IPA patent 6.1.12.3-general-details — IP Australia Patent Manual of Practice and Procedure – 6.1.12.3 General Details - ISR

Also in this Chapter: 6.1.12.1 Background Search Report and Notification Form Completion 6.1.12.2 Applicant Details 6.1.12.4 Fields Searched 6.1.12.5 Documents Considered to be Relevant 6.1.12.6 Family Member Identification 6.1.12.7 Date of Actual Completion of the Search 6.1.12.8 Refund Due 6.1.12.9 Contents of Case File at Completion Key Legislation: Patent Cooperation Treaty (PCT): Article 12 Transmittal of the International Application to the International Bureau and the International Searching Authority Regulations under the PCT: Rule 6.2 References to Other Parts of the International Application Rule 23.1 Procedure Administrative Instructions under the PCT: Annex C INSTRUCTIONS RELATING TO THE PRESENTATION OF NUCLEOTIDE AND AMINO ACID SEQUENCE LISTINGS IN INTERNATIONAL PATENT APPLICATIONS UNDER THE PCT Related Chapters: 6.1.4 Unity of Invention 6.1.4.2 Determining Lack of Unity 6.1.4.11 Payment of Additional Search Fees Under Protest 6.1.5.1 Abstract 6.1.5.2 Title 6.1.6 Subjects to be Excluded from the Search 6.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6 6.1.7.2.1 Introduction Broad Claims 6.1.11.12 Grouping the Claims 6.1.17 Rule 91 Obvious Mistakes in Documents 6.1.18.1 Nucleotide and/or Amino Acid Sequence Listings 6.3.8.8 Box VII Certain Defects Annex A - Blank ISR Annex B - Completed ISR Annex O RIO and Intelledox - Processing PCT Tasks - PCT/ISA/210 RIO and Intelledox - Processing PCT Tasks - Box I RIO Classification Tasks On this page Introduction Notification of Transmittal of ISR and ISO International Search Report First sheet of the ISR Box No. I of the ISR Box No. II of the ISR Box No. III of the ISR Box No. IV of the ISR Second Sheet of ISR, Box A Introduction The following page explains the general details form fields in the International Search report (ISR) and International Search Opinion (ISO) as well as providing manual references examiners can consult for further information. Notification of Transmittal of ISR and ISO Establishment/Non-establishment of search report This field concerns excluded subject matter e.g. scientific and mathematical theories, plant or animal varieties, schemes, rules or methods of doing business, or computer programs. When considering this issue, discussion with a senior examiner and confirmation with supervising examiner is required. Refer to 6.1.6 Subjects to be Excluded from the Search for further details. Payment of fees under protest Refer to 6.1.4.11 Payment of Additional Search Fees Under Protest for the examiner’s course of action to be taken in this case. Authorized Officer Where the search examiner is an authorized officer their name will appear on the search report. 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. Notification of Transmittal of ISR and ISO Establishment/Non-establishment of search report Refer to 6.1.6 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. When considering this issue, discussion with a senior examiner and confirmation with supervising examiner is required. 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 6.1.4.11 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. 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. International Search Report First sheet of the ISR 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 International Searching Authority (ISA) macro. The Examiner must check that the correct date has been captured and should 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 populated on the front sheet. Examiners should leave the box at ‘It is also accompanied by a copy of each prior art document cited in this report.’ 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 provided under Rule 23.1(b) and the search fee has been paid, the receiving Office sends a copy of both the translation and the request to the International Searching Authority. These documents together are considered to be the search copy under PCT Article 12(1) . In the case where no search fee has been paid, sending of the search copy should be delayed until payment of the fee has been received. After payment is received, the documents should be sent promptly. Rectifications of obvious mistakes If on file there is a rectification of an obvious mistake (or ‘obvious error’ for rectifications made before 1 April 2007) that has been authorized, examiners should ensure this is indicated in the international