but not the novelty of any fastening other than rivets.

In the case of a published document, the lack of novelty may be apparent from what
is explicitly stated in the document itself. Alternatively, it may be implicit in the sense
that, in carrying out the teaching of the prior document, the skilled person would
inevitably arrive at a result falling within the terms of the claim. Lack of novelty of this
kind should be raised by the examiner only where there can be no reasonable doubt
as to the practical effect of the prior teaching.

In interpreting claims for the consideration of novelty, the examiner should have
regard to the guidance given in paragraphs 5.20 to 5.41 of the PCT International
Search and Preliminary Examination Guidelines. In particular, the examiner should
remember that statements in the claim reciting the purpose or intended use must be
evaluated to determine whether the recited purpose or intended use results in a
structural difference (or in the case of process claims, a difference in the process
steps) between the claimed invention and the prior art. Non-distinctive characteristics
of a particular intended use should be disregarded (see paragraphs 5.21 to 5.23 of
the PCT International Search and Preliminary Examination Guidelines). For example,
a claim to a substance X for use as a catalyst would not be considered to be novel
over the same substance known as a dye, unless the use referred to implies a
particular form of the substance (for example, the presence of certain additives)
which distinguishes it from the known form of the substance. That is to say,
characteristics not explicitly stated but implied by the particular use should be taken
into account. For example, if a claim refers to a "mould for molten steel", this implies
certain limitations for the mould. Therefore a plastic ice cube tray with a melting point
much lower than that of steel would not come within the claim which would thereby
be considered as being novel.

When interpreting product by process claims, the approach to be followed is given in


Appendix A5.26[1] of the PCT International Search and Preliminary Examination
Guidelines. That is, a product is not rendered novel merely by the fact that it is
produced by means of a new process.

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1.3.8.6.2 Inventive Step


This issue may arise in one of the following ways [Art 33(3) Rule 65]:

where lack of novelty has been raised, an inventive step objection relying on
the same citation will be applicable. In such instances the inventive step
defect will be automatically applicable and it will generally be unnecessary for
examiners to get involved in analysis of the inventive step issue

where a claim is considered to lack inventive step having regard to citations


other than those used to support a novelty defect, appropriate explanation will
be required.

Further guidance is provided in Chapter 13 of the PCT International Search and


Preliminary Examination Guidelines (PCT/GL/ISPE/1). See also 1.1.11 Search
Procedure.

1.3.8.6.3 Industrial Applicability


A claimed invention shall be considered industrially applicable if, according to its
nature, it can be made or used (in the technological sense) in any kind of industry.
"Industry" shall be understood in its broadest sense, as in the Paris Convention for
the Protection of Industrial Property. Industry therefore includes any physical activity
of a technical character, that is, an activity which belongs to the useful or practical
arts as distinct from the aesthetic arts; it does not necessarily imply the use of a
machine or the manufacture of an article and could cover a process for dispersing
fog, or a process for converting energy from one form to another.

Focusing on the general common characteristics of the industrial applicability


requirements, an invention that is inoperative, for example, an invention which is
clearly non-operable in view of well-established laws of nature, does not comply with
either of the industrial applicability requirements. This type of invention is considered
either as having no application in industry or as not being useful for any purpose
because it does not work.

For the assessment of industrial applicability, the following steps shall be applied:

determine what the applicant has claimed, and

determine whether a person skilled in the art would recognize the claimed
invention to have industrial applicability.

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In most cases, industrial applicability will be self-evident and no more explicit


description on this point will be required, but there may be a few instances, for
example, in relation to methods of testing, when the way in which the invention is
"industrially applicable" and the way in which it can be made and/or used are not
obvious from the description or the nature of the invention and must be made so.

It should also be noted that the term industrially applicable is synonymous with the
term utility. Thus an invention will meet the requirements for industrial applicability if
it has a utility that is:

a. specific the use is specific to the subject matter of the invention and not a
generic use;

b. substantial no further research is required in order to identify a real or


specific use; and

c. credible the use is logical and consistent with the state of the art.

Further information on industrial applicability is given in Appendix A14.01[1] of the


PCT International Search and Preliminary Examination Guidelines.

1.3.8.6.4 No Defects in Novelty, Inventive Step


and Industrial Applicability
Where no defects are found under Novelty, Inventive Step and Industrial Applicability
the reasoning for this (particularly the distinctions over the closest art) may be
included in the opinion at Box V Item 2. Annex E - IPRPII Clear Novel and Inventive
Box V Only illustrates the level of explanation required. This will facilitate completion
of the ultimate report as a full reconsideration of the citations at that stage should not
be necessary. [Rule 66.2(a)(iii)]

1.3.8.7 Box VI Certain Documents Cited


In Box VI, Item 1, list all "E" and "P" category patent documents which are relevant
for novelty or inventive step purposes (except category A documents) along with
their citation category or categories [Rule 33.1(c) Rule 64.3 Ad. Inst. 507(b)]. The
relevance of the citation - that is, whether it be to novelty or inventive step - should

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also be indicated, to the extent of specifying the particular claims to which the citation
is relevant in these respects. If the relevance is to novelty, and little additional effort
is required 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 in regard to "whole of contents" issues in
the national phase in Australia. [Rule 64.3 Rule 70.10]

Where Box VI contains an indication, a cross-reference to Box VI must be


made in Box V (even if there is no other document cited in Box V).

Occasionally citations indicate a divisional (AU) or continuation-in-part (US) priority


claim in the Bibliographic data (Usually beside INID code (60)). In this situation enter
the earliest declared priority date of the citation in Box VI. An assumption of validity is
given to priority claim.

Non-patent literature "P,X" documents are to be listed in Box V "Citations and


Explanations" as, according to Rule 64.3 Rule 70.10 of the PCT, it is inappropriate to
list them in Box VI "Certain cited documents".

Whilst non-patent literature documents do not have a priority date per se, these
documents still need to be cited for consideration during national phase examination
(they are potentially useful in some foreign jurisdictions, or in the situation where the
priority becomes invalid).

Any public disclosures (eg exhibitions, use, oral disclosure or other non-written
means) before the relevant date are indicated in Box VI Item 2. [Rule 64.2 Rule 70.9]

According to the PCT ISPE Guidelines para 17.26 Where one or more citations of
the international search report were published after the earliest priority date [and
before the filing date], the validity of that earliest priority date requires checking.

Where the right to priority is assessed and is invalid, Box II of the ISO, IPEO or
IPRPII must be completed. [PCT/GL/ISPE/1 at para 17.27 Rule 64.1]

Where the right to priority is assessed and is found to be valid, an observation to this
affect should be included in item 3 of Box II "Additional observations".

1.3.8.8 Box VII Certain Defects


This part of the opinion or report deals with defects in the form or contents of the
international application (for example, failure to comply with one or more of the
requirements specified in Rules 5 to 11).

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While any omnibus type claim failing to meet the requirements of Rule 6.2(a), this
breach is not required to be noticed and should not be mentioned in the ISO, IPEO or
IPRPII under Box VII, in accordance with the Quality Standards for Patent
Examination (see 2.1.2 Product Quality Standards). During examination, omnibus
claims are generally treated as dependent claims for grouping purposes. See 1.1.11
Search Procedure [Rule 6.2(a)]

Since our national law allows multiple dependant claims it is not necessary to
comment on these aspects in the opinion/report. [Rule 6.4(a)]

Other issues such as the numbering of claims after amendment and reference to
non-existent drawings are not defects in the form or content and need not be
mentioned in Box VII (see 1.3.9.2 Formalities).

1.3.8.9 Box VIII Certain Observations


Box VIII is used only for the specific issues of clarity of claims, description and
drawings and whether the claims are fully supported by the description.

The issues of lack of clarity (including inconsistencies between the claims and
description) and lack of descriptive support can be raised irrespective of whether they
bear on the questions of novelty, inventive step and industrial applicability. However,
if unrelated to the last mentioned criteria, issues of clarity should only be raised in the
written opinion when they are regarded as significant issues dealing with the overall
scope of the monopoly, and a claim should be regarded as supported by the
description unless, exceptionally, there are well-founded reasons for believing that
the skilled person would be unable, on the basis of the information given in the
application as filed, to extend the particular teaching of the description to the whole of
the field claimed by using routine methods of experimentation and analysis. [Rule
66.2(a)(v) PCT/GL/ISPE/1 at para 5.31 et seq]

Where the issue is raised, based on an applicant's admissions of prior knowledge,


that a claimed invention is inadequately defined, the observation should clearly state
the dependency on the applicant's admissions.

It is not possible to precisely define hard and fast guidelines as to what constitutes a
significant issue, and whether any observations should be made is a matter for an
examiner's discretion. However, where the PCT International Search and Preliminary
Examination Guidelines [PCT/GL/ISPE/1 at para 17.67] is categorical about
objections being taken in particular cases, then such objections ought to be taken.

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Otherwise, international preliminary examination should conform to Standard 11 of


the Quality Standards for Patent Examination (see Quality Standards).

Observations concerning clarity and descriptive support should not be raised in an


IPRPII unless first notified in an IPEO (see Rule 66.2(a)(v)).

1.3.9 General Considerations

1.3.9.1 Article 19 or Article 34(2)(b) Amendments


The standard for the marking of replacement and substitute sheets is:

"SUBSTITUTE SHEET (RULE 9.2)" correction of expressions used in


description filed before RO
"SUBSTITUTE SHEET (RULE 26)" formal defect corrections filed before RO

"AMENDED SHEET (ARTICLE 19)" Article 19 amendments filed before the


IB

"AMENDED SHEET" Article 34 (and Article 19 - see Admin


Inst 602(c)) amendments filed before
IPEA

"SUPERSEDED REPLACEMENT Replacement sheet which has been


SHEET (RULE 70.16(b)" replaced by another replacement sheet
which goes beyond the disclosure

"RECTIFIED SHEET (RULE 91)" Obvious error rectification under Rule 91

Note: Amendments to the description and drawings, as well as claims, may not go
beyond the disclosure as originally filed. [ PCT/GL/ISPE/1 20.10 et seq, 19.13 iv)]

Article19 amendments need to be verified as having been received by the IB. If the
applicant includes alleged Art 19 amendments with the Demand, a check of the
correspondence file should be made to see if the IB have transmitted these amended
sheets to the IPEA. If not, then a check of the published WO pamphlet on ESP@CE
can be done to see if it has been published with amendments (and these checked
against the amendments on file). If not then a check with PCT Unit should be made.
PCT Unit will send a query to the IB.

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If no confirmation is received, then the examiner should first consult the


applicant/attorney regarding the amendments before deciding to consider the
amendments as Art 34 amendments. [Ad. Inst. 602(c)]

Article 19 amendments are to be filed within 2 months from the date of mailing of the
ISR or 16 months from the priority date, whichever time limit expires later. It should
be noted, however, that the amendments will be considered as having been received
on time if they are received by the IB after the expiration of the applicable time limit
but before the completion of the technical preparations for international publication
(Rule 46.1).

If the applicant indicates that any amendments under Article 19 are to be


disregarded, the IPEA treats any such amendments as cancelled and marks the
relevant sheets of amendments accordingly.

Where the applicant has marked the appropriate check box in Box No. IV of the
Demand that amendments under Article 19 and any accompanying statement are to
be taken into account, the IPEA indicates on the last sheet of the Demand whether a
copy of such amendments and any accompanying statement was actually submitted
with the Demand. Where no copy of the amendments under Article 19 was submitted
with the Demand, a copy of such amendment and any accompanying statement will
be transmitted by the IB promptly after that IB receives the Demand. Whether the
copy of the amendments under Article 19 and any accompanying statement is
submitted with the Demand or received later, it shall be marked in accordance with
Administrative Instructions Section 602(a)(i) to (iii) and (b) before the file is forwarded
to the examiner. If no amendments under Article 19 have been made at the time
when the Demand is received by the IB, the IPEA is so informed by the IB.

"Any amendment", where new claims are substituted for old, is interpreted as "any
individual claim". Where amended claims have been received then these should
have been numbered in accordance with Administrative Instruction 205. [Ad. Inst
205]

Where the international preliminary examination is to take into account amendments


under Article 34, but the applicant failed to submit them with the Demand, the IPEA
shall invite the applicant (Form PCT/IPEA/431) within a reasonable time limit fixed in
the invitation to submit the amendments. Whether the amendments are submitted
with the Demand or subsequently, they shall be marked in accordance with Section
602(a)(i) to (iii) and (b) before the file is then forwarded to the examiner. [Ad. Inst.
602, PCT/GL/ISPE/1 at para 18.04]

Where at least some claims go beyond the disclosure, this observation must be
included in a written opinion (form PCT/IPEA/408) and IPRP (form PCT/IPEA/409) at
Box 1 Item 5, Item 4 of the IPRPII, with reasoning in the Supplemental Box of the last
sheet.
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Where only some claims go beyond the disclosure, no further consideration is


made of these claims or other claims in so far as they are appended thereto.
[Rule 66.2(a)(iv)]

Where all claims go beyond the disclosure the file is to be referred to the
supervising examiner forthwith.

Note: It seems that, in any opinion, novelty and other questions should only be
addressed to allowable or original claims. This course is not particularly useful where,
as is likely, further amendment could overcome the problem. Some discretion may be
desirable but it must be remembered that:

. further amendments might not be filed, and the examination report can be
established only with respect to allowable claims

. at least one opinion addressing the allowability of the claims should precede the
ultimate report.

Where amendments insert claims for which the search report is not appropriate (for
example, claims for which the ISA requested additional fees which were not paid),
the question of novelty, inventive step, and industrial applicability cannot be gone into
since there are no documents to consider under Art 33(6), and such reasoning is
added to the "Non-establishment" Box III of the opinion/report form. [Art 33(6)
PCT/GL/ISPE/1 at para 19.16]

1.3.9.2 Formalities
Whilst most of the aspects relating to formalities will have been checked by PCT Unit
prior to examination, there will be some formality matters which may be reported
upon by the examiner. These include matters covered in Rules 5.1, 6.1 (Ad. Inst.
205), 6.2, 6.3, 6.4, 9 and 10. [Rule 66.2(a)(iii)]

1.3.9.3 General Notes on Form Completion


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When completing forms [PCT/GL/ISPE/1 at para 17.10, 17.13, 17.51 et seq, 17.64,
17.67, 17.68]:

if there is insufficient space in any Box provided use a Supplemental Box


sheet(s)

inapplicable parts of the form are left blank; blank sheets may be omitted from
the opinion but the first, second and sixth sheets, at least, will always be
included; when electronically prepared, blank portions of the opinion may be
shrunk; word processing will enter a sheet total for the typed version of the
opinion.

The date on all documents emanating from International Authorities relating to the
international application shall be indicated by the Arabic number of the day, by the
name of the month, and by the Arabic number of the year, for example, 02 February
1991. Dual format for dates is not required on any document except the request. [Ad.
Inst. 110]

Matters raised in opinions should be as comprehensive and detailed as possible and


to a standard consistent with Australian national examination. For example, issues
relating to fair basis and clarity will be reported under "Certain Observations on the
International Examination" (i.e., comprehensive in accordance with standard 5). The
report will not address any other discretionary matters, e.g. multiple dependent
claims, and independent claims in the two-part form. [PCT/GL/ISPE/1 at para 7.13,
17.67, 17.68]

Explicit (as opposed to implicit) suggestions or recommendations of possible


amendments which would avoid a negative statement in the report must not be
made. This is because:

the very act of doing so may cause the applicant to feel restricted to
responding as suggested, thereby denying to itself other, possibly better,
options;

the suggestion or recommendation could be wrong; and

the examiner, for these suggested amendments, takes over the role of an
attorney thereby vacating his or her own role. This results in the public and
the applicant being without the services of an objective examiner.

However, it may sometimes be useful, for example, where an applicant is proceeding


without professional assistance (such as a patent attorney), if the examiner suggests,
in general terms, an acceptable form of amendment; but if the examiner does so, he
or she should make it clear that the suggestion is merely for the assistance of the
applicant and that other forms of amendment will be considered. It is always the
applicant's prerogative to amend how it thinks best.

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If the examiner who performs the examination is not the responsible examiner then
he or she should pass the opinion/report and file to the responsible examiner for
supervision.

If the responsible examiner is satisfied with the opinion/report then he or she should
indicate their name as "Authorised Officer" and then delivers, or sends via the "out-
tray", the complete file to the PCT Unit.

Examination sections have prime responsibility for eliminating the errors


occurring in reports. They must aim to eliminate errors in reports with effective
quality assurance procedures.

A preliminary examination checklist is provided at Form IPE Quality Checklist.

1.3.9.4 Rule 91 Obvious Mistakes in Documents


Rule 91.1 provides that obvious mistakes may be rectified. A request for rectification
will be in the form of a letter from the applicant. Where rectification in respect of any
document other than the request form is sought before the IPRPII is established,
PCT Unit will forward the request for rectification, the relevant file and necessary
forms to the relevant examination unit for consideration. [Rule 91.1 PCT/GL/ISPE/1
at Chapter 8]

The search examiner considers whether the mistakes is rectifiable under Rule 91.1
and completes form PCT/IPEA/412. Where in agreement a senior examiner indicates
his or her name as "Authorised Officer" and the typed form and all documents are
returned to PCT Unit for mailing.

Note:

1. Obvious mistakes in the description, claims or drawings, abstract, or any paper


submitted to the IPEA are rectifiable before the IPEA (Rule 91.1 is not appropriate,
before the IPEA, for rectifications to the request form, which are considered under
Rule 92 bis). [Rule 91.1]

2. Rule 26.4 specifies the manner in which rectifications are requested. [Rule 91.2]

3. Where rectifications authorised by the IPEA involve a replacement sheet, copies of


the replacement sheets must be annexed to the IPE Report. [Rule 66.8(a) Rule 70.16
Ad. Inst. 607]. The cover sheet of PCT/IPEA/409 is to indicate the presence of the
annex or annexes. Box 1 of PCT/IPEA/409 is to indicate as originally
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filed/furnished.

4. Rule 91.1(c) to (g) is the only source of instruction when considering requests for
rectification i.e. case law does not exist.

5. Although Rule 91.1(h) allows the IPEA to invite rectifications it is not envisaged
that such invitations will be issued since any mistakes which can be rectified under
Rule 91 will not cause any problems in establishing the IPRPII.

1.3.10 Actions by the PCT Unit


IPEOs and IPRPIIs only - see 1.1.12.2 Completing the Search Report in relation
to ISOs.

The PCT Unit will:

despatch an original of the opinion to the applicant/attorney and place a copy


on the file, recording on both the date of mailing

update the international preliminary examination database with the date of


mailing and the date set for a response.

When a response is received or the time limit for response expires, the PCT Unit will
return the file to the originating examination section for further action.

The PCT Unit will :

despatch a copy of the report under cover of the original notification, with a
common date of mailing, to the applicant/attorney

despatch, on the same day, the original of the report plus


amendments/rectifications to the IB under the cover form PCT/IPEA/415

retain the search file with a copy of the notification, report and
amendment/rectifications in the PCT Unit

update the international preliminary examination database with the common


date of mailing

where belated filing of Art 34 amendments means that such amendments


have not been taken into account by this IPEA, despatch the form
PCT/IPEA/432 (second check box action).

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1.4 Fiji Applications

1.4.1 Introduction
As a result of an initial agreement reached between the Australian Patent Office and
the Administrator-General of the Government of Fiji in 1979, this Office undertook to
do patent searching on behalf of the Fijian Government.

In view of the fact that the Fijian Administrator-General may not have access to
expertise to consider the results of such a search, it will be necessary, in addition to
the search, to provide an advisory opinion on the patentability (to the extent of
manner of manufacture) and novelty under Australian patent law concepts, of the
Fijian application. This opinion must be comprehensive since it is assumed that no
further opinion will usually be issued and that the Fijian Administrator-General has no
detailed knowledge of patent law.

Under Fijian law the Administrator-General determines whether the application is


prima facie entitled to protection. If so, a provisional certificate is issued and the
application is published. In the absence of opposition, letters patent are granted.
Thus the purpose of the Australian Patent Office performing a search and giving an
advisory opinion is to assist the Administrator-General in his determination of the
application's prima facie registrability.

Since these searches are based on applications filed according to Fijian law the
specification is not required to contain claims, however the specification is required to
describe and ascertain the nature of the invention and the manner in which it is
performed. To assist in elucidating the invention, drawings should also be filed. In
addition, Fijian law requires an invention to be for a manner of new manufacture, a
new process of manufacture, a new method of applying a known process or
improvements in known processes and letters patent in Fiji can only be granted for
one invention. Thus, except for the absence of claims, the requirements of the Fijian
Patents Act are similar to the requirements of our Act, but not as well developed.

1.4.2 Completion Time and Priority


The search examiner should aim to despatch Fijian searches within 8 weeks of
request date and, along with Thai and WIPO searches, have the lowest priority of all
international searches. The priority for searches within this category of Fijian, Thai

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and WIPO searches is by request date order. (See International Searching Annex T
for apology time limits).

1.4.3 Initial Processing


Upon receipt in this Office such requests are forwarded to PCT Unit who will:

acknowledge receipt to the Fijian Administrator-General

create a PCT unit foreign search folder and a search file

allocate an identification number using the Fiji application number and add
the details to the foreign search register

check that no material is obviously missing

establish a search request date which will be the date of receipt in this Office
where sufficient material does exist for passing the search file to the
examination branch

establish the search report and advisory opinion completion date as 8 weeks
(See International Searching Annex T for apology time limits) from the
request date

include in the search file:

a copy of the Fijian application documents, including a copy of the


request, and

a blank Search Report and Advisory Opinion form (a completed


example is shown at Annex A.1)

forward the search file to the on-line specialists for the commencement of
tracking and allocation to a section.

1.4.4 Search Procedure


The search examiner will:

classify the invention

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prepare a written search statement defining the scope of the invention to be


searched. If plurality of invention exists then the search statement must
encompass all the inventions disclosed as each invention is to be searched.

Note: The need to prepare a written search statement is essential since Fijian
applications do not require claims. Also, since it is not possible to communicate
with the applicant, the examiner must attempt to define the invention by the
search statement. Where claims are present these can be used as a basis for
the search statement.

Where a meaningful search cannot be made, then an advisory opinion is


prepared on that basis. However, a search is done where practicable.

indicate a proposed search

carry out an "original" search in accordance with 2.13.9.2 Original Searching

In performing the search, the documents which are relevant are those which remove
the novelty of the invention as defined in the search statement. A search for
obviousness is not required, hence combinations should not be attempted.

The priority date of the Fijian application is taken as the date of the petition. The
petition should be on the documents accompanying the Fijian application.

1.4.5 Search Report and Advisory Opinion


On completing the search the examiner will complete a Search Report and Advisory
Opinion form (see completed example(s) at Annex A). The report and opinion is
completely of an advisory nature.

The report and opinion will be offered under Australian patent law concepts.

Patentability opinion will be limited to the manner of manufacture consideration of


Section 18(1)(a). This limitation should be established in the written opinion - note the
expression "...patentable to the extent that it satisfies Section 18(1)(a) of the Patents
Act 1990" at item 1 of Annex A.2.

Novelty opinion will be based on the considerations for Section 18(1)(b)(i), of the
Patents Act 1990. This should also be established in the written opinion - note the
expression "...novel, as required by Section 18(1)(b)(i) of Patents Act 1990" at item 2
of Annex A.2

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It is important that the essence of both expressions above is included in the opinion
in order that the Fijian Administrator-General, who has been forwarded a copy of the
Australian Patents Act 1990, understands precisely the scope of the opinion offered.

In preparing the opinion it will be necessary to fully explain each objection since the
Fijian Administrator-General may not have ready access to other sources of
technological or patent law advice. The quoting of case law should be avoided;
instead there should be a clear statement of the principles involved and their
application in the present situation.

It should be clearly stated in the opinion that the invention as defined by the search
statement (which may draw on suitable claims, if any) is the subject of the opinion.

Where:

the subject matter or the nature of the application is such that it is not possible
to arrive at a meaningful search statement or to conduct a meaningful search,
then this will be fully explained in the opinion.

more than one invention is present this will be identified in the search
statement and in the opinion. Citations found, if any, in each search will be
discussed in relation to each relevant invention.

there is no objection to patentability, as is expected in most cases, a simple


statement to this effect is sufficient.

there is an objection to patentability, full explanation is required.

there is no objection to want of novelty, sufficient explanation should be given


for an understanding of why novelty does exist, e.g. by showing the integer of
a combination of the present invention not found in the closest prior art or a
discussion of other differences.

there is an objection to want of novelty, the completed examples of the


annexes indicate the level of explanation required.

the search examiner is not an authorized officer, upon completing the report
and opinion form the search file including a good quality copy (i.e. the best
reproduction that was possible and free of highlighting, language or other
annotation and sketching) of each citation is passed to the responsible officer
for supervision.

The search examiner (and/or the authorised officer) will closely check the report for
any errors before the search file is returned by the search examiner to the PCT Unit
for final processing (see 1.4.7 Final Processing). Examination sections have prime
responsibility for eliminating the errors occurring in reports. They must aim to
eliminate errors in reports with effective quality assurance procedures.
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There is no requirement for reports to be signed, and to avoid any confusion in the
mind of the applicant resulting from differing practices, reports should not be signed.

All details of the search history, including both patent and non patent literature
searches as well as searches conducted on the internet, along with the names of the
members of the three person team, should be retained on the correspondence file.

1.4.6 Further Advisory Opinion


The Fijian Administrator-General may have conveyed to the Fijian applicant the
results of the search report and advisory opinion prepared by this office. This will
almost certainly be the case where the Administrator-General makes an adverse
determination in respect of the Fijian application. The applicant may respond by
making submissions and/or proposing amendments. The Administrator-General may
convey these submissions/amendments to this office for a further advisory opinion.

Upon receipt of any submissions/amendments in this office the PCT Unit will:

acknowledge receipt to the Fijian Administrator-General

retrieve the search file from storage

check the search file for completeness, including citations

make a copy of the submissions/amendments, placing the copy on the search


file and the original in the foreign search folder

enter the details on the foreign search register

forward the search file including a blank further opinion form to the section
who originated the search report and advisory opinion.

The search examiner will prepare a further advisory opinion (completed example(s)
see Annex B). This will not involve any further searching regardless of the
introduction of new subject matter or any broadening in scope to the invention as
previously established. The opinion will follow Completion Time and Priority in levels
of explanation and subject matter, i.e. in again addressing patentability (to the extent
of manner of manufacture) and novelty, under Australian patent law concepts. The
opinion will also recognise and discuss the submissions/amendments.

The sole fresh consideration of a further opinion is that of allowability of


amendments, as would prevail under the Australian patent law concepts. The Fijian
Act allows amendments "provided that no extension or enlargement of any exclusive

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privilege before acquired shall be affected by such amendment." This implies that no
broadening of the scope of the monopoly is allowable.

Allowability of amendments should be based primarily on the considerations for


Section 102(1) of the Australian Patents Act 1990. At the first opinion stage a search
statement will have been drafted drawing on the description, drawings and suitable
claims, if any, of the specification as filed. Amendments will be considered not
allowable if, as a result of amendment, the specification would claim matter not in
substance disclosed in the specification as filed. A contrast of the search statement
of the first opinion with a notional search statement following amendment may assist
the determination. A full explanation of amendments not considered allowable, and a
brief explanation for allowable amendments, will be made. Again the scope of the
opinion will be indicated by an expression such as "...allowable under Section 102(1)
of the Patents Act 1990" as shown at item 1 of Annex B.

Where the search examiner is not an authorized officer, upon completing the further
opinion form the search file is passed to the responsible officer for supervision.

Following typing the search examiner (and/or the section quality controller) will
closely check the typed report for any errors before the search file is returned by the
search examiner to the PCT Unit for final processing. Examination sections have
prime responsibility for eliminating the errors occurring in reports. They must
aim to eliminate errors in reports with effective quality assurance procedures.

1.4.7 Final Processing


Upon return of the search file with a search report and advisory opinion the PCT
Unit will:

make one copy of each citation and three copies of the report and opinion
form

despatch the original plus one copy of the form and one copy of each citation,
under a covering letter to the Fijian Administrator-General

send to storage the search file containing one copy of the form and one copy
of each citation

place a copy of the form and the copy of the request in the foreign search
folder held in the PCT Unit

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update the foreign search register with the date of mailing to the Fijian
Administrator-General

Upon return of the search file with a further advisory opinion the PCT Unit will:

make three copies of the further opinion

despatch the original plus one copy of the further opinion, under a covering
letter, to the Fijian Administrator-General

send to storage the search file including a copy of the further opinion and the
original submissions/amendments

place a copy of the further opinion and the copy of the


submissions/amendments in the foreign search folder held in the PCT Unit.

update the foreign search register with the date of mailing to the Fijian
Administrator-General.

1.5 Thai Applications

1.5.1 Introduction
The Australian Patent Office has agreed to assist the Department of Intellectual
Property of Thailand by searching a small number of applications made under the
Thai Patents Act. Both Thai nationals and non-Thai nationals are required to pay the
current search fee for this assistance. (Any fee payable is arranged by the PCT Unit
on completion of the search.)

The Thai Office will usually provide, as minimum search documentation, an English
language translation of the abstract and the broadest claim together with a copy of
the drawing(s) where applicable of each application to be searched.

1.5.2 Completion Time and Priority


Thai searches should be completed within 8 weeks of request date and have a lower
priority than the establishment of international search reports (ISRs). The priority for
all searches other than that for ISRs is by request date order.

Search Reports should, under normal circumstances, be transmitted to Department


of Intellectual Property of Thailand within 8 weeks of receipt of the request but in all
cases are to be transmitted to Thai office within 12 weeks of the date of receipt of the
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request for a search by this Office. It is important that this latter time limit be met, as it
is set down in our Memorandum of Understanding with the Thai office. If this time
limit is not met, the examiner must draft a one sentence apology and attach it to the
case file before forwarding the case file to the PCT Unit with the instruction that it is
to be incorporated into the covering letter which is to accompany the report.

1.5.3. Initial Processing


Upon receipt in this Office such requests are forwarded to the PCT Unit who will:

acknowledge receipt to the Department of Intellectual Property of Thailand

create a PCT Unit foreign search folder and a search file

allocate an identification number using the Thai application number and add
the details to the foreign search register

check that no material is obviously missing

establish a search request date which will be the date of receipt in this Office
where sufficient material does exist for passing the search file to the
examination branch

establish the search report completion date as 8 weeks from the request date

include in the search file a copy of the application, and

forward the search file to the on-line specialists for the commencement of
tracking under an AU Job No and allocation to a section.

1.5.4 Search Procedure


The search examiner will:

classify the invention

indicate a proposed search which will be a standard international


search. The agreement between IP Australia and the Department of
Intellectual Property of Thailand stipulates that IP Australia will
discover as much of the relevant prior art as our facilities permit and
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will, in any case, consult the documents specified in the PCT minimum
documentation in accordance with Rule 34 of the Regulations under
the PCT.

conduct an international-type search, using the procedures set out in 1.2.1


Procedural Outline - International Type Search, but modified as follows:

the Thai application is treated as though a provisional in that the


examiner will determine the classification but not make any entries on
PATINDEX.

The application has to meet the PCT unity of invention requirements.


If the application does not meet these requirements, IP Australia shall
establish the search report on those parts of the application, which
relate to the invention first mentioned in the claims (main inventiom).
If there is a lack of unity then the main invention will be searched and
reported on (give an indication at checkbox 2 of the first sheet and full
explanation in Box II continued on the extra sheet if necessary,
modelled on 1.1.19 International Searching Annex E2). There is no
requirement that either the Thai office or the applicant be advised of
lack of unity other than in the search report, and in particular no
invitation to pay additional fees will be issued.

where a meaningful search cannot be made (e.g. multiple inventions,


obscure claims) a senior examiner should write to the Thai Office
explaining precisely the nature of the problem and requesting a
proposed course of action to it e.g. to more clearly define the invention
or to limit the scope of the claim. The letter should be forwarded to the
PCT Unit (together with the case file) for despatch. This may result in
a justifiable delay to the search completion date.

1.5.5 Search Report


A completed example report is shown in Annex A1

The completed search report form must include a written search statement if there
are no claims. The examiner should use an extra sheet to indicate the search
statement.

The search file including:

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the original of the search report with the name of the "Authorized Officer"
indicated*, which has been closely checked for any errors (Examination
sections have prime responsibility for eliminating the errors occurring
in reports. They must aim to eliminate errors in reports with effective
quality assurance procedures), and

a good quality copy (i.e. the best reproduction that was possible and free of
any highlighting, language or other annotation and sketching) of each cited
document, which will usually be a full text copy but could be an abstract e.g.
JP or SU

all details of the search history, including both patent and non patent literature
searches as well as searches conducted on the internet, along with the
names of the members of the three person team, should be retained on the
correspondence file

is returned by the search examiner to the PCT Unit.

*Note: There is no requirement for reports to be signed, and to avoid any confusion
in the mind of the applicant resulting from differing practices, reports should not be
signed.

1.5.6 Final Processing


Upon receipt of the search file the PCT Unit will:

make one copy of each citation and three copies of the report

prepare an invoice for the cost of the search. This invoice is costed to the
Department of Intellectual Property of Thailand and not the applicant

despatch the original plus one copy of the report, one copy of each citation
and the invoice, if any, under a covering letter to the Thai Office

send to storage the search file containing one copy of the report and one
copy of each citation

place a copy of the report and the request in the foreign search folder held in
the PCT Unit

update the foreign search register with the date of mailing to the Thai Office.

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1.6 WIPO Searches

1.6.1 Introduction
In agreement with WIPO this Office has undertaken to prepare a small number of
state-of-the art search reports for the benefit of developing countries, preferably in
our region of the world. Requests are allocated by WIPO to one of several national
Offices (AT, EP, FI, SE, DE, AU) participating in this program.

Under the program the extent of the search is normally PCT minimum
documentation. For this reason these procedures are modelled on our International
and International-Type search procedures. However, a search covering the whole
period from 1920 may not always be required. Truncation of this period may be
inherent in the nature of the request or the requestor may have indicated a limitation
as to the period, countries, languages or IPC areas to be searched, and to this extent
the search strategy adopted may vary from our normal PCT search. One truncation
strategy could be to search back to 1975 then assess the merits of searching prior to
that date.

In the situation that a foreign search result is available, the search required will be a
top-up search only and will be performed from the date of the ISR until any date
specified in the request, or until the date of filing of the request.

1.6.2 Completion Time and Priority


The search examiner should aim to despatch WIPO searches within 8 weeks of
request date and, along with Fijian and Thai searches have the lowest priority of all
international searches. The priority for searches within this category of Fijian, Thai
and WIPO searches is by request date order. (See International Searching Annex T
for apology time limits).

1.6.3 Initial Processing


Upon receipt in this Office such requests are forwarded to PCT Unit who will:

acknowledge receipt to WIPO

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create a WIPO search folder and a search file

allocate an identification number using the WIPO request number and add the
details to the foreign search register

check that no material is obviously missing

establish a search request date which will be the date of receipt in this Office
where sufficient material does exist for passing the search file to the
examination branch

establish the search report completion date as 4 months from the request
date

include in the search file a copy of the search request, the accompanying
papers and a blank WIPO Search Report form (a completed example is
shown at Annex B)

forward the search file to the on-line specialists for the commencement of
tracking under an AU Job No and allocation to a section.

1.6.4 Search Procedure


The objective of the search is to discover the state of the art i.e. within the art
specified in the request, those documents which are representative of the various
trends of inventions during the period searched.

WIPO have suggested that on average 20 documents would show this.

Since these requests have no "priority date", regard must be had to any document
published at the time of doing the search, being available and accessible to the
examiner.

An international-type search is required. National Searching details how such a


search varies from the full International Search.

In brief, WIPO searches involve the steps:

the search examiner, in consultation as necessary with a responsible


examiner and on-line specialist, will indicate an appropriate classification and
limitations of the search in relation to period, language or country.

where there is insufficient information in the search request to enable the


search examiner to undertake a proper search, the examiner is to write to

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WIPO seeking a more detailed description of the invention. The letter should
be forwarded to the PCT Unit (together with the case file) for despatch (an
example of the letter may be found at Annex C). This may result in a
justifiable delay to the search completion date.

the on-line specialist will order from Exam Support & Sales the required
patent abstracts.

while these are being prepared, the search examiner should conduct the
PAIS search and, if required, a search of non-patent literature and AU
documents. For non-patent literature searching see 1.1.10 Non Patent
Literature.

on receipt, the abstracts are inspected for relevance and the need for
obtaining full specifications. French or German language assistance is
available from the examiners list.

on completion of the abstract search, the examiner compiles a list of foreign


patents, including any EP and WO documents previously found for which
copies of the full specifications are needed. For any in a foreign language and
which fall within the INPADOC period, the examiner consults INPADOC - PFS
fiche or on-line to determine whether an English language equivalent exists. If
so, the English language full document is to be ordered instead.

If any Japanese or Russian abstract appears relevant the Patent Family


Service should be consulted to determine whether English (or French or
German) equivalents exist. If so, the full specification of the English equivalent
should be requested, or - depending on the relevance - the French or German
if no English exists. The English (or French or German) document is then cited
if pertinent.

Unless examiners can understand Japanese or Russian there is little point in


calling for full specifications in these languages even if abstracts appear
relevant. In view of this and the difficulty associated with locating the full
specifications, these should not be requested from Exam Support & Sales.

In determining whether or not Russian and Japanese material should be cited,


only the English language abstracts themselves should be considered.

the examiner sends the list of the full specification references (other than AU)
to Exam Support & Sales. This list should amount to only a small fraction of
the total search length.

Exam Support & Sales obtains photocopies of the full specifications required
and forwards them to the examiner to complete the search.