report and base the report on the rectified version. See 6.1.17 Rule 91 Obvious Mistakes in Documents for information regarding obvious mistakes. Nucleotide and/or amino acid sequence listings The considerations for nucleotide and/or amino acid sequence listing may be found in 6.1.18.1 Nucleotide and/or Amino Acid Sequence Listings . Note that a sequence listing is a separate part of the description that is presented in a specific format ( Annex C of the Administrative Instructions under the PCT). Nucleotide or amino acid sequences that appear in the figures or drawings, or in the text of the description, do not constitute a sequence listing. Where a nucleotide or amino acid sequence listing is provided and is used to conduct the search, examiners should: Mark the checkbox at item 1c of the front sheet of the ISR (item 1b of the front sheet of International Type Search Report). Complete item 1 and item 2 (if appropriate) of Box I. Where a sequence listing is provided, but it is not used to conduct the search: The checkbox at item 1c of the front sheet of the ISR (item 1b of the front sheet of International Type Search Report) should be marked. Items 1 and 2 of Box I should be left blank. Examiners should indicate under item 3 of Box I (Additional comments) that: ‘There was a sequence listing originally filed but it was not used for the purposes of this search.’ Where sequences are present in the drawings or figures, or in the text of the description (but not in the form of a sequence listing), and these sequences are used to conduct the search: The checkbox at item 1c of the front sheet of the ISR (item 1b of the front sheet of International Type Search Report) should be marked. Items 1 and 2 of Box I should be left blank. Examiners should indicate under item 3 of Box I that: ‘A sequence listing was not filed, however the sequences depicted in (Figure 1, Table 3 etc.) were used for the purposes of this search.’ Certain claims found to be unsearchable Subjects to be excluded from the search. Refer to 6.1.6 Subjects to be Excluded from the Search Broad claims; multitudinous claims. See 6.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6 Omnibus Claims [ Rule 6.2(a) ] see 6.3.8.8 Box VII Certain Defects for instructions on filling in the ISR and Annex O for example. Unity of invention Refer to 6.1.4 Unity of Invention Title Refer to 6.1.5.2 Title Abstract Refer to 6.1.5.1 Abstract Drawings to be published When indicating the Figure No. of the drawings, check for the Applicant's suggestion at Box IX of the International Application Request (PCT/RO/101). If none of the figures are considered useful for the understanding of the abstract (paragraph 4.2(c)), indicate this at the appropriate box (item 6, first sheet). If there are no drawings included with the application, do not cross any boxes. It is not recommended to select more than one figure. However, if it is necessary to select multiple figures, update 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.’ Box No. I of the ISR See Nucleotide and/or amino acid sequence listings above. Box No. II of the ISR Excluded subject matter Item 1 Refer to 6.1.6 Subjects to be Excluded from the Search No meaningful search possible Item Refer to 6.1.7.2.1 Introduction Broad Claims Multiple dependant claims Item 3 Refer to 6.1.11.11 Grouping the Claims Ignore this box as our national law allows multiple dependent claims. Box No. III of the ISR Lack of unity Refer to 6.1.4.2 Determining Lack of Unity Remarks on lack of unity fees paid under protest Refer to 6.1.4.11 Payment of Additional Search Fees Under Protest Box No. IV of the ISR Text of the abstract Refer to 6.1.5.1 Abstract Abstracts should not be more than about 150 words. Second Sheet of ISR, Box A Classification of Subject Matter: IPC Symbols The first IPC symbol listed in the ISR should have particular significance as it most adequately characterises the invention. All relevant IPC symbols from the CPC classification task performed by CPC Classifiers will be automatically added to the report. The report cannot be completed if CPC Classification has not been finalised (see 4.2.1 Patent Classification Systems and RIO - Classification Tasks ). The RIO system will populate the version indicator for each IPC symbol, as indicated in the Guide to the IPC (year, month), in round brackets after each IPC symbol. The validation and the ST.10/C display will be used wherever the IPC symbols are presented (in the IPC box) in any report.