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requests for full copies are given priority over other work and should be
delivered or forwarded to the OIC Exam Support & Sales. The request should
include the words, FULL COPIES REQUIRED, and indicate the country and
numbers of the specifications required, and the job number of the search for
which the specifications are required.

the examiner views the (foreign) full specifications and decides which are
relevant. The most relevant foreign and AU documents are cited in the report
with English language documents being preferred over foreign language
documents disclosing the same matter.

the copy of any foreign document cited is retained with the search file. A copy
of any AU citation is also to be retained in the search file and is to be obtained
either by:

the examiner photocopying the citation, or

the examiner sending a request to TSU to supply photocopies.

On receipt of the full copy of any non-patent literature references previously ordered
the examiner will determine which of those references are relevant. Where the patent
document search is complete but some full copy non-patent literature references are
outstanding, the examiner is to consult with the responsible senior examiner before
completing the report.

1.6.5 Search Report


Following completion of the search, the search report is compiled. WIPO Guidelines
including sample reports are found at Annex A.1, A.2 and A.3. An example of a
completed Australian report form is shown at Annex B.

In completing this form,

delete any country not searched

patent documents are referred to by country and publication number only

comments are normally required, the only exception being where the
requestor is an Industrial Property Office.

where comments are made they are to be limited to what the document
discloses i.e. why it has been cited - see the completed example report(s)

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where space is insufficient, add a further sheet.

The search file including:

the original of the search report with the name of the "Authorized Officer"
indicated*, which has been closely checked for any errors (Examination
sections have prime responsibility for eliminating the errors occurring
in reports. They must aim to eliminate errors in reports with effective
quality assurance procedures), and

a good quality copy (i.e. the best reproduction that was possible and free of
any highlighting, language or other annotation and sketching) of each cited
document, which will usually be a full text copy but could be an abstract e.g.
JP or SU or an item of non-patent literature

all details of the search history, including both patent and non patent literature
searches as well as searches conducted on the internet, along with the
names of the members of the three person team, should be retained on the
correspondence file

is returned by the search examiner to the PCT Unit.

*Note: There is no requirement for reports to be signed, and to avoid any confusion
in the mind of the applicant resulting from differing practices, reports should not be
signed.

1.6.6 Final Processing


Upon return of the search file the PCT Unit will:

make one copy of each citation and three copies of the report

despatch the original plus one copy of the report and one copy of each
citation, under a covering letter to WIPO

send to storage the search file containing one copy of the report and one
copy of each citation

place a copy of the report and the copy of the request in the WIPO search
folder held in the PCT Unit

update the foreign search register with the date of mailing to WIPO.

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1.6.7 Annexes

WIPO search request guidelines


WORLD INTELLECTUAL PROPERTY ORGANIZATION

GENEVA

PROGRAM FOR FREE-OF-CHARGE PATENT INFORMATION AND


DOCUMENTATION SERVICES

GUIDELINES FOR THE SUBMISSION OF SEARCH REQUESTS

1. Each search request should:

a. specify the government department or other national authority,


institution or organization making or endorsing the search request;

b. indicate the title of the subject matter of the search request; the title
should be a brief designation of that subject matter; the subject matter
itself should be a well defined single technological problem;

c. be signed by the requestor and/or the director or other responsible


official of the government department, national authority or institution
making the search request.

2. Each search request should be accompanied by:

a. a full and detailed description of the subject matter of the search


request;

b. a summary of the description in no more than 150 words;

c. any drawing necessary for the understanding of the description;

d. the request specifying the type of information desired.

3. The search request and the papers accompanying the request have to be
written in either one of the following languages: English, French, German or
Spanish.

4. When possible, a search request should also be accompanied by an


additional statement, designed to assist in carrying out the search concerning

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the purpose of the request, any limitation of the search (e.g. by date, country,
language or by International Patent Classification units).

5. The DESCRIPTION in a search request may describe either a solution to a


technical problem or a technical problem itself. The description could, for
example, be the terms of reference of a laboratory team in respect of one of
their specific assignments.

In drafting the description, the purpose of the request and the intended use of
the report should be borne in mind.

When a solution is described, the search request may help in evaluating the
solution particularly by referring to other solutions for the same problem shown
in the state of the art.

When a technical problem is described without a solution, the search request


may be helpful in indicating what solutions are already known; in this case,
particular care may be necessary in drafting the description of the problem, in
order to enable a search of the state of the art to be carried out.

The problem should be of limited technical scope and explained in sufficient


detail to enable the relevant documents to be found.

In the case of some search requests, it may be possible for the solution or the
problem to be described with sufficient precision in less than 150 words. Even
in these cases, it is requested that a SUMMARY be also provided.

6. The SUMMARY should restate the most important aspects of the description
in abbreviated form.

7. The REQUEST should specify the type of information desired, bearing in


mind that the information must be available from patent documentation.
Prices, cost/benefit estimates and other more economically oriented
information does not belong to this category.

EXPLANATORY NOTE

8. The search report will contain:

a. the date on which the search was actually completed

b. the classification symbols of either the International Patent Classification or


the National Patent Classification of the fields searched identifying the States and the
periods to which the report is extended

c. the citations of the documents considered to be relevant with copies of these


documents.

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Examples of search requests (and search reports pertaining thereto) are attached to
these Guidelines.

(Appendices follow: Two Model Search Requests and Search Reports, Request
form)

WIPO search request


APPENDIX 1

Model No.1

SEARCH REQUEST

Title: Knives for cutting and Preparing Sugar Cane for its After-Processing

Description:

Our grinding mills for initial preparation comprise knives for cutting sugar cane,
consisting of a cylindrical hollow shaft of large diameter with a series of discs, acting
as knife holders, fixed to the shaft by appropriate means, and a series of knives fixed
to wide discs. Furthermore, there are defibrator knives with one or two curved edges
coated with hard welding. At present, special attention is directed to equipment for
initial preparation in order to eliminate design defects and frequent breakages, as
well as bottlenecks, appearing in the crushing and cutting of cane, and to find out the
optimal parameters for the exploitation or operation of the knives.

In general, special attention has been given to trends for the application of:

Special shredding of defibration knives (serrated tooth)


Double-edge revolving cane knives
Swinging hammers
Dollies
Reversing mechanisms

The introduction of heavy and light hammers, as well as heavy defibrators, is also
being investigated.

Summary:

In order to improve the initial preparation and to avoid any insufficiencies (such as
breaking of the shaft or knife support, or defibration elements, wear of the knife

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material. etc.) occurring in the crushing and cutting of cane, investigations for
applying the above-mentioned equipment are being made.

Request:

Patent documents and possibly other relevant literature -especially of recent date-
concerning equipment for crushing or cutting the fibers of sugar cane, as well as
progressive methods for initial preparation, are requested.

SEARCH REPORT

a. Field of Search (IPC): C 13 B

b. Pertinent Literature:

1. DE- 1 191 310 11. DE- 1 532 298


AS OS
2. 646 980 12. 48 456
DE AU
3. 1 994 051 13. 3 225 803
US US
4. 1 217 326 14. 1 192 084
US GB
5. 1 016 200 15. 1 138 081
DE- GB
6. 968 558 16. 3 567 510
AS
US
7. 377 512 17. 3 424 612
DE
US
8. 365 779 18. 1 963 944
DE
DE-
9. 363 444 19. 1 066 793
DE AS
10. 360 561 20. 3 351 295
DE GB

DE US

c. Comments:

The listed patent documents DE-AS 1 191 310 to US 1 217 326 relate to devices for
cutting sugar cane. The patent documents DE-AS 1 016 200 to DE 360 561 deal with
sugar cane crushers. The documents DE-OS 1 532 298 to GB 1 138 081 describe
examples of various devices for disintegrating sugar cane. US patents Nos. 3 567
510 and 3 424 612 describe methods and apparatus for separating the components
of sugar cane stalks. The remaining patent documents describe devices for preparing
sugar cane with the aim of removing the sugar by diffusion.

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The above-mentioned patent documents do not necessarily give information about


the advantages and disadvantages (such as wear of knife material, etc.) of the
devices so described. In view of the request for information disclosing more
progressive methods than those mentioned in the application, old patent
specifications have not been cited.

WIPO search request


Model No. 2

SEARCH REQUEST

Title: Yellow Coloring of Citrus Fruits

Description:

Yellowing techniques with the corresponding fruit-waxing are used in order to ensure
the preservation of the fruit and the improvement of its appearance. It is known that
the degreening parameters are dependent on climatic conditions. The use of the
continuous venting method renders the operation of the degreening chamber more
economical and more readily automated. In this respect, ethylene manometer dosers
permit wide-range dosage of gas, in addition to allowing for flow adjustment by
means of valves.

Summary:

Yellowing techniques with the corresponding fruit-waxing are widely used in order to
ensure the conservation of citrus fruit and the improvement of their appearance.

Request:

We would like to know the latest methods developed for yellowing of citrus fruits, as
well as the latest improvements.

SEARCH REPORT

a. Field of Search (IPC): A 23 B 7/00; A 23 L

b. Pertinent literature:

Patent documents

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1. US 2,062,903 8. US 3,458,627

2. US 2,072,022 9. US 1,475,938

3. US 2,425,073 10. US 1,846,143

4. US 2,503,664 11. US 1,920,540

5. US 2,503,665 12. US 2,577,421

6. US 2,507,438 13. US 3,034,903

7. US 2,582,868 14. US 3,522,057

Non-Patent Literature

15. Chemical Abstracts 1970, Vol. 72, 120152j

16. Chemical Abstracts 1972, Vol. 76, 111807g

17. Chemical Abstracts 1973, Vol. 79, 39264v

18. Chemical Abstracts 1973, Vol. 79, 90616p

19. Chemical Abstracts 1974, Vol. 81, 36659h

c. Comments:

Patent documents (1) to (8) relate to coloring citrus fruit by means of dyes.

According to patent document (1) an oil-soluble, water-insoluble, dye is used. Patent


document (2) describes a process which involves mixing a coloring matter soluble in
the natural wax present in the peel of the fruit with a dry, solid carrier, and applying
the mixture to the surface of the fruit.

Patent document (3) relates to a process for treating whole fruit and vegetables,
which involves forming an aqueous dispersion of a way containing an oil-soluble dye
and applying that dispersion to whole fruit.

According to the processes described in patent documents (4) and (5), the dye is
suspended in the solution of a salt of an amine, the amine having at least one
hydrocarbon chain of at least 10 to 20 carbon atoms.

According to patent document (6), the fruit is flooded with an aqueous emulsion of
edible dye.

Patent document (7) deals with a non-aqueous concentrate and a process of coloring
citrus fruit with the said concentrate.

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In patent document (8), a composition for preserving gathered fruit and vegetables is
described which also improves the color of the treated matter.

Patent documents (9) to (14) deal with coloring citrus fruit by means of coloring
gases.

In patent document (9) and (11) ethylene gas is used.

Patent document (10) relates to a process for coloring citrus fruit which involves
spreading a thin coating of protective material over the surface of the fruit and
subjecting the coated fruit to the action of a coloring gas.

Patent document (12) describes degreening by treatment with an atmosphere


containing a member of the group consisting of ethylene oxide, trichlorethane and
ethylene dichloride.

According to patent document (13), fresh oranges are subjected to the action of the
vapors from a liquid mixture consisting of substantially equal portions of
1,1,1,trichlorethane and methylenechloride.

Patent document (14) deals with a process for degreening and ripening fruit by
treating stored fruit with a circulating airstream maintained at a selected fruit
processing temperature.

The abstracts found in 'Chemical Abstracts' describe the following:

(15) modified atmosphere for ripening fruit and vegetables in chambers.

(16) Carotenoids in citrus fruit.

(17) Process for post-harvest-ripening and degreening of bananas and citrus


fruit.

(18) Optimum temperature and ethylene concentrations for post-harvest


development of carotenoid pigments in citrus.

(19) The influence of refrigeration on the commercialization of citrus fruit.

1.7 GCC Searches

1.7.1 Introduction
Note: The GCC patent legislation can be accessed at the GCC Patent Office
website.

As a result of a Memorandum of Understanding (MOU) in 2002 between IP Australia


and the Patent Office of the Cooperation Council for the Arab States of the Gulf
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(GCC), the Australian Patent Office has undertaken to produce, upon request, the
following types of reports on applications for patents filed before the GCC:

"bibliographic" search report

"novelty" search report

an examination report

an "evaluation of substantive examination" report

A bibliographic search refers to a search to find any earlier search results. A novelty
search equates to the novelty part of a PCT international search, and examination
equates to PCT international preliminary examination.

An evaluation is analogous to the supervision by a Senior Examiner of a PEPA


candidate and is carried out on examination performed by the GCC Patent Office.

Our MOU with the GCC, like that with Singapore, requires that we:

"will be guided to the extent appropriate and necessary, by the Guidelines for
International Search and for International Preliminary Examination to be carried out
under the Patent Co-operation Treaty"

and, as with Singapore, stipulates Rules 43.2, 43.3, 43.5, 43.6, 43.7 and 44.2 of the
PCT in relation to searching and Rules 70.2, 70.4, 70.6, 70.7, 70.10, 70.11, 70.12
and 70.13 in relation to examination.

If the Bibliographic search box is crossed in the "Required Procedure" request of the
covering letter, then a bibliographic search will be performed by the appropriate
examination area (see Initial Processing of a Request ) and sent to the PCT unit.
Under the MOU we are required to ascertain whether a search report has been done
by any of the following: AT, DE, EP, GB, US, or WO. A copy of all documents
containing search reports published by these countries is to be forwarded to the
Patent Office of the GCC. PCT will do this under cover of an appropriately worded
letter. The letter is to indicate if any of the documents are not available to us or are
not in the English, French or German language.

Where the request is for a search and examination report and the bibliographic
search report has indicated there is more than one published search report available,
the examiner is to select the most reliable, with preference to be given to searches by
PCT Authorities and commence examination.

Where only one search is available, then this is to be used.

If any of the citations in the search report (or a family member) is either not available
to us or, if available, is not in English, French or German, the Patent Office of the

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GCC will provide us with a copy of the document if it is an English, French or German
language document, or else a translation if it is not.

If the bibliographic search fails to turn up any earlier search results, PCT unit will,
upon receipt of the bibliographic search report from the examiner, immediately advise
the Patent Office of the GCC of this and the case will be in order for a novelty search
and, if it has been requested, an examination is to be performed.

In the situations where a Bibliographic search report has been requested and no
earlier searches have been found, or where no Bibliographic search has been
requested, an examiner may still find an equivalent search report in the process of
their normal searching function. Appropriate use should be made of such a search
report in the conduct of the search being undertaken.

All correspondence to/from this office will be via the PCT Unit and in accordance with
the agreement all correspondence between this office and the Patent Office of the
GCC shall use the English language. The only foreign language requirement of this
office is the consideration of French and German priority documents and citations.
The PCT Unit will despatch all reports to the Patent Office of the GCC by courier.

No IP Australia staff member is to provide advice or information relating to matters


before the Patent Office of the GCC to outside parties, including applicants and their
representatives. Persons making such enquiries, be they located in Australia or
elsewhere, should be told to direct their enquiries to the Patent Office of the GCC.

For the purposes of communicating with the Patent Office of the GCC and calculating
relevant time limits under the GCC patent legislation, it should be taken into account
that the GCC "working week" is from Saturday to Wednesday. Although the domestic
calendar is based on lunar months, time limits should be determined according to the
Gregorian calendar. Note that the GCC has not yet acceded to either the Paris
Convention or the PCT.

Where unity of invention is lacking, search reports and examination reports will report
on the main invention only.

Thus if unity was found lacking at the search but all the inventions were searched
and the lack of unity was not addressed by the amendments/submissions, if any, on
file, then, unless the examiner considers there to be unity of invention, examination
will proceed only on the main invention. Where an additional invention has not been
searched for lack of unity, examiners should take the same line on lack of unity as
was done in the search.

The fact that a priority claim is being made is indicated by whether there is any entry
under the heading "Request Priority" in Form 8. If no priority claim is referred to, it
should be assumed that none exists, even if the examiner becomes aware of a family

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member that would serve that purpose and even if that family member prior
publishes the present application.

In the case of the examination report, if the Form 8 indicates that a valid priority claim
has been made, then no entry should be made in Box II. If the Form indicates that a
valid priority claim has not been made, then the basis upon which that is determined
should be reproduced in Box II.

No search is to be conducted at examination. If the examiner is, or becomes, aware


of a fresh citation it may be cited; one copy of the citation is to be despatched with
the report to the Patent Office of the GCC and one copy made for local file purposes.

The examiner will ensure that all appropriate steps to find out whether an Australian
family equivalent of the GCC application under examination exists have been taken.
Thus the examiner should do a Patent Family Members enquiry (through the
examiner's workbench), including the basic document number in the enquiry if it is a
non-GCC document, to establish if an Australian equivalent exists. Where an
equivalent does exist, the examiner should endeavour to ensure that there are no
inconsistencies in the reporting on the respective applications. The same examiner
should examine each case, even if that examiner is no longer in a section that
currently holds the IPC class.

Annexes B and C to this chapter show the reporting formats to be followed. These
report forms are GCC generated and are modelled on the corresponding PCT forms,
however, all sheets are to be included in the final report and an indication of the
number (6 for a Search and 10 for an exam) is to be placed on the front sheet (in two
places for the exam). If required, supplemental box (or extra) sheets to the reports,
which must be included, should be used in lieu of other forms in the PCT series.

1.7.2 Fees
IP Australia bills the Patent Office of the GCC for work done in accordance with a
schedule of charges to the Memorandum of Understanding. PCT unit has a copy of
the current schedule. There are no [upfront] fees as such.

1.7.3 Completion Times and Priority

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Bibliographic search reports should, under normal circumstances, be transmitted to


the Patent Office of the GCC within 2 weeks and novelty search reports and novelty
search and examination reports within 8 weeks of receipt of the request, but should
always be transmitted to the Patent Office of the GCC within 2, 3 and 3 months,
respectively, of the date of receipt of the request for a search by this office. However,
if more than 30 search requests are received in any one month, only the first 30 have
to achieve this time limit with the remainder being subject to an "either within that
time limit or as soon as possible thereafter" requirement. One copy of each citation
will accompany the report. Refer toInternational Searching Annex T for apology time
limits.

All examination reports should, under normal circumstances, issue within 4 weeks of
receipt in the office, but in all cases must be despatched within two months.
However, if more than 60 examination requests are received in any one month, only
the first 60 have to achieve this time limit with the remainder being subject to an
"either within that time limit or as soon as possible thereafter" requirement.

It is not known at this time whether any time limit applies to the applicant's response.

1.7.4 Search Report or Search and Examination Report

1.7.4.1 Initial Processing of a Request for a


Search Report or Search and Examination
Report
Upon receipt in this office such requests are forwarded to PCT Unit who will:

acknowledge receipt to the Patent Office of the GCC

create a PCT unit foreign search/examination report folder and a


search/examination report file which will indicate clearly whether the request
is for a search report or a search and examination report

allocate an identification number using the GCC application number and add
the details to the foreign search/examination report database on the
mainframe computer

check that no material is obviously missing

establish a search request date which will be the date of receipt by this office
of the application documents, including a search request
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establish, as required (see h), below), the bibliographic search report


completion date as 2 weeks from the search request date, the novelty search
report date or the novelty search and examination report date as 8 weeks and
the examination report date if no novelty search is required as 4 weeks

include in the search/examination report file a copy of the GCC application


documents, including a copy of the request

forward the search/examination report file to the on-line specialists for the
start of tracking under an AU Job No and allocation to a section.

1.7.4.2 Novelty Search Procedure


The "novelty" search to be conducted is basically the same as the novelty part of a
PCT international search. The minimum documentation is the PCT minimum
documentation plus AU documents plus any documents of the GCC Patent Office
transmitted to the Australian Patent Office.

All "E" & "P" documents are to be included in the search report, in line with a PCT
ISR, irrespective of the country of origin. Although non-GCC documents per se have
no bearing on the validity of the GCC application, their presence in a search report is
necessary in case the existence of a GCC family member comes to light later.

A completed search report form GCC -Exam. R.1 is shown at Annex B.

Upon receipt of the search/examination report file the search examiner will:

classify the invention, according to the current IPC edition, on the inside of
the search/examination report file jacket; no action relating to PATINDEX or
KA forms needs to be taken.

prepare a written search statement defining the scope of the invention to be


searched. An existing abstract or claim may be suitable.

consider unity of invention. If there is a lack of unity then the main invention
will be searched and reported on (at checkbox 2 of the first sheet and fully
explained in Box II continued on the extra sheet if necessary, modelled on
International Searching Annex E.2). There is no requirement that either the
Patent Office of the GCC or the applicant be advised of lack of unity other
than in the search report, and in particular no invitation to pay additional fees
will be issued (see 1.1.4.2 Determining Lack of Unity).

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consider whether there is any non-patentable subject matter under the GCC
patent legislation present.

Any matter which offends against the Islamic Shariah/GCC laws of conduct will
be filtered out by the Patent Office of the GCC before it comes to the Australian
Patent Office, so we do not have to consider this.

The general guidance of Subjects to be Excluded from the Search in regard to


excluded subject matter is to be followed, i.e. in AU practice a search will
almost always be conducted and will always be done where practicable.

Where any claims are not searchable, the report at Box I will indicate and
explain any excluded subject matter (form PCT/ISA/203 is not to be used).

The Deputy Commissioner of the Section is to be made aware of any instance


of an indication in checkbox I of Box 1 prior to despatch of the report.

consider obscurities, inconsistencies or contradictions in the light of


Obscurities, Inconsistencies or Contradictions, i.e. a search is to be
conducted if at all practicable. If not, which should be extremely rare, this is
indicated at checkbox 1 of the first sheet and explained at Box I of the report
and the procedure thereafter follows d) above.

consider the title, which is either approved as submitted by the applicant or


established by this office as indicated by checkbox 4 on the first page of the
report.

consider the abstract, which is either approved as submitted by the applicant


or established by this office as indicated at checkbox 5 of the first sheet and
Box III of the third sheet. In neither case is comment invited from the applicant
and it may be preferable to finalise this text after completion of the search.

consider the figure of the drawings to be published with the abstract; again no
comment is invited of the applicant - checkbox 6 of the first sheet is
completed. The applicant's figure choice is usually found at the bottom of the
abstract sheet that accompanies the specification.

form a three person team to devise a search strategy, then conduct the
search as follows:

Search AU documents (optional)

Determine search strategy

Order foreign patent abstracts through on-line specialists and perform


PAIS search (this should be no later than a few days from the receipt
of the search copy by IP Australia)

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Search non-patent literature

Order relevant non-patent literature from library

Receive and search foreign document abstracts

List foreign documents (incl. EP & WO) requiring full copy

Consult Patent Family Members Queries for family equivalents

Order full copy documents from ES&S

Assess which documents (incl. AU) to be cited

Receive and assess non-patent literature full copies

Reconsider classification

If the request is for a search and examination, the examiner should proceed
to carry out the steps contained in Examination Procedure.

1.7.4.3 Search Report or Search and


Examination Report Completion
On completing the search the examiner will author-key the search report using the
system macros provided for that purpose. The completed example of Annex B is to
be carefully followed. Likely content variations are illustrated by International
Searching Annexes B and C.

There is no requirement for reports to be signed, and to avoid any confusion in the
mind of the applicant resulting from differing practices, reports should not be signed.

After all quality checking and assurance processes have been undertaken and,
where required, the examination report has been completed (see Examination
Procedure), the search/examination report file including:

the original of the search report, and

if applicable, the examination report

a good quality copy (i.e. the best reproduction that was possible and free of
any highlighting, language or other annotation and sketching) of each cited
document, which will usually be a full text copy but could be an abstract e.g.
JP or SU,

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is returned via the internal clearance ("out tray") to the PCT Unit.

1.7.4.4 Final Processing of the Search Report or


Search and Examination Report
Upon receipt of the search/examination report file the PCT Unit will:

make one copy of each citation and one copy of each report

despatch the original plus one copy of each report and one copy of each
citation under a covering letter to the Patent Office of the GCC.

send to storage the search/examination report file containing one copy of


each report and one copy of each citation

update the foreign search/examination report database on the mainframe


computer with the date of mailing to the Patent Office of the GCC.

1.7.5 Examination Report

1.7.5.1 Initial Processing Examination Report


Upon receipt in this office such requests are forwarded to PCT Unit who will:

acknowledge receipt to the Patent Office of the GCC (see Initial Processing of
a Request for a Search Report or Search and Examination Report)

either:

where the search was conducted by another office - create a PCT unit
foreign search/examination report folder and a search/examination
report file; or

where this office conducted the search (bibliographic or novelty)


separate to the examination - retrieve the existing folder and file; or

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where the request is in respect of a search and examination, carry out


the steps set out in Initial Processing of a Request for a Search Report
or Search and Examination Report and Novelty Search Procedure

where the search was conducted by another office or where the request is in
respect of a search and examination, allocate an identification number using
the GCC application number and add the details to the foreign
search/examination report database on the mainframe computer (see Initial
Processing of a Request for a Search Report or Search and Examination
Report)

check that no material is obviously missing

establish an examination request date which will be the date of receipt by this
office of the application documents, including an examination request, a
translation into English of any search report elected by the Patent Office of
the GCC as a result of a bibliographic search which is not in the English,
French or German languages, translations into English of any citations in a
search report elected by the Patent Office of the GCC as a result of a
bibliographic search which is not in the English, French or German
languages, and comments, if any, from the applicant and third parties in
relation to patentability

add the examination request date details to the database on the mainframe
computer

include in the search/examination report file a copy of:

the GCC application documents, including a copy of the request and


any search reports or translations thereof and any citation copies or
translations thereof

any amendments/comments; and

where the application is not one which is undergoing search and examination,
forward the search/examination report file to the examination section having
current responsibility for the first IPC mark as identified in the search report.

No reindexing of the application (that is, of cases not undergoing search and
examination) is to be undertaken and all of the marks should be included, but if an
invalid (that is, non-existent) or incorrect IPC mark has been allocated, then this
could be the subject of a separate item of correspondence forwarded with the
Examination Report. If a search report has an incorrect IPC mark and the section
responsible for that incorrect IPC mark is not the most efficient area in which to have
the application examined, that section should immediately forward the file to the most
efficient section for examination.

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1.7.5.2 Examination Procedure


The examination to be conducted is essentially similar to international preliminary
examination, but should be of a level of a substantive examination rather than a
"preliminary and non-binding opinion". It should be comprehensive so as to lead to a
thorough response and ultimately to the grant of a patent. Thus, for example, "has all
the features" type novelty objections should be avoided. No statement on whether
the application offends against the Islamic Shariah/GCC laws of conduct is
necessary, as that assessment will be made by the Patent Office of the GCC.

The examination will be based on a search report which may have been established
by this office or another. In either case no further search is to be conducted. Where
the search report is in a language other than English, German or French, the Patent
Office of the GCC will provide a translation, as it will also do for documents cited in
search reports established by other offices which are not in English, French or
German.

The examiner will ensure that all appropriate steps to find out whether an Australian
family equivalent of the GCC application under examination exists have been taken.
Thus the examiner should do an Patent Family Members enquiry, including the basic
document number in the enquiry if it is a non-GCC document, to establish if an
Australian equivalent exists. Where an equivalent does exist, the examiner should
endeavour to ensure that there are no inconsistencies in the reporting on the
respective applications. The same examiner, if available, should examine each case,
even if that examiner is no longer in a section that currently holds the IPC class. In
order to ensure this occurs, cross-referencing of an unexamined Australian
equivalent will be necessary and should be done.

Where the search report, whether established by this office or elsewhere, identifies
that unity of invention is lacking, only an invention that was subject to a search can
be examined. Where the search report identifies that unity of invention is lacking but
the search was established for more than one of the inventions, this office will
examine the (nominal) main invention only, except where the search report is by
another organization and the examiner considers that there is no lack of unity of
invention.

An examination report shall be adverse or favourable, as appropriate. The maximum


number of reports that can be issued is three, that is, the applicant has only two
chances after the first examination report in which to have its application in a suitable

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state for a patent to be granted. It is not known at this time whether any time limit
applies to the applicant's response.

Where a third examination report is adverse, this office has agreed to provide upon
request a detailed analysis of the relevant documents and a statement of reasons, in
analogy with a decision by the Commissioner on the written record under the
Australian Patents Act. These detailed analyses would normally only be done by
designated hearing officers.

If the examiner is, or becomes, aware of a fresh citation it may be cited.

Second and third examination reports will be established in the light of proposed
amendments/submissions made with the request or in response to a preceding
examination report.

Completed report form GCC -Exam R.2 is shown at Annex C.

Upon receipt of the search/examination report file the examiner will, (unless also
carrying out a novelty search, in which case some of the following considerations will
be merged into that process)

consider the classification of the invention, whether the search report was
established in this office or elsewhere. It may be that another classification
and/or section is appropriate to establish the examination report. Note,
however, that if the search report was established by this office then in the
interests of efficiency the examiner who carried out the search should, if
available, also perform the examination.

consider unity of invention.

If there is no indication in the search report that the searching authority found
that there was lack of unity, the examination report should indicate lack of unity
if the examiner considers that there is lack of unity, but the examination report
should issue in respect of all claims.

Where the search report, whether established by this office or elsewhere,


identifies that unity of invention is lacking, only an invention that was subjected
to a search can be examined, and the fact that certain claims have been
excluded from consideration for this reason should be clearly stated in the
report. The search report finding of lack of unity must be carried through to the
examination report in order to enable the applicant to file a divisional
application and have the other invention(s) searched.

Where the search report identifies that unity of invention is lacking but the
search was established for more than one of the inventions, this office will
examine the (nominal) main invention only, except where the search report is

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by another organization and the examiner considers that there is not lack of
unity of invention.

Where amendments have been made to claims in an application subsequent to


the issuing of a search report, these will have to be taken account of in
applying the above practice on lack of unity.

No invitation to address unity problems will be issued; if there is lack of unity,


such will be reported at checkbox IV of the first sheet of the report and be
explained in detail at Box IV of the fourth sheet of the report.

See Unity of Invention for general guidance on unity.

consider non-patentable subject matter under the GCC legislation. Article 3


of the GCC specifies the following subject matter as non-patentable:

3/1/1 Discoveries, scientific theories, mathematical methods, and


computer programs.

3/1/2 Schemes, rules, and methods for doing business, performing


purely mental acts, or playing games.

3/1/3 Varieties of plants, species of animals, or biological processes


used to produce plants or animals with the exception of
microbiological processes and the products thereof.

3/1/4 Methods of surgical or therapeutic treatment of the human or


animal body and methods of diagnosis applied to the human or animal
body with the exception of products used in any of these methods.

3/2 This Regulation shall not protect varieties of plants or species of


animals.

Essentially, in AU practice examination will almost always be conducted.

Note: If any claims are considered to be directed towards non-patentable


subject matter, then once this is mentioned in Box III, no further mention
should be made in any other Box, including Box V Novelty, Inventive Step and
Industrial Applicability considerations.

consider the validity of the amendments/submissions, if any, in detail, (see


Response to Opinion, Extensions of Time to Respond to Opinions and IPRPII
and Notification). Any amendments filed are to be acknowledged at Box I of
the second sheet of the report with full explanation given under the relevant
Box and the Supplemental Box sheet of the report as necessary.

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consider the priority documents (see Box I Basis of Opinion/Report and Box
II Priority) except the PCT Unit will not request a certified copy/translation; if
these have not been supplied by the applicant/Patent Office of the GCC then
a report is to be written following the guidance in Introduction.

consider novelty, inventive step and industrial applicability (see Novelty,


Inventive Step and Industrial Applicability). The situation is reported at Boxes
III, V and VI of the report.

Note: In Box VI, "P" & "E" documents relate only to GCC Patents, or
applications, and any WO citations that designate one or more member states
of the GCC (ie AE, BH, KW, OM, QA or SA). Box VI documents should be
referred to in Box V. For non-GCC "P" & "E" documents cited in a search
report, no mention is to be made in Box VI of the examination report as these
do not have any bearing on the novelty of the invention which is the subject of
the GCC application.

consider clarity and descriptive support (see Box VIII Certain


Observations). Report will be made at Box VIII of the report.

consider any formalities deficiencies (see Box VII Certain Defects) and
report defects at Box VII of the report. A "formalities examination" will have
been conducted prior to arrival of the application in this office.

It may happen that an examiner will be aware, or become aware, of a fresh citation
at some stage of examination. It should not happen often and should be rare at the
second or third report stage. However where such a citation will have a significant
effect on the report it is to be recognised, whether the search report was established
by this office or another.

The fresh citation is to be cited in the report and comment made on the supplemental
sheet acknowledging it as not included in the search report. A copy is to be sent with
the report to the Patent Office of the GCC.

1.7.5.3 Examination Report Completion


The examiner will author-key the examination report using the system macros
provided. The completed example of a report at Annex C is to be carefully followed.
International Searching Annexes A and D offer further guidance.

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When filling in the IPC mark on the Examination Report form, if no mark is indicated
on the Search Report or the Request, then this box is to be left blank. If an indicated
mark is considered to be totally inappropriate, then the examiner should draft a
separate letter to this effect and pass this to the PCT Unit to send to the Patent Office
of the GCC. No other action in this area is to be taken (ie all the IPC marks supplied
by the originating search authority are to be placed on the report, even if a letter has
been sent to the Patent Office of the GCC).

The most significant differences from routine PCT opinion/reports to bear in mind are:

the identification of the issuing office and date of the search report used, at
the first sheet.

no invitation to comment on the abstract is given.

no invitation is extended for lack of unity.

no use is made of any PCT form; the only form to be used is the GCC - Exam
R.2, with the supplemental sheets of these being used for any equivalent
action that would use a separate form from the PCT series or for any further
action not normally part of the PCT examination consideration.

in Box VI, "P" & "E" documents relate only to GCC, and WO with designated
GCC member state, Patents, or applications, and shall not include any other
patent documents

that the standard must be above that for "preliminary and non-binding" work

that this office is not acting with the direct role and authority of an IPEA in
examination and reporting.

Upon completion of the report form GCC - Exam.R.2 the examiner will include a copy
of any fresh citation in the search/examination report file.

After all quality checking and assurance processes have been undertaken and,
where required the search report has been completed (see Search Report or Search
and Examination Report Completion), the search/examination report file including:

the original of the examination report

if applicable, the search report

a good quality copy (i.e. the best reproduction that was possible and free of
any highlighting, language or other annotation) of any fresh citation, and

all originally supplied documents

is returned via the internal clearance ("out tray") to the PCT Unit.

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1.7.5.4 Final Processing Examination Report


Upon receipt of the search/examination report file the PCT Unit will:

make one copy of the examination report

despatch the original plus one copy of the report under a covering letter to the
Patent Office of the GCC

send to storage the search/examination report file containing one copy of the
examination report, the search report and one copy of each citation

update the foreign search/examination report database on the mainframe


computer with the date of mailing to the Patent Office of the GCC of the
report.

1.7.6 Methods of Treatment and GCC


Patentability
Methods of surgical or therapeutic treatment of the human or animal body and
methods of diagnosis applied to the human or animal body are not regarded as
inventions. This prohibition however does not extend to products used in any of these
methods. Thus it is necessary to construe the claims to determine whether they are
directed to methods of treatment or diagnosis (inherently unpatentable) or to decide
whether they are directed to products per se (inherently patentable).

As Australia allows the patenting of methods of treatment and diagnosis, we cannot


use our own practice when considering such methods under the GCC. The European
Patent Convention has a similar prohibition and so the EPO practice can be used for
guidance.

1.7.7 Allowable Claim Forms

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EPO practice is to allow claims for the "first medical use" inventions, where the
claims have the following forms:

"A [novel] compound X for use in therapy", and

"A [known] compound X for use in therapy" (but these are only allowed in
circumstances where the compound has never been known for any
therapeutic use).

These forms can be interpreted as being directed to the compound per se.
Where a compound has been previously associated with a therapeutic method
and a new therapeutic use has been found, the so-called "second medical
use", the EPO considered neither of the above forms of claim allowable. The
EPO will however allow claims of the form:

"Use of compound X for the preparation of medicament for treatment of


disease/condition Y"

for second and subsequent medical uses. Claims in this form are known as "Swiss-
style" claims because they were first allowed by the Swiss Patent Office. This form of
claim can be interpreted as being directed to a process for making a medicament and
does not include treatment by medical staff.

1.7.8 Non-Allowable Claim Forms


Claims of the form:

"Use of compound X in the treatment of disease/condition Y"; and

"Compound X when used in the treatment of disease/condition Y"

are construed as method claims because the compound cannot be divorced from the
method in the context of the claim. It is important to notice the difference the words
"when used" have on the meaning of the claim in the second example when
compared with the words "for use" in the claim "A compound X for use in therapy" -
"for use" can be construed as indicating the compound is suitable for that use but
does not limit the compound to that use.

1.7.9 Budapest Treaty

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1.7.9.1 Micro-Organisms and Other Life Forms


Varieties of plants and species of animals, as well as biological processes used for
their generation, are non-patentable subject matter under GCC legislation. However,
microbiological processes and products thereof are considered patentable.

Claims directed to micro-organisms, microbiological processes and the like must be


fully supported by the description. The member states of the GCC are not signatories
to the Budapest Treaty and therefore cannot rely on a micro-organism deposit for the
purposes of fully describing the invention.

See 2.7.1 General Considerations and Definitions and 2.7.2 Full Written Description
of a Life Form for general guidance on micro-organisms.

1.7.10 Common Traps Found in Completed


Search & Examination Reports
The completion Date of the Report is not included. It is found at the top of the
first page of each Report under the heading "Date". This has been addressed
by having the dialogue boxes, that open up when you click on the GCC
macros, specifically request this date to be entered. (Note that this is
requested once on the Search Report but twice on the Examination Report,
and should be filled in the same in the two places on the Examination
Report).

The "date of submission of the request" is incorrect.

For a Search Report, it is "The date of submission of the request to


the Australian Patent Office".

For an Examination Report, it is "The date of submission of the


request to this Examination Patent Office".

In both cases, the date is placed by PCT on the front cover of the case
file and is the date that the GCC request was received in Australia.

Excluded subject matter, once identified in the reports, is not to be further


commented on, particularly with regards Novelty, Inventive Step of Industrial
Applicability.

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P & E documents are not to be cited in the Examination stage, unless they
are either GCC documents, or WO documents with GCC member state
designations.

An indication must be made in Box V as to the Industrial Applicability of the


claims (unless they are directed to excluded subject matter).

WO documents designating member states of the GCC must be included in


an Examination Report at Box VI if they are P or E category documents as
they have the potential to become GCC patents.

A standard comment should be placed in Box VI, along with the cited WO
document along the lines of "Note: This WO document designates one or more
member states of the GCC and is cited due to its potential for an equivalent
GCC patent.

The member states of the GCC are:

AE The United Arab Emirates

BH Bahrain

KW Kuwait

OM Oman

QA Qatar

SA The Kingdom of Saudi Arabia

1.8 Singapore Applications

1.8.1 Introduction
As a result of a bilateral agreement between IP Australia and the Government of the
Republic of Singapore, the Australian Patent Office has undertaken to produce, upon
request, the following types of reports on (as appropriate) applications for patents
filed before, or patents granted by, the Singapore Registry of Patents of the
Intellectual Property Office of Singapore (IPOS):

Search Report

Examination Report

Search and Examination Report

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Revocation/Re-examination Advisory Report, including the allowability and


effect on validity of any amendments

Allowability of Opposed Amendments Advisory Report

Note: For any additional correspondence from the examiner, to go to IPOS, the
substantive text should be forwarded electronically to PCT Unit to be appropriately
formatted before being forwarded to IPOS.

The Australian Patent Office, being considered a qualified ISA and IPEA under the
PCT, was appointed as an Examiner, within the meaning of the Singapore Patents
Act 1994, in order to make these reports on behalf of IPOS. The [Singapore] Patents
Act 1994 came into effect on 23 February 1995, and included provisions giving effect
to certain international patent treaties. The Act is based on the UK Patents Act 1977
with modifications.

The agreement provides for reporting in accordance with certain PCT rules and, in
general, the PCT International Search and Preliminary Examination Guidelines, so
this chapter draws heavily on some other parts of this volume. It also provides for
statements, advice and opinion to be made under the Singapore Patents Act 1994.
Thus examiners should avoid the use in their Singapore opinions and reports of
language such as "fair basis" which is specific to Australian law, even though it is
conceptually indistinguishable from the equivalent PCT and Singapore concept
(which in the case of fair basis is "descriptive support"). Copies of the Singapore
legislation are accessible through the Examiner's Workbench on the intranet. Certain
extracts from the Singapore legislation relevant to search and examination are
included as Annex G.

Our relationship with IPOS makes the quality and completion timing of reports very
important. IPOS does not have staff dedicated to such roles as searching or
examining and is highly reliant on the reports of this Office. Aside from our
contractual obligations to IPOS, IPOS will be in a position to evaluate the reports of
this Office against reports sourced elsewhere. The standard then for examination, for
instance, must exceed that necessary for a "preliminary and non-binding" opinion
which applies, for example, to PCT examination.

Examiners should also note in this regard that

third and subsequent written opinions, and

adverse examination reports issued after a second opinion - but only if the
report is issued following a response to the previous opinion

are, as a matter of practice, to be referred to supervising examiners for approval


before transmission.

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However, supervising examiners need not routinely supervise adverse examination


reports that are issued after a second opinion without a response to the previous
opinion having been received, and merely repeat the substance of that previous
opinion.

All correspondence to/from this Office will be via the PCT Unit and in accordance
with the agreement all correspondence between this Office and IPOS shall use the
English language. The only foreign language requirement of this Office is the
consideration of French and German citations. PCT Unit will despatch all reports and
opinions to IPOS.

If a Singapore attorney or applicant wishes to discuss a written opinion with an


examiner, they will send an e-mail to PCT@ipaustralia.gov.au clearly setting out the
relevant information, i.e. application number, report date, examiner details etc. The
attorney/applicant will indicate that they are requesting an examiner interview and
provide a brief summary of the issue they wish to discuss. The PCT Unit will forward
the e mail to the nominated contact person for the relevant section, who will then
arrange with the examiner/supervisor to send a reply, indicating a person, phone
number and time for the Singapore attorney/applicant to call back. The time set for
the call back should be sufficient to allow for retrieval of the examination file
beforehand. Afterwards the examiner should make a record of any discussion and
attach this to the file.

In carrying out search and examination there is no requirement to assess the validity
of any priority claim made unless a citation exists which was published after the
priority date, and before the filing date, of the case being searched and examined. If
it is necessary to make an assessment of a priority date, a copy of the priority
document will need to be obtained from IPOS or PatentScope in accordance with the
procedure set out in 1.8.7.2 General Examination Procedure .

"Excluded days" under section 111 of the SG Patents Act (that is, official holidays)
may be accessed via this link. These excluded days will only very rarely impact upon
SG national examination.

Where unity of invention is lacking, the search report should only report on the main
invention except if the searching of additional inventions involves practically no extra
effort. The applicant may request that a supplementary search for any invention
excluded from the initial search be carried out.

If a "Supplementary Search" is requested, no "Supplementary Examination" is to be


conducted by the examiner, as this is not provided for in the Singapore legislation.
Any request for supplementary examination is to be regarded as a typographical
error (eg use of a standard Search and Examination request form that is modified
with the word "Supplementary") and should be ignored, with a search only being

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carried out. Any response to the Search Report, from IPOS, that asks why an
examination report did not issue will be dealt with on a case-by-case basis.

Note: A supplementary search report is a separate document. It should only include


search results in respect of the invention for which the supplementary search has
been requested. The examiner should send the completed report to the PCT unit with
a note indicating that the search report is supplementary. The PCT unit will then
stamp the report as a Supplementary Search Report.

Where there is no adverse finding, the first examination response to this Office to a
request for examination (or search and examination) should be a report.

Where there is an adverse finding, the first examination response to this Office to a
request for examination (or search and examination) should always be an opinion.

This practice applies even if the Final Date for Transmittal of the Report has passed
(i.e. 39, 51 or 57 months as the case may be after the priority date, see 1.8.4
Completion Times, Priority and Apologies), and it applies if the time allowed for an
applicant to make a response to an opinion has expired (i.e. the opinion will issue
within the 5 months before the Final Date for the Transmittal of the Report). If the
time is within this last five months or is beyond the Final Date for the Transmittal of
the Report, and an opinion is being issued, then the following should be included in
the "Additional Observations" part of Box I:

"Please note that this will be the final opinion drawn up in respect of this application.
The next examination action will be an examination report."

When the Final Date for the Transmittal of the Report has passed, the examiner may
change the wording of the Opinion macro, on the first page, to read

"The date by which the examination report should have been established was:"

Whenever IPOS forwards work to the Australian Patent Office for action, that action
should be taken, notwithstanding the situation in respect of the applicable time limits.
The underlying assumption is to be that IPOS is prepared to grant any extensions of
time necessary for the action to be taken.

If unity was found lacking at the search but all the inventions were searched and the
lack of unity was not addressed by the amendments/submissions, if any, on file, then
unless the examiner believes unity in fact exists examination will proceed only on the
main invention unless the applicant requests examination of all the inventions to be
carried out and indicates it is prepared to bear the cost of the additional examination.

However, it is unlikely that the applicant will choose to do this, as the lack of unity
circumstance will require the applicant to file a divisional application if the applicant

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wishes to obtain protection for inventions other than the main invention, and then pay
to have the divisional examined.

If an additional invention has not been searched, then obviously no examination can
be carried out in respect of that invention. Where an additional invention has not
been searched, examiners should take the same line on lack of unity as was done in
the search, even if they do not consider that the alleged lack of unity exists.

To do otherwise causes difficulties for the applicant under Singapore law, since the
allegedly different invention cannot be subjected to examination but the applicant is
constrained from filing a further application in respect of the additional invention.

No search is to be conducted at examination. If the examiner nonethess is, or


becomes, aware of a fresh citation by some other means (such as in the course of
examining an Australian equivalent or examining a case with similar subject matter) it
may be cited; two copies of the citation will be despatched with the report or opinion
to IPOS and one copy made for local file purposes.

The examiner (or another person from the section designated for this purpose) must
check to find out whether an Australian family equivalent of the Singapore application
being examined exists. Where an equivalent does exist, the examiner should
endeavour to ensure that there are no inconsistencies in the reporting on the
respective applications. The same examiner should examine each case, even if that
examiner is no longer in a section that currently holds the IPC class.

Written opinions and examination reports will be established in the light of proposed
amendments/submissions made with the request for examination or in response to
the opinion, if any.

Second and subsequent opinions should only be issued if the statutory period (5
months) permitted to the applicant to make the response will not extend beyond the
period of 39, 51 or 57 months after the priority date (see 1.8.4 Completion Times,
Priority and Apologies) in which the report has to be established. Otherwise the
examination report must be established, even if adverse. The only exception to this is
if there is a clear indication from IPOS that they intend us to issue an opinion (if
appropriate), notwithstanding any timing considerations.

Conversely, if sufficient time remains an opinion should always be issued if there are
any adverse findings outstanding in respect of the application.

Requests for Revocation/Re-examination Advisory Reports will only be made where


revocation has actually been sought. Such reports will involve advice on the patent
specification and documents accompanying the request (e.g. exhibits), the
allowability of any proposed amendments and whether they would overcome any
ground of revocation.

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Requests for Allowability of Opposed Amendments Advisory Reports will only be


made where amendments have actually been opposed; a copy of the patent/patent
application with supporting documentation to the opposition will accompany the
request.

The annexes to this chapter show the reporting format to be followed.

The search, written opinion and examination report forms are modelled on the three
corresponding-purpose PCT forms. Supplemental box (or extra) sheets to the reports
or opinion will be used in lieu of other forms in the PCT series. Shrinkage/omission of
sheets will be used wherever appropriate.

The two advisory reports are less proforma in style; the body of these reports is
modelled on Australian decisions.

1.8.2 Requesting Translations of Citations


Where the Search Report to be utilized in the examination was established at an
Office other than this Office a copy of that report and a copy of all citations (whether
patent or non-patent literature) will accompany the Request from IPOS to the
Australian Patent Office for the Preparation of an Examination Report.

Where a cited patent document is not in the English, French or German languages, a
listing of family members will be provided. In the vast majority of cases the examiner
will be able to determine the relevance of the citations from one or more of the
following:

the document itself (such as from drawings, chemical formulae, etc)

the category ("X", "Y", "A", etc) accorded to the citation

English, French and German family members, and

English language abstracts of Japanese or Russian patent documents


(copies of which are, if possible, to be obtained from our own resources as
required).

Where a citation is a Japanese patent document, special considerations apply. In the


event that an English language abstract cannot be obtained from our own resources
and the applicant has not provided one (through the IPOS), or if one is available but it
is inconclusive, the examiner in the first instance should utilize the Japanese Patent
Office website to obtain a machine translation of the Japanese Patent document
(available for documents dating from 1993 onwards). (See Annex F of International
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Searching for advice from the Search Technical Team on utilising this facility.) If a
machine translation is unavailable or proves inconclusive (note that mere failure to
anticipate the claims under consideration is not a factor in this), then the IPOS should
be requested to ask the applicant to provide:

if no abstract is available, an English language abstract; or

where the abstract and/or machine translation is inconclusive, a full English


translation of the Japanese patent document.

The request should be made, through PCT Unit, by email or fax.

Examiners should make every endeavour to reach a view on novelty and inventive
step on the basis of the abstract, whether obtained from our own resources or
through IPOS, and where necessary and available the machine translation. If this is
not possible, and the examiner has some positive basis for believing that there is a
strong likelihood the Japanese document would deprive the invention under
consideration of novelty or an inventive step, then a full verified translation should be
requested. The rationale for this approach derives from the very high costs (~ $6,000
per document) that can accrue to applicants of providing translations, which means
that imposing this requirement on applicants should therefore be avoided if at all
possible.

1.8.3 Applicant/Agent's File Reference


The applicant's or agent's file reference which is to be quoted in reports and opinions
is usually to be found at the top left hand corner of the Singapore 'Request for the
Preparation of a [Search and/or Examination] Report', and is identified as 'Your Ref'.

1.8.4 Completion Times, Priority and Apologies


Search Reports (as distinct from Search and Examination Reports) should, under
normal circumstances, be transmitted to IPOS within 8 weeks of receipt of the
request but in all cases are to be transmitted to IPOS within 3 months of the date of
receipt of the request for a search by this Office (see International Searching Annex
T for apology time limits). It is important that this latter time limit be met, as it is set
down in our Memorandum of Understanding with IPOS. If this time limit is not met,

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the examiner must draft a one sentence apology and attach it to the case file before
forwarding the case file to the PCT Unit with the instruction that it is to be
incorporated into the covering letter which is to accompany the report.

One copy of each citation will accompany the report.

These searches have less priority than Article 15(5) searches and international
searches for PCT applications (ISR's), but greater priority than Fijian, Thai and WIPO
searches.

The first Written Opinion or, if a Written Opinion is not required, the Examination
Report (as distinct from a Search and Examination Report/Written Opinion) should,
under normal circumstances, be completed within 4 weeks of receipt in the Office,
but in all cases must be despatched within two months, with subsequent opinions or
the report being despatched under normal circumstances within 4 weeks of the
receipt of a response from the applicant but in all cases within one month (see
International Searching Annex T for apology time limits). It is important that these
time limits be met, as they are set down in our Memorandum of Understanding with
IPOS. If these time limits are not met, the examiner must draft a one sentence
apology and forward it with the case file to the PCT Unit with the instruction that it is
to be incorporated into the covering letter which is to accompany the report.

The response time by applicants to opinions is to be set at five months from the date
of the Registrar's letter to the applicant enclosing the Written Opinion.

Examination Reports or Search and Examination Reports are to be transmitted to


IPOS within the following timeframes.

Applications filed prior to 1 July 2004 should be transmitted before the


expiration of 51 months from the declared priority date or the date of filing of
the application if no priority date has been declared.

Applications filed on or after 1 July 2004 should be transmitted before the


expiration of either:

39 months from the declared priority date or the date of filing of the
application if no priority date has been declared

where the time to file a request for examination or search and


examination has been extended under S 29(7) - 57 months from the
declared priority date or the date of filing of the application if no priority
date has been declared.

The latter, should be evident from documentation on the correspondence file.


For example, where an extension is given under S.29(7), this will be noted in
their request (RF220) form.

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Note: The exceptional circumstances referred to in 1.8.1 Introduction.

Singapore national examination has equivalent priority to Article 15(5) searches and
any other actions nearing deadline, and a higher priority than all other examination
work. Examiners should endeavour to complete Singapore national examination
actions within 4 weeks of receipt by the Office, but at the very least must complete
them in sufficient time to enable them to be despatched

within 2 months in the case of first actions

within 1 month in the case of further actions.

(see International Searching Annex T for apology time limits.)

It is important that these time limits be met, as they are set down in our Memorandum
of Understanding with IPOS. If these time limits are not met, the examiner must draft
a one sentence apology and forward it with the case file to the PCT Unit with the
instruction that it is to be incorporated into the covering letter which is to accompany
the report.

Search and Examination Reports should, under normal circumstances, be completed


within 12 weeks from the date of receipt, but in all cases are to be despatched within
4 months from the date of receipt by this Office of the search request (see
International Searching Annex T for apology time limits). It is important that this latter
time limit be met, as it is set down in our Memorandum of Understanding with IPOS.
If this time limit is not met, the examiner must draft a one sentence apology and
forward it with the case file to the PCT Unit with the instruction that it is to be
incorporated into the covering letter which is to accompany the report.

If the Search and Examination report has a first Written Opinion, response time to the
first opinion is to be set at five months as is the case for subsequent opinions.

Examination Reports of Search and Examination Reports are to be transmitted to


IPOS within the following timeframes.

Applications filed prior to 1 July 2004 should be transmitted before the


expiration of 51 months from the declared priority date or the date of filing of
the application if no priority date has been declared.

Applications filed on or after 1 July 2004 should be transmitted before the


expiration of either:

39 months from the declared priority date or the date of filing of the
application if no priority date has been declared

where the time to file a request for examination or search and


examination has been extended under S 29(7) - 57 months from the
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declared priority date or the date of filing of the application if no priority


date has been declared.

(The latter, should be evident from documentation on the


correspondence file. For example, where an extension is given under
S.29(7), this will be noted in their request (RF220) form.

Note: However, the exceptional circumstances referred to in 1.8.2 Requesting


Translations of Citations.

In respect to 26(11) applications (equivalent to our divisional applications), the date


for calculation of the relevant time provisions (39, 51 or 57 months as the case may
be) is the actual application filing date, not the filing date of the parent application.

Search and Examination Reports are no more than the attachment together of a
Search Report and Examination Report or Written Opinion. They would normally be
completed at the same time (in the manner of an ISR and ISO).

The priority for Search and Examination Reports is the same as for international
searches (ISRs).

Revocation/Re-examination Advisory Reports are to be transmitted to IPOS within 3


months from the date of receipt of the request by this Office.

The priority for these reports is equal to that for international search reports (ISRs).

Allowability of Opposed Amendments Advisory Reports are to be transmitted to IPOS


within 3 months from the date of receipt of the request by this Office.

The priority for these reports is equal to that for international searches (ISRs).

1.8.5 Special Issues Relating to Medical and


Biotechnology Cases
A method of treatment by surgery or therapy or methods of diagnosis performed
directly on the human or animal body are not industrially applicable under Section
16(2) of the Singapore Act.

Section 16(2) states:

16 (2) An invention of a method of treatment of the human or animal body by


surgery or therapy or of diagnosis practised on the human or animal body shall
not be taken to be capable of industrial application.
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However, such methods would not generally offend under section 13(2).

Cosmetic treatments and in-vitro diagnostic methods are industrially applicable.

There are various forms of "method" claims:

A method of treating ..........

A compound X when used ..........

Use of compound X to treat/for treating .......... This type of "use of" claim is
construed as a method of treatment and therefore is not patentable under
Section 16(2). (See 2.11.2.3.3 "For Use", "When Used", etc )

However claims drafted in the first or second medical use forms (see below) are not
considered to be methods of treatment or diagnosis and are therefore industrially
applicable.

Search and examination is still required to be carried out, to the extent practicable, in
relation to an invention which is a method of treatment or diagnosis, even though
such an invention is not patentable through lack of industrial applicability

When a Singapore examination opinion is required on a method of treatment or


diagnosis:

Box V must indicate that the relevant claims lack industrial applicability under Section
16(2).

Where appropriate a note should be included that claims of the following forms may
be allowable:

"substance or composition X" followed by the indication of the use, for


instance"... for use as a medicament", "... as an antibacterial agent " or "... for
curing disease Y" where the invention is a "first medical use" of a known
substance

"Use of a substance or composition X for the manufacture of a medicament


for therapeutic application Z" (Swiss-type claim) where the invention is a
"second or further medical use" of a known substance

When a Singapore examination report is established, the same procedure (as for
opinions) is followed.

First medical use

First medical use claims are industrially applicable. These claims are typically in the
form:

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"Substance or composition X for use as a medicament",

"Substance or composition X for use as an antibiotic", or

"Substance X for use in treating disease Y"

Substance or composition X for use in therapy

First medical use claims are construed differently under Singapore law to
corresponding claims under Australian law or the PCT. Section 14(7) of the
Singapore Act states:

14 (7) In the case of an invention consisting of a substance or composition for use in


a method of treatment of the human or animal body by surgery or therapy or of
diagnosis practised on the human or animal body, the fact that the substance or
composition forms part of the state of the art shall not prevent the invention from
being taken to be new if the use of the substance or composition in any such method
does not form part of the state of the art.

Section 14(7) has the effect that a known substance or composition may be patented
"for use in" a method of treatment by surgery or therapy or of diagnosis provided that
the substance or composition has not been known to be used in any such method
before ("first medical use"). Section 14(7) is an exception to the general rule that a
claim to a substance for a particular purpose is construed as a claim to the substance
per se. Under Singapore law first medical use claims are not construed as claims to
the substance per se. Therefore the claims are not anticipated by an earlier non-
medical disclosure to the substance.

A known substance can only be claimed for use in a method of medical treatment the
first time such a use is disclosed. Once the use of the substance in any method of
medical treatment or diagnosis has been disclosed, it destroys the novelty of a
subsequent claim to the substance for use in a second or further medical use, i.e. the
same substance or composition cannot subsequently be patented for use in treating
a different disease, whether human or animal, or in obtaining another effect, or in
surgery or diagnosis. However in this case a Swiss-type claim may be allowable.

Note: Under Australian law or the PCT claims to a substance for a particular
purpose are construed as claims to the substance per se.

Second medical use

True Swiss type claims are industrially applicable and this is consistent with our
current practice (See 2.11.2.3.3 "For Use", "When Used", etc.). These claims are
typically in the form:

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"Use of compound X for the manufacture/preparation of a composition/medicament


for the treatment of a specific disease."

Cloning

An objection under section 13(2) is applicable where a claim would include within its
scope a method of producing an animal, a chimeric animal or a clone. Said claim
would also be subject to an objection under section 16 (2) as being not industrially
applicable as an invention capable of producing an animal, a chimeric animal or a
clone would necessarily include a manipulation of the human or animal body.

Section 13 (2)

Forms of treatment which could be considered immoral (e.g. abortion) are not to be
regarded as offending section 13(2).

Micro-Organisms

Micro-organisms and microbiological processes are considered patentable subject


matter under Singapore legislation. Claims directed to micro-organisms and
microbiological processes must be fully supported by the description. Singapore is a
signatory to the Budapest Treaty and therefore applicants may rely on a micro
organism deposit for the purposes of fully describing the invention.

Where the applicant chooses to rely on a micro-organism deposit, the following


information must be included in the specification:

the name of the prescribed depositary institution from which a sample of the
deposited micro-organism is available;

the accession number given to the deposit by the institution; and

the date on which the relevant deposit was made.

If any of these details are missing from the specification, examiners should take the
objection that the invention is not fully described.

Examiners are not required to check whether a receipt for the deposit of the micro
organism has been filed (these formalities are handled by IPOS).

See also 2.7 Micro-Organisms and Other Life Forms for general guidance on micro-
organisms.

Further guidance

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As the Singapore Patent Act is based on the UK Patent Act, the UK publication
Examining patent applications for medical inventions (pdf - 919Kb) may provide
some further guidance.

1.8.6 Search Report

1.8.6.1 Initial Processing Search Report


Requests for a search report are made to IPOS under Singapore sec 29(1)(a), rule
36 on Patents Form 10.

Upon receipt in this Office such requests are forwarded to PCT Unit who will:

acknowledge receipt to IPOS

create a PCT unit SG search folder and a search file

allocate an identification number using the Singapore application number and


add the details to the foreign search/examination report mainframe database

check that no material is obviously missing

establish a search request date which will be the date of receipt by this Office
of the application documents, including a search request

establish the search report completion date as 3 months from the search
request date

include in the search file a copy of the Singapore application documents,


including a copy of the request

forward the search file to the on-line specialists for the start of tracking under
an AU Job No and allocation to a section.

1.8.6.2 Search Procedure

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The search to be conducted is an international-type search, following most of the


steps of the 1.2.1 Procedural Outline - International Type Search with elements
which usually feature only in the full international search (in particular, remarking on
unity of invention and the establishing of a title and abstract).

The agreement between the Australian Patent Office and the Government of
Singapore stipulates that the Office "will discover as much of the relevant prior art as
our resources permit and will, in any case, consult the documents specified in rule
40", so for all intents and purposes the database we search will be the same as that
for a normal international search, since this is prior art which "our resources permit"
us to search.

(The minimum documentation for the purposes of the search is set down in
Singapore rule 40. It differs from the PCT minimum documentation mainly insofar as
it omits SU patent documents, non patent literature, and documents more than 50
years old. It includes the patent documents of Singapore and Australia. As above, for
our purposes, the examiner is to follow the Singapore agreement rather than
Singapore rule 40.)

All "E" & "P" documents are to be included in the search report, in line with a PCT
ISR, irrespective of the country of origin. Although non-Singapore documents per se
have no bearing on the validity of the Singapore application (reference), their
presence in a search report is necessary in case the existence of a Singapore family
member comes to light later.

When carrying out searching of Singapore applications examiners will have to keep
in mind the possibility that the application is a 26(11) divisional application and the
implications for the execution of the search of the resulting priority date. The fact that
an application is a 26(11) divisional will be apparent from the Singapore request at
Box VIII.

Not infrequently, it will be the case that a search will have already been carried out by
another examining authority in respect of a family equivalent. The search examiner
should investigate via the normal avenues whether such a search exists, and use
that search to abbreviate their search as far as practicable.

A completed search report form APO/210 is shown at 1.8.12 Annex B.

Upon receipt of the search file the search examiner will:

determine the validity of any amendments/submissions filed prior to the


search being conducted, should be considered, using the general guidance of
1.3.9.1 Article 19 or Article 34(2)(b) Amendments. Provided the amendments
are valid they should be taken into account for the purposes of the steps
below. For PCT national phase cases, any Article 19 or Article 34

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amendments which are in accordance with the PCT shall also be taken into
account. Conversely, any Article 19 or 34 amendments which have been
determined under international preliminary examination to be invalid shall not
be taken into account.

classify the invention, according to the current IPC edition, on the inside of
the search file jacket.

prepare a written search statement defining the scope of the invention to be


searched. An existing abstract or claim may be suitable.

consider unity of invention. If there is a lack of unity then the main invention
will be searched and reported on (give an indication at checkbox 2 of the first
sheet and full explanation in Box II continued on the extra sheet if necessary,
modelled on 1.1.19 International Searching Annex E.2). There is no
requirement that either the Registrar or the applicant be advised of lack of
unity other than in the search report, and in particular no invitation to pay
additional fees will be issued.

Only if there is absolutely minimal effort involved (e.g. where high grade
citations comprehensively relevant to a second invention are encountered
during the main invention search) should the report be extended as indicated
at checkbox 2 of Box II of the report form. See the general guidance of 1.1.4.1
Unity of Invention.

(Singapore sec 25(5)(d), 25(6); rule 25, 45).

consider whether any claims are unsearchable due to non-compliance with


the prescribed requirements (specifically, secs 25(4) and 25(5) of the
Singapore Act) to such an extent that no meaningful search can be carried
out. In general, search and examination should be carried out to the extent
practicable, regardless of the subject matter of the invention. Where any
claims are not searchable, the first sheet of the search report at checkbox 1
and in more detail in Box I will indicate and explain any unsearchable claims
(form PCT/ISA/203 is not to be used). The Deputy Commissioner of the
Section is to be made aware of any instance of an indication in checkbox 1 of
the first sheet and Box I prior to despatch of the report.

consider obscurities, inconsistencies or contradictions (see 1.2.6


Obscurities, Inconsistencies or Contradictions i.e. a search is to be
conducted if at all practicable. If not, which should be extremely rare, this is
indicated at checkbox 1 of the first sheet and explained in Box I of the report
and the procedure thereafter as per the point above.

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consider the title, which is either approved as submitted by the applicant or


established by this Office as indicated by checkbox 4 on the first page of the
report. See 1.1.5.2 Title.

(Singapore rule 19(4)).

consider the abstract, which is either approved as submitted by the applicant


or established by this Office as indicated at checkbox 5 of the first sheet and
Box III of the third sheet. In neither case is comment invited from the applicant
and it may be preferable to finalise this text after completion of the search.
See 1.1.5.1 Abstract.

(Singapore sec 25(7); rule 22).

consider the figure of the drawings to be published with the abstract; again
no comment is invited of the applicant - checkbox 6 of the first sheet is
completed. The applicant's figure choice is usually found at the bottom of the
abstract sheet that accompanies the specification.

indicate a proposed search and conduct the search, following the general
guidance of the outline of 1.2.1 Procedural Outline - International Type
Search steps 7 to 24 which are repeated here (with appropriate
modifications):

Prepare search statement and determine search strategy

Order foreign patent abstracts through international on-line specialist


and perform PAIS search if screen based (this should be no later than
a few days from the receipt of the search copy by the ISA)

Search non-patent literature as required

Engineering Index (for electrical, mechanical)

Chemical Abstracts (for chemical) - on-line and printed

Search AU documents as required

Order relevant non patent literature from library. In your request,


include case file number of Australian equivalent, if any. This will
enable the library to place the documents on v-drive for later use with
the Australian equivalent.

Receive & search foreign patent abstracts

Peruse related art (piggy-back/forward or thread or stream)

List foreign documents requiring full copy

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Consult concordance for preferred equivalents of XRPX or PQR type


abstracts

Consult Patent Family Member Queries page for family equivalents of


SU or JP abstracts

Order full documents from Exam Support & Sales

Assess which documents (incl AU) are to be cited

sort documents into some ranking of perceived relevance

cull least relevant documents and equivalent disclosures

retain foreign citations in file

obtain copy AU citations for file

Prepare search report

assign citation relevance category marks using a


"broad"approach to categorise citations against groups of
claims

no further analysis be pursued on documents identified as


solely A category

initiate family members annex

Receive & assess non patent literature full copies (use culling/sorting
steps and "broad" approach as appropriate)

Include non patent literature citations in search report

Attach search history details and names of three person team to


correspondence file

Final examination actions on report, notification and file (this should be


accomplished in normal circumstances within 8 weeks of receipt of the
request from IPOS).

On completing the search the examiner will word-process the search report
APO/SG/210 and attach a copy of the family listing to the search report. The
completed example of 1.8.12 Annex B is to be carefully followed. Likely content
variations are illustrated by 1.1.19 International Searching Annexes B and C. The
person indicated as the authorised person must be properly authorised - see 1.10.3
Authorised Officer. There is no requirement for reports to be signed, and to avoid any
confusion in the mind of the applicant resulting from differing practices, reports
should not be signed.
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After all quality and checking and assurance processes have been undertaken, the
search file including:

the original of the search report, which has been closely checked for any
errors (note that examination sections have prime responsibility for
eliminating the errors occurring in reports - they must aim to eliminate errors
in reports with effective quality assurance procedures), and

a good quality copy (i.e. the best reproduction that was possible and free of
any highlighting, language or other annotation and sketching) of each cited
document, which will usually be a full text copy but could be an abstract e.g.
JP or SU

all details of the search history, including both patent and non patent literature
searches as well as searches conducted on the internet, along with the
names of the members of the three person team, should be retained on the
correspondence file.

is returned via the internal clearance (the "out tray") to the PCT Unit.

1.8.6.3 Fees
IP Australia bills IPOS for work done in accordance with a schedule of charges to the
Memorandum of Understanding. PCT unit has a copy of the current schedule. There
are no [upfront] fees as such.

1.8.6.4 Final Processing Search Report


Upon receipt of the search file the PCT Unit will:

make one copy of each citation and four copies of the search report

despatch the original plus two copies of the report and one copy of each
citation under a covering letter (an example is shown at Annex A) to IPOS

send to storage the search file containing one copy of the report and one
copy of each citation

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place a copy of the report and the request in the foreign search folder held in
the PCT Unit

update the foreign search register with the date of mailing to IPOS.

1.8.7 Examination Opinion/Report

1.8.7.1 Initial Processing Examination


Opinion/Report
Requests for an examination report are made to IPOS under Singapore sec 29(3),
29(5)(a) or 29(8), rule 42 on Patents Form 12.

Upon receipt in this Office such requests are forwarded to PCT Unit who will:

acknowledge receipt to IPOS

create a PCT unit foreign search/report folder and a search/report file where
the search was conducted by another Office, or retrieve the existing folder
and file where this Office conducted the search

allocate an identification number using the Singapore application number in


the former case and add the details to the foreign search/examination report
mainframe database, in both cases

check that no material is obviously missing

establish an examination request date which will be the date of receipt by this
Office of the application documents, including an examination request and a
search report with citations where the search was conducted elsewhere

establish the examination report completion date as 39 or 57 months from the


filing date of the application or the priority date of the application if this is
earlier than the filing date, depending on whether an extension of time
request has been received. This applies to applications filed after 1 July
2004. Applications filed before 1 July 2004 still have an examination report
completion date of 51 months. For more details see 1.8.4 Completion Times,
Priority and Apologies.

add the examination request date and the examination report completion date
details to the mainframe database

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include in the search/report file:

a copy of the Singapore application documents, including a copy of


the request and search report with citation copies; whether the search
was conducted in this Office, or another, and

a copy of any amendments/submissions

forward the search/report file to the examination sub-section having current


responsibility for the first IPC mark as identified in the search report. If a
search report has an incorrect IPC mark and the section responsible for that
incorrect IPC mark is not the most efficient area in which to have the
application examined, that section should immediately forward the file to the
most efficient section for examination. If there is no mark indicated on the
search report, the International Sort Examiner will decide to which section the
case will go to in the first instance.

1.8.7.2 General Examination Procedure


The examination to be conducted is essentially similar to international preliminary
examination. In addition it requires a statement relating to the Singapore Patents Act
1994, on the question of whether the claimed invention is, or seems to be,
unpatentable according to section 13(2) and, for divisional applications filed under
sec 26(11) of the Singapore Patents Act, whether the application discloses any
additional matter referred to in sec 84(1).

However, our MOU with Singapore provides for any statements, advice and opinion
to be made under the Singapore Patents Act 1994. Thus examiners should avoid the
use in their Singapore opinions and reports of language such as "fair basis" which is
specific to Australian law.

The examination will be based on a search report which may have been established
by this Office or another. In either case a copy of the search report and all citations
(whether patent or non-patent literature) will be available and no further search is to
be conducted (this also applies to top-up searches). If a cited document is not
provided (including where a document provided is only an abstract of the document
actually cited), IPOS should be advised accordingly.

Search reports provided by the applicant will be normally assumed to meet the
requirements of the Singapore Patents Act, unless there is reason to conclude
otherwise. A particular example is the "information disclosure statement" form

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supplied by the applicant to the USPTO to fulfil the applicant's obligation to disclose
related art. As supplied by the applicant the completed form is not a search report
issued by a Patent Office for the purpose of the Singapore Act. Sometimes, however,
the information disclosure statement subsequently becomes the USPTO 'search
report' if the US patent examiner has found no art of significance other than the art
identified by the applicant on that form. In such cases the form will bear the signature
or initials of the US examiner adjacent to, or under the listed documents (although
this is not conclusive that it is the US search report). When the applicant explicitly
supplies such an information disclosure statement form as the search report it should
be considered to be a bona fide search report. If an information disclosure statement
is provided by the applicant which has not been signed or initialled by a US
examiner, then a letter should be sent to IPOS requesting advice on whether the
document was issued as a search report by the USPTO.

An example of a search report that may not meet the requirements of the Singapore
Patents Act is the supplementary search report issued by the European Patent
Office. As it is a "supplementary" search it will not normally be a complete search.

Note: The date of completion of many US Search reports may not be shown, if this
is the case, then when the date dialogue box comes up on the Singapore macro, the
examiner should merely type in "Date unavailable".

The examiner must check to find out whether an Australian family equivalent of the
Singapore application under examination exists. Where an equivalent does exist, the
examiner should endeavour to ensure that there are no inconsistencies in the
reporting on the respective applications. The same examiner, if available, should
examine each case, even if that examiner is no longer in a section that currently
holds the IPC class. In order to ensure this occurs, cross-referencing of an
unexamined Australian equivalent will be necessary. This should be done by adding
a file note to the corresponding AU equivalent in PAMS, detailing the name of the
person who examined the Singapore application and the SG case number.

If there is no priority claim, a search for the inventors' name on ESPACE etc should
be considered.

Where the search report, whether established by this Office or elsewhere, identified
that unity of invention is lacking, obviously only an invention that was the subject of
the search can be examined.

Where the search report identifies that unity of invention was lacking but the search
was established for all or more than one of these inventions, this Office will examine
the first invention only (provided the examiner concurs on lack of unity), unless the
applicant, through IPOS, indicates their wish to have the other inventions examined
(and pays additional examination fees).

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Where the first examination response of this Office to a request for examination or for
search and examination is to be adverse, it must be in the form of a written opinion
rather than the direct establishment of a report. For subsequent adverse examination
responses, these should be in the form of an opinion unless the statutory period (5
months) permitted to the applicant to make the response will extend beyond the
period of 39, 51 or 57 months, as the case may be, after the priority date in which the
report has to be established. Otherwise the examination report must be established,
even if adverse. The only exception to this is if there is a clear indication from IPOS
that they intend us to issue an opinion (if appropriate), notwithstanding any timing
considerations.

Conversely, if the first or any subsequent examination response is favourable, it must


be in the form of an established report.

Completed opinion and report forms APO/408 and APO/409 (see 1.8.12 Annex C
and D).

In considering the priority claim examiners should refer to the procedures set down in
1.3.8.3 Box II Priority. However where a copy of the priority document is required in
order to assess the validity of any priority claim, examiners should first check whether
the document is available from PatentScope. If the document is present, a copy
should be downloaded and placed in the case file. Where the priority document is
not available, examiners should request a copy of the document from the PCT Unit
(through Lotus Notes email to PCT). Searching and examination stops until a copy of
the priority document is available or the time limit expires. A time limit of 2 months
should be used on the request sent to IPOS from the PCT unit, regardless of the date
for establishing the examination report. The PCT unit will return the casefile to the
examiners section once the priority document is at hand or after the time limit has
elapsed. If the time limit has expired examination is performed as if no priority had
been claimed. Indication of this must be made in Box II item 1. If the priority claim is
found to be valid a positive comment is required in Box II Item 3 Additional
Observations. An example can be seen in 1.8.12 Annex C or D.

All opinions have the reply period set at five months (as already typed on form
APO/SG/408) but, where a response has been filed with IPOS outside the five
months and forwarded to us, for our purposes, we should disregard the lateness of
the response and issue a further opinion/report fully taking into account the response.
Our MOA requires us to consider any response forwarded to us by Singapore.

Written opinions and examination reports will be established in the light of any valid
Article 19 and 34 amendments and any proposed amendments/submissions made
with the request or in response to the opinion.

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Note: The received on date used in Box I of the written opinion and the examination
report is the "lodgement date" stated in the PF 13 printout attached to the amended
pages. This date does not appear on the amended pages themselves.

FERs may only be consulted to facilitate or expedite the consideration of citations


mentioned in any FERs/search reports supplied by the applicant. Examiners should
not consult FERs to discover prior art. The only exceptions to this are any search or
examination reports on equivalent applications produced by the Australian Patent
Office (in order to maintain consistency of examination approach). Any prior art
document that an examiner is aware of as part of his or her pre-existing knowledge
may be cited at any report stage.

It should be noted in this context that Singapore national examination is not the same
as Australian national examination. Australian examination requires the examiner to
report to the best of his or her knowledge whether the invention is novel and involves
an inventive step, with the understanding that the examiner will take whatever steps
are necessary to acquire that knowledge. Under the Singapore patent legislation,
however, an applicant requesting examination (as distinct from search and
examination) is required to file a copy of a search report (which may come in the form
of an examination report which incorporates a search report) issued in respect of a
corresponding application by a prescribed* patent office. Then Singapore
examination only requires that the examiner consider the results of the search report
so provided in order for an examination meeting the full requirements of the
Singapore patents legislation (and our MOU with IPOS) to have been carried out.
That is, Singapore examination conceptually does not include any component of
searching, including consultation with FER's in an endeavour to find further prior art.

*those of Australia, Canada (in respect of applications for a Canadian patent filed in
the English language), Japan, New Zealand, the United Kingdom, the United States
of America and the European Patent Office (in respect of applications for a European
patent filed in the English language)

Upon receipt of the search/report file the examiner will:

consider the classification of the invention, whether the search report was
established in this Office or elsewhere. It may be that another classification
and/or section is appropriate to establish the examination report. If the search
report was established by this Office then some efficiency via continuity of
examiner could be achieved.

Validation of IPC symbols should be done in accordance with the procedures


given in 1.1.12.3 Reporting and 1.3.8.1 Front Page and Notification Application
Details.

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consider unity of invention. If there is no indication in the search report that


the searching authority found that there was lack of unity, the examiner
carrying out examination should not find there is lack of unity, unless it is clear
beyond a shadow of doubt that this is the case. Where this occurs, an opinion
should be issued in respect of all the claims, but also containing an indication
regarding lack of unity.

If the search report does indicate that there is lack of unity and a search has
not been carried out in respect of one or more of the inventions, the examiner
carrying out examination must carry that indication through to the examination.
To not do so apparently causes difficulty under Singapore law because the
inventions which have not been searched cannot be examined, yet an effective
finding in the parent (to be) application that there is unity of invention would
appear to render it unlikely that a divisional application could obtain a
favourable report.

Whatever the situation, where certain claims have not been searched, for
whatever reason, it will not be possible to draw up an opinion/report in respect
of those claims, and the fact that certain claims have been excluded from
consideration for this reason should be clearly stated in the report.

If, on the other hand, the search report indicates there is lack of unity but all or
more than one of the inventions have been searched, the examiner carrying
out examination should formulate a view independently on whether there is
lack of unity. If the examiner concurs, then an opinion in respect of the first of
the searched inventions should be issued. No work should be done at all on
any second, or further, inventions, unless the applicant, through IPOS,
indicates their wish to have the other inventions examined (and pays additional
examination fees).

If amendments have been made to claims in an application subsequent to the


issuing of a search report, the implications of these amendments will need to
be taken into account when applying the foregoing practice.

No invitation to address unity problems will be issued; if there is lack of unity,


such will be reported at checkbox IV of the first sheet of the opinion/report and
be explained in detail at Box IV of the fourth sheet of the opinion/report.

See 1.1.4.1 Unity of Invention for general guidance on unity. (Singapore sec
25(5)(d), 25(6); rule 25, 45).

consider the validity of any amendments/submissions, including any Article


19 and 34 amendments (which are not considered to be made under the
Singapore Act unless they are valid under the PCT). Ordinarily, any Article
19 and 34 amendments will be provided by IPOS.. However, if the examiner

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is aware of any Article 19 or 34 amendments which have not been provided


by IPOS, these should be taken into account if they are valid. Ergo, any
Article 19 or 34 amendments which have been determined under international
preliminary examination to be invalid should not be taken into account. If an
examiner considers there is a possibility that Article 19 and 34 amendments
exist which have not been provided by IPOS, they should endeavour to
ascertain whether this is the case, such as by looking in Patentscope. The
validity of amendments/submissions is to be considered using the general
guidance on validity of amendments of 1.3.9.1 Article 19 or Article 34(2)(b)
Amendments and 1.3.9.2 Formalities. Any amendments filed under national
processing are to be acknowledged at Box I of the second sheet of the
opinion/report with full explanation given under the relevant Box and the
Supplemental Box sheet of the opinion/report as necessary. (Singapore sec
31, 84(3), rule 46).

Substitute sheets filed in response to a formalities objection raised by IPOS in


its initial formalities examination report are not considered to be amendments
for the purposes of the foregoing, analogous to the PCT approach.

The Singapore Patent Rules permit the applicant to just supply marked-up
copies of amended pages at the examination stage. These amendments
should be examined with no objections taken to their markings (red or
otherwise). Where amendments are supplied as the actual substitute sheets to
be inserted in the specification as replacement sheets, the examiner should
consider whether the specification will still meet basic formality requirements
(contained in Singapore Rules 19-24). If not, a negative comment should be
made in Box VII (Certain defects in the application) of an opinion. Lack of
page numbering should not in this context be considered to be a basic
formality requirement (and should not be objected to), since the lack of
numbering in the version provided by IPOS to IPAustralia is not indicative
necessarily that the official version held by IPOS lacks numbering.

Note: When filling out Box I "Basis of the opinion" (and report), item 4 will only
be completed in relation to observations relating to pages being examined.
This item does not relate to problems relating to clarity, descriptive support and
other matters that are covered in Box VIII.

consider novelty, inventive step and industrial applicability using the


guidance of 1.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive
Step & Industrial Applicability. The situation is reported at Boxes III, V and VI
of the opinion/report.

Singapore Act section 14 relates to certain published documents and is


analogous to our Whole of Contents. In Box VI, P and E documents relate

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only to Singapore patents or applications and do not include patent documents


from other countries. Consequently non Singapore P and E documents
should not be mentioned in Box VI of the examination report, as they do not
have any bearing on the novelty of the invention. In order to locate Singapore
family equivalents, examiners should use the Patent Family Member Queries
page (on the examiners workbench) and also check the IPOS website
(accessed via the Patent Offices link on the workbench).

Singapore Act section 30(3)(e) does not allow more than one application or
patent for the same invention having the same priority date filed by the same
applicant (or his successor in title), analogous to our sec 64(2). Documents of
this type are L category and are mentioned in Box VI of the
opinion/examination report. Only Singapore applications, including international
applications that have entered the national phase in Singapore, can be
considered under sec 30(3)(e).

An international application that designates Singapore, but has not entered the
national phase in Singapore, is not available for whole of contents purposes or
for an objection under sec 30(3)(e) of the Singapore Act [section 86(1) of the
Singapore Act]. Although such documents should be included in Box VI of the
opinion/report, it should be stated that the documents are not citable since they
have not entered the national phase. The national phase status of any
document referred to in this manner should be checked at each opinion/report
stage, in case national phase entry has occurred since the previous opinion
was issued. This should be done using the Patent Family Member Queries
page/IPOS website as indicated above.

Note: Whenever documents are mentioned in Box VI, a cross-reference to Box


VI must be made in Box V (even if there is no other document cited in Box V).

Note: Where a Singapore patent or application is mentioned in Box VI and is


therefore citable on a whole of contents basis, this should be reflected in the
Statement at item 1 of Box V. (This is contrary to the procedure under the
PCT where only a cross-reference to Box VI must be made in Box V).(see
1.8.11 Annex C and Annex D for examples)

On the rare occasion where novelty and/or inventive step cannot properly be
determined without the need for a translation, this should be obtained using the
procedure set out in 1.8.2 Requesting Translations of Citations. (Singapore
sec 2, 14, 15, 16).

consider clarity and descriptive support using the guidance of 1.3.8.9 Box
VIII Certain Observations. The reporting will be in Box VIII of the

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opinion/report. Jargon specific to Australian law, such as "fair basis" should


not be employed. (Singapore sec 25(4), 25(5); rule 19(5)-19(9)).

consider any formalities deficiencies using the general guidance of 1.3.9.2


Formalities and report defects at Box VII of the opinion/report. A formalities
examination will have been conducted prior to arrival of the application in this
Office. (Singapore sec 28(1), rule 33(1)).

Lack of page numbering should not in this context be considered to be a basic


formality requirement (and should not be objected to), since the lack of
numbering in the version provided by IPOS to IPAustralia is not indicative
necessarily that the official version held by IPOS lacks numbering.

The Singapore specification to be examined will usually have amendments


marked in red (such as underlining, crossing out or additional text). These
alterations are to be treated as incorporated amendments to the text and do
not attract any formalities objection.

Any omnibus-type claim should be objected to in Box VII as being contrary to


Rule 19(9) of the Singapore Patent Rules.

The agreement calls for a further statement concerning Section 13(2) of the
Singapore Patents Act 1994 which has similarities to PCT considerations. Section
13(1) establishes that a patentable invention is one that satisfies that the invention is
new, it involves an inventive step, and it is capable of industrial application - subject
to section (2).

Section 13(2) relates to immoral/offensive/anti-social conduct. Australian experience


in observations/considerations under PCT article 21(6) or PCT rule 9 suggests that
this will not commonly be met in patent applications. If the examiner has any doubts
on this aspect in an application under examination it must be referred to the
supervising examiner.

Section 13(2) establishes that an invention, the publication or exploitation of which


would be generally expected to encourage offensive, immoral or anti-social
behaviour is not a patentable invention. Section (3) adds that for the purposes of
section (2), behaviour shall not be regarded as offensive, immoral or anti-social only
because it is prohibited by any law in force in Singapore. Section 13(2) is not to be
interpreted as extending the requirements of article 21(6) and rule 9 of the PCT.

When reporting on whether the claimed invention is, or seems to be, unpatentable
according to Section 13(2), for the "not applicable" case it will suffice merely to
mark the appropriate checkbox on the supplemental sheet. In the alternative case a
mark plus full explanation is to be made, using extra supplemental sheets as
required.

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The MOU also requires that in the case of a divisional application made under Sec
26(11) with a parent application/patent filed after 1 July 2004, the written opinion or
examination report must indicate whether the application discloses any additional
matter referred to in sec 84(1) of the Singapore Patents Act that is, matter
extending beyond that disclosed in the parent specification.

Note: This is contrary to the approach under the Australian Patents Act where it is
permissible to add new matter to a divisional application.

A divisional application made under sec 26(11) is identifiable from Item 6 of the
Singapore Request for the Grant of a Patent.

For all Singapore divisional applications which are required to be assessed under
sec.84(1) (that is, those having a parent application/patent filed after 1 July 2004),
IPOS will forward a copy of the parent with the divisional application when requesting
examination on the latter.

Examiners must indicate for all Singapore divisional cases having a parent
application/patent filed after 1 July 2004 that the divisional or child application does
or does not disclose additional matter. For no additional matter the checkbox at the
end of Box VIII must be marked. For cases that do disclose additional matter this
checkbox must be marked and the word no deleted from the adjacent statement.
Additional explanation will normally be required and this should be included in a
Supplemental Box with the necessary reference under the observation in Box VIII
that additional matter is disclosed.

If additional matter is found a search and examination is performed on the new


material as well as the existing material with the priority date of the new material
being the date of filing of the new material.

It may happen that an examiner will be aware, or become aware, of a fresh citation at
some stage of examination (noting that no searching should be done in any form to
find further citations). It should not happen often and should be rare at the report after
opinion stage.

However where such a citation will have a significant effect on the opinion/report that
would otherwise be made it is to be recognised, whether the search report was
established by this Office or another.

The fresh citation is to be cited in the opinion/report and comment made on the
supplemental sheet acknowledging it as not included in the search report. A copy is
to be sent with the opinion/report to the Registrar.

Of course, where search and examination are conducted together it should not arise
before the first examination response. Where examination is conducted some time

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after the search report has been established it should mean that the fresh citation
has a sufficiently serious effect to mean that the first examination response is an
opinion.

1.8.7.3 Examination Opinion/Report Completion


The examiner will complete the opinion/report forms APO 408/409. The completed
examples of an opinion and report at 1.8.12 Annex C and D respectively, are to be
carefully followed. PCT International Examination 1.3.11 Annexes A, B, D and E offer
further guidance. The citing of documents in shortened form, in accordance with PCT
Administrative Instruction 503, is acceptable. See the note in 1.8.8.2 General
Examination Procedure regarding the "received on" date to be used in relation to
amendments to be used in Box I of the written opinion and examination report.

The most significant differences from routine PCT opinion/reports to bear in mind are:

all statements, advice and opinion are to be made under the Singapore
Patents Act 1994. Thus where differences exist between the mode of
expression used in the Singapore legislation and the PCT, that used in the
Singapore law must prevail. Australian-specific jargon, such as "fair basis"
must never be used.

the identification of the issuing Office and date of the search report used, at
the first sheet

the statement of whether the claimed invention is, or seems to be,


unpatentable according to Section 13(2) at the supplemental sheet

no invitation to comment on the abstract is given

no invitation is extended for lack of unity

no use is made of any PCT form; the only forms to be used are the opinion
APO/408 and report APO/409, with the supplemental sheets of these being
used for any equivalent action that would use a separate form from the PCT
series or for any further action not normally part of the PCT examination
consideration

Singapore Act section 14 relates to certain published documents and is


analogous to our Whole of Contents. In Box VI, P, E and 'L' documents
relate only to Singapore national route and 'national phase' patents or
applications and do not include patent documents from other countries.

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Consequently non Singapore P, E and 'L' documents should not be


mentioned in Box VI of the examination report, as they do not have any
bearing on the novelty of the invention. In order to locate Singapore family
equivalents, examiners should use the Patent Family Member Queries page
(on the examiners workbench) and also check the Singapore ePatents
website, (also accessed via the 'Patent Offices' link on the workbench)

(If the only document available for the Singapore family equivalent is an
abstract, then this is appropriate to use as the citation, if enough information is
present. If a full copy is required, then the examiner, using their own
judgement as to the need, should contact PCT unit to request a copy from the
IPOS. The Search report or first opinion should be established, raising the
document of concern, and issued without waiting for the reply from the IPOS.
The report should indicate that only the abstract has been considered and a
full copy of the document could not be obtained at the time of issuing the report
or opinion).

an 'L category may apply in certain applications where sec 30(3)(e) of the
Singapore Patents Act, which, similarly to sec 64(2) of the Australian Patents
Act, does not allow identical inventions in two applications/patents by the
same applicant and having the same priority date, is contravened. Such L
documents are mentioned in Box VI of the opinion/report. Any
applications/patents required in order to assess compliance with sec 30(3)(e)
may be obtained from either the Singapore ePatents web site or, if
unavailable there, a request put through PCT unit to obtain the document
from the IPOS, as with E and P documents

An international application that designates Singapore, but has not entered the
national phase in Singapore, is not available for whole of contents purposes
[section 86(1) of the Singapore Act]. Although such documents should be
included in Box VI of the opinion/report, it should be stated that the documents
are not citable since they have not entered the national phase. The national
phase status of any document referred to in this manner should be checked at
each opinion/report stage, in case national phase entry has occurred since the
previous opinion was issued. This should be done using the Patent Family
Member Queries page/IPOS website as indicated above.

Note: Whenever documents are mentioned in Box VI, a cross-reference to


Box VI must be made in Box V (even if there is no other document cited in Box
V).

Note: Where a Singapore patent or application is mentioned in Box VI and is


therefore citable on a whole of contents basis, this should be reflected in the
Statement at item 1 of Box V.

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(see 1.8.12 Annexes C and D for examples)

that this Office is not acting with the direct role and authority of an IPEA in
examination and reporting.

On completing the examination the examiner will word-process the opinion/report.


The person indicated as the authorised person must be properly authorised - see
Authorised Officer. There is no requirement for reports to be signed, and to avoid
any confusion in the mind of the applicant resulting from differing practices, reports
should not be signed.

After all quality and checking and assurance processes have been undertaken (note
that examination sections have prime responsibility for eliminating the errors
occurring in reports - they must aim to eliminate errors in reports with effective quality
assurance procedures), the search/examination report file including:

the original of the examination report or opinion, and,

a good quality copy (i.e. the best reproduction that was possible and free of
any highlighting, language or other annotation) of any fresh citation, and

all originally supplied documents

are returned via the internal clearance (the "out tray") to the PCT Unit.

1.8.7.4 Final Processing Examination


Opinion/Report
Upon receipt of the search/report file the PCT Unit will:

make three copies of the examination report or opinion

despatch the original plus one copy of the report or opinion under a covering
letter to IPOS

send to storage the search/report file containing one copy of the examination
report, the search report and one copy of each citation; if there was an
opinion rather than an examination report then this file will be held over in the
PCT Unit pending a report

place a copy of the examination report, or opinion, and the request in the
foreign search/report folder held in the PCT Unit

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update the foreign search/examination report mainframe database with the


date of mailing to IPOS of the report or opinion, and in the latter case the date
set for response to that opinion which will be five months from the date of
mailing to IPOS.

1.8.8 Search and Examination Opinion/Report

1.8.8.1 Initial Processing Search and


Examination Opinion/Report
Requests for a search and examination report are made to IPOS under Singapore
sec 29(1)(b) or 29(5)(b), rule 37 and on Patents Form 11.

Upon receipt in this Office such requests are forwarded to PCT Unit who will:

acknowledge receipt to IPOS

create a PCT unit foreign search/examination report folder and a


search/report file

allocate an identification number using the Singapore application number and


add the details to the foreign search/examination report mainframe database

check that no material is obviously missing

establish a search request date which will be the date of receipt by this Office
of fees and the application documents, including a search and examination
request

establish the search and examination report completion date as 4 months


from the search and examination request date

add the date details of e) and f) to the mainframe database

include in the search file a copy of the Singapore application documents,


including a copy of the request

forward the search/report file to the on-line specialists for the commencement
of tracking of the search report under an AU Job No and allocation of the file
to a sub-section.

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1.8.8.2 Search and Examination Procedure


The procedure is no more than the completion and joint despatch of:

a search report (see Initial Processing Search Report to Final Processing


Search Report) and

an examination opinion/report (see 1.8.7.1 Initial Processing to 1.8.7.4 Final


Processing)

much in the manner of an ISR and ISO.

Where a first opinion is the outcome of the initial examination, five months from the
date of the Registrar's letter will be fixed as the time for reply.

An opinion must be issued where any adverse finding in relation to the application is
to be made.

Completed search, opinion and report forms APO/210, APO/408 and APO/409 are
displayed at Annex B, C and D, respectively.

1.8.8.3 Search and Examination Opinion/Report


completion
The examiner will complete the search and opinion or report forms APO/210 and
APO/408 or APO/409 carefully following the completed examples of Annex B and C
or D. Likely variations to the contents of these forms are displayed by Annexes B and
C of International Searching (for a search) and International Examination Annexes A,
C and D (for examination opinions or reports).

The search/report file including:

the original of the search and examination report or opinion, which has been
closely checked for any errors (Examination sections have prime
responsibility for eliminating the errors occurring in reports - they must aim to
eliminate errors in reports with effective quality assurance procedures), and

a good quality copy (i.e. the best reproduction that was possible and free of
any highlighting, language or other annotation and sketching) of each cited

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document, which will usually be a full text copy but could be an abstract e.g.
JP or SU is returned by the search/examining examiner to the PCT Unit.

1.8.8.4 Final Processing Search and


Examination Opinion/Report
Upon receipt of the search/report file after the search and initial examination have
been performed, the PCT Unit will:

make one copy of each citation and three copies of the search report

make three copies of the examination report or opinion

despatch under a covering letter to IPOS the original plus one copy of both
the search report and examination report or opinion plus one copy of each
citation

send to storage the search/report file containing one copy of the search
report, one copy of each citation and one copy of the examination report; if
there was an opinion rather than an examination report then this file will be
held over in the PCT Unit pending a further opinion or a report

place a copy of the request, search report and the opinion or examination
report in the foreign search/examination report folder held in the PCT Unit

update the foreign search/examination report mainframe database with the


date of mailing to IPOS.

Where the final processing is of a further opinion, PCT Unit will:

make three copies of the opinion

despatch to the applicant's address for service in Singapore the original plus
one copy of each opinion

hold the file in PCT Unit pending a further opinion or report

place a copy of the opinion in the foreign search/examination report folder


held in the PCT Unit

update the foreign search/examination report mainframe database with the


date of mailing to IPOS.

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Where the final processing is of an examination report following a written opinion the
PCT Unit will:

make three copies of the examination report

despatch the original plus one copy of the report under a covering letter to
IPOS

send to storage the search/report file containing one copy of the examination
report; the search report, opinion and one copy of each citation should
already be on file

place a copy of the examination report and the request in the foreign
search/examination report folder held in the PCT Unit

update the foreign search/examination report mainframe database register


with the date of mailing to IPOS of the examination report.

1.8.9 Revocation/Reexamination

1.8.9.1 Initial Processing Revocation/Re-


examination Advisory Report
Upon receipt in this Office such requests are forwarded to PCT Unit who will:

acknowledge receipt to IPOS

create a PCT unit foreign search/report folder and a search/report file where
there is no identifiable folder or file from previous Australian Patent Office
action

allocate an identification number using the Singapore patent number and add
the details to the foreign search/report register

check that no material is obviously missing

establish a report request date which will be the date of receipt by this Office
of the request, fees, patent and related documents

establish the report completion date as 3 months from the request date

add the report request date and report completion date details to the register

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include in the search file:

a copy of the Singapore patent and related documents, including a


copy of the request, and

a blank Advisory Report form (a completed example is shown at


Annex E)

forward the search/report file to DC (OH&L) who will record and allocate the
file to an authorised officer.

1.8.9.2 Revocation/Re-examination Advisory


Report Procedure
Section 79 to 82 of the Singapore Patents Act 1994 concern the revocation of
patents and validity proceedings.

Section 79 enables any interested person to request the proprietor of a patent to


furnish to him the prescribed information on the result of all corresponding
international applications for a patent made by him. Section 80 provides that any
person may apply to the Registrar for revocation of a patent upon the grounds set
down in the section and also provides that under certain conditions the Registrar may
cause the patent to be re-examined in relation to those grounds of revocation. An
application for revocation must be made on Singapore Patents Form 39. The
proprietor of the patent must then file a counter-statement on Patents Form 3 (rule
85(3)). If he fails to do so, he is taken to have conceded all the specific facts set out
in the statement accompanying the Form 39 (rule 85(4)). The proprietor may also at
this stage file an amendment under sec 83 (rule 85(3)).

If the Registrar decides to "cause the patent to be re-examined" (sec 80(02)), the
person seeking the revocation will be required to file a completed Singapore Form
40, which is a request for re-examination. Section 81 enables the Registrar to revoke
a patent on his own initiative in limited circumstances where the invention was
disclosed in another published patent application. Section 82 specifies the
proceedings in which the validity of a patent may be put in issue, and makes
provisions relevant to such proceedings.

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1.8.9.3 Revocation/Reexamination Advisory


Report Completion
A Revocation/re-examination Advisory Report will generally take the form of an
Australian re-examination report. However, the Singapore re-examination differs
substantially from Australian re-examination, in that it is part of an essentially inter
partes procedure, with a three-stage evidence filing procedure along the lines of
Australian opposition, whereas re-examination in Australia is essentially ex parte.

(Singapore rule 85, 86)

See Annex E for a completed Advisory Report APO/490.

The re-examination report will also include an opinion as to whether any amendment
proposed under sec 83(1) is allowable under sec 84(3) and would overcome the
grounds of revocation.

(Singapore rule 86(2))

The search/report file including:

the original of the typed report with the name of the "Authorised Officer"
indicated, which has been closely checked for any errors (Examination
sections have prime responsibility for eliminating the errors occurring
in reports - they must aim to eliminate errors in reports with effective
typing checking procedures), and

all necessary accompanying documentation

is, following peer review, passed to the DC (OH&L) for consideration and recordal
and returned to the PCT Unit.

1.8.9.4 Final Processing


Revocation/Reexamination Advisory Report
Upon receipt of the search/report file the PCT Unit will:

make three copies of the report

despatch the original plus one copy of the report under a covering letter to
IPOS

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send to storage the search/report file containing one copy of the report and
accompanying documentation

place a copy of the report and the request in the foreign search/report folder
held in the PCT Unit

update the foreign search/report register with the date of mailing to IPOS.

1.8.10 Opposed Amendments Advisory Report

1.8.10.1 Initial Processing Opposed


Amendments Advisory Report
Upon receipt in this Office such requests are forwarded to PCT Unit who will:

acknowledge receipt to IPOS

create a PCT unit foreign search/report folder and a search/report file where
there is no identifiable folder or file from previous Australian Office action

allocate an identification number using the Singapore application/patent


number and add the details to the foreign search/report register

check that no material is obviously missing

establish a report request date which will be the date of receipt by this Office
of the request, fees and the application/patent and accompanying documents

establish the report completion date as 3 months from the request date

add the report request date and report completion date details to the register

include in the search file:

a copy of the Singapore application/patent and accompanying


documents, including a copy of the request, and

a blank Advisory Report form (see Annex F for a completed example)

forward the search/report file to DC (OH&L) who will record and


allocate the file to an authorised officer.

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1.8.10.2 Allowability of Opposed Amendments


Advisory Report Procedure
Section 38 concerns the general power to amend a specification after grant and
opposition thereto. Sec 38(4) gives the right to oppose these amendments.

Section 83 concerns the amendment of patents in proceedings before the court or


the Registrar. Rule 90 gives the right to oppose these amendments.

Section 84 concerns conditions that must be met for allowability of amendments in


general. In particular, sec 84(3) prohibits the disclosure of additional matter, or
extending the protection conferred by a patent.

Singapore rule 52 sets down the mechanism for asking leave to amend (using
Patents Form 17) and opposing amendments (using Patents Form 18). Rule 52.7
allows the Registrar to cause examination of the amendments; rule 86.2(a) requires
an examiner who is carrying out re-examination to also consider the allowability of
any amendments and any implications they have for the revocation action.

The requirement of Singapore sec 84(3)(a) that after amendment the specification is
not to disclose additional matter is to be treated as being comparable to the
requirement under the PCT that amendments shall not go beyond the disclosure.

The requirement of Singapore sec 84(3)(b) that after amendment the specification is
not to extend the protection conferred by the patent is to be treated as being
comparable to sec 102(2)(a) of the Australian Patents Act 1990.

1.8.10.3 Allowability of Opposed Amendments


Advisory Report Completion
The examiner will complete the Advisory Report APO/491. (See Annex F)

The search/report file including:

the original of the typed report with the name of the "Authorised Officer"
indicated, which has been closely checked for any errors (Examination
sections have prime responsibility for eliminating the errors occurring in
reports. They must aim to eliminate errors in reports with effective typing
checking procedures), and

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all necessary accompanying documentation

is, following peer review, passed to the DC (OH&L) for consideration and recordal
and returned to the PCT Unit.

1.8.10.4 Final Processing Opposed Amendments


Advisory Report
Upon receipt of the search file the PCT Unit will:

make three copies of the report

despatch the original plus one copy of the report under a covering letter to
IPOS

send to storage the search/report file containing one copy of the report and
accompanying documentation

place a copy of the report and the request in the foreign search/report folder
held in the PCT Unit

update the foreign search/report register with the date of mailing to IPOS.

1.9 PCT Articles, Regs and Guidelines et al


PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/1)

List of WIPO Standards, Recommendations and Guidelines

Administrative Instructions Under the PCT

PCT Minimum Documentation

Inventory of Patent Documents

List of Periodicals

Regulations under the PCT

Articles under the PCT

1.10 Miscellaneous

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1.10.1 Current Allocation of PCT Related Duties

Duty & Responsible Contact Officer Phone


Officer
PCT Law and Practice P Spann 6283 2348
AGM (OH&L)
PCT Administration Unit C Woodford 6283 2225
incl. current fee schedule
OIC PCT Unit

ISR, IPE Complaints J Bokil 6283 2371


Custodian of precedent files
AGM (A)
Individual case action
AGM for section
Unity of Invention Protest P Spann 6283 2348
Board
Custodian of precedent files
Deputy Commissioner
(OH&L)
Individual case action S Barker 6283 2294
Supervising Examiner
(OH&L)
WIPO Correspondence re Brian Crouch 6283 2060
ISRs
BDQM Quality Manager
Manual Editor E Knock 6283 2217
Supervising Examiner, C3
International Search R Bartram 6283 2215
Technical Team
Supervising Examiner
Biotech Search Online K Ayers 6283 2092
Costs
Supervising Examiner, C2
IPC Classification Arbiter J Thomson 6283 2214
(non-Chemical)
IPC Classification Arbiter S Barker 6283 2294
(Chemical)
IPC Revision Manager R Bartram 6283 2215
Supervising Examiner, C4
IPC Volumes Supply R Bartram 6283 2215
Supervising Examiner, C4

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1.10.2 International Online Specialists


Some examination sections designate a particular examiner as being their primary
searcher, whilst other sections do not utilize a primary searcher, but rather all
examiners in the section, or at least those with the acceptance delegation, are
familiar with all procedures relating to international and on-line searching. Where an
examiner requires on-line searching expertise for a technology outside their section,
they should approach the supervising examiner, or a senior examiner, of the other
section to ascertain an appropriate source of that expertise.

A primary searcher is responsible for providing advice on the section's international


search strategies and on-line database searching, and normally does the bulk of the
advisory work. The primary searcher is also responsible, particularly when going on
leave, for ensuring that a designated back-up searcher is familiar with all procedures
relating to international and on-line searching in the section.

The back-up searcher acts for the primary searcher when the latter is not available.
The back-up should be an experienced searcher and should be familiar with all
procedures relating to international and on-line database searching in the sub-
section.

1.10.3 Authorised Officer


The responsibility for this function is detailed in the earlier parts of this volume. The
APO examiner levels for the most commonly met responsibilities are summarized
below.

They are minimum levels of responsibility and represent no impediment to section


practices such as actually performing or reviewing such tasks at a lower level eg. for
development purposes or at a higher level eg. for performance-feed back purposes,
whether periodic or continuous. The Administrative Instructions at Section 514 (ISA)
and 612 (IPEA) establish that the Authorised Officer means the person who actually
performs the work or another person who was responsible for its supervision.
Sections are to ensure that adequate quality control mechanisms are in place in
relation to international actions. The fact that a person who performs the work is also
responsible for it does not exempt them from being subject to quality control.

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PCT Rules 43.8 (ISR) and 70.14 (IPRP) require that the responsible officer will be
indicated in the reports. There is no requirement for the reports to be signed and
Australian practice is not to sign (see the Annexes International Searching and
International Examination).

Where the search, or examining, examiner is the responsible examiner, he or she will
indicate as the date of completion of the ISR or IPRP, the date of its actual
completion.

Where the search, or examining, examiner is not authorised then the day upon which
the responsible examiner concurs with the search examiner is to be indicated as the
date of completion.

The date of completion of the IPRP should not be after the date "by which the IPRP
will be established" as shown on the IPEO first sheet, if a preceding opinion was
issued.

1.10.4 Minimum Levels of Responsibility


Supervising Examiners and the Chief of PBR are authorised officers at the
minimum level of responsibility for:

ISA Unity of Invention (form PCT/ISA/206)


ISA Unity of Invention, additional fees outside time
ISA Refund of international search fees (forms PCT/ISA/213 and 224)
ISA Excluded subject matter (form PCT/ISA/203)
IPEA All claims beyond original disclosure
IPEA Rule 69.1 notice requests examination of claims where no ISR
IPEA available
IPEA Unity, additional fees paid under protest
Extension of Time Limit for opinion response
Senior Examiners are authorised officers at the minimum level of responsibility for:

ISA Notification of change in abstract (form PCT/ISA/205)


ISA Search statement request (letter)
ISA Invitation to indicate which search is to be conducted
ISA International-type search not established
ISA Notification of Truncation of Search
THAI Satisfactory search not possible
Examiners are authorised officers at the minimum level of responsibility for:

ISA International search report/opinion (forms PCT/ISA/210,


ISA PCT/IPEA/237)

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ISA Notification of Transmittal of ISR (form PCT/ISA/220)


IPEA International-type search report
IPEA IPE Opinion (form PCT/IPEA/408)
IPEA IPE Report (form PCT/IPEA/409)
THAI Notification of Transmittal of IPRP (form PCT/IPEA/416)
WIPO Search report
FIJI Search report
FIJI Search report and Advisory opinion
SG Further advisory opinion
SG Search Report (form APO/210)
SG Examination Opinion (form APO/408)
SG Examination Report (form APO/409)
Search and Examination Opinion/Report (forms APO/210, APO/408
and APO/409)

1.10.5 Examiners with Foreign Language


Capabilities
German

Examiner Name Section

Rajeev Deshmukh A3

Kurt Tobler A3

Marie-Luise Huber B2

Jim Williams C3

Leopold Filipovic C5

French

Examiner Name Section

Rajeev Deshmukh A3

Sylvain Deshanel A4

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Nathalie Tochon-Danguy B3

Chinese

Examiner Name Section

Julia Hu A3

Oi Lee Chai C2

Japanese

Examiner Name Section

Makiko Umehara B3

Oi Lee Chai C2

Russian

Examiner Name Section

Eva De Kool C3

Viara Van Raad B4

Spanish

Examiner Name Section

Ines Carrin A2

Karen Violante B4

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1.10.6 Current Status of APO as an RO ISA and


IPEA
AUSTRALIA (AU)

became a PCT contracting state on March 31, 1980

APO is the competent ISA and IPEA for filings before RO/AU i.e. search
requests to RO/AU pass to ISA/AU

demands for preliminary examination are made to IPEA/AU

GHANA (GH)

became a PCT contracting state on February 26, 1997

APO is a competent ISA and IPEA for filings before RO/GH

INDIA (IN)

became a PCT contracting state on December 7, 1998

APO is a competent ISA and IPEA for filings before RO/IN

INDONESIA (ID)

became a PCT contracting state on September 5, 1997

APO is a competent ISA and IPEA for filings before RO/ID

KENYA (KE)

became a PCT contracting state on June 8, 1994

APO is a competent ISA and IPEA for filings before RO/KE

LIBERIA (LR)

became a PCT contracting state on August 27, 1994

APO is a competent ISA and IPEA for filings before RO/LR

NEW ZEALAND (NZ)

became a PCT contracting state on December 1, 1992

APO is a competent ISA and IPEA for filings before RO/NZ i.e. 7 search
requests to RO/NZ may pass to ISA/AU

demands for preliminary examination may be made to IPEA/AU

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PHILIPPINES (PH)

became a PCT contracting state on August 17, 2001

APO is a competent ISA and IPEA for filings before RO/PH

REPUBLIC OF KOREA (KR)

became a PCT contracting state on August 10, 1984

APO is a competent ISA for filings before RO/KR

SAINT LUCIA (LC)

became a PCT contracting state on August 30, 1996

APO is a competent ISA and IPEA for filings by nationals or residents of Saint
Lucia before the International Bureau of WIPO, which acts as RO

SINGAPORE (SG)

became a PCT contracting state on February 23, 1995

APO is a competent ISA and IPEA for filings before RO/SG

SOUTH AFRICA (ZA)

became a PCT contracting state on March 16, 1999

APO is a competent ISA and IPEA for filings before RO/ZA

SRI LANKA (LK)

became a PCT contracting state on February 26, 1982

APO is a competent ISA and IPEA for filings by nationals or residents of Sri
Lanka before the International Bureau of WIPO, which acts as the RO.

VIETNAM (VN)

became a PCT contracting state on March 10, 1993

APO is a competent ISA and IPEA for filings before RO/VN

ZIMBABWE (ZW)

became a PCT contracting state on June 11, 1997

APO is a competent ISA and IPEA for filings before RO/ZW

INTERNATIONAL BUREAU (IB)

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became an alternative competent RO for applicants from all contracting states


on January 1, 1994

APO is a competent ISA and IPEA for filings before RO/IB for AU, GH, IN,
KE, LR, NZ, LC, SG, ZA, LK, VN, and KR (ISA only) applicants. The
international bureau's two letter code (IB) will be used in the international
application number.

The WIPO publication "PCT Applicant's Guide" contains general information for users
of the PCT, including international and national phase procedures before designated
and elected Offices; fees; particular RO, ISA and IPEA relationships; etc. Copies are
held at the state sub-offices, IP Australia library, PCT Unit and sections F, M, R and
ORD.

The PCT Gazette published by the IB of WIPO at "Section IV: Notices of Information
of a General Character" shows interim changes to fees; RO, ISA and IPEA
relationships; etc. Copies are held at the Sydney, Melbourne and Adelaide sub-
offices, IP Australia library and the PCT Unit (issued fortnightly).

Directives given by the PCT Assembly under PCT Rules 15.2(d), 16.1(d) and 57.2(e)
for the establishment of new equivalent amounts of certain fees in certain currencies.

See WIPO document PCT/A/XXIV/10 Annex IV

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