IPA patent 6.1.12.5.3-citation-of-prior-art-documents — IP Australia Patent Manual of Practice and Procedure – 6.1.12.5.3 Citation of Prior Art

Also in this Chapter: 6.1.12.5.1 Selection of Documents Considered to be Relevant 6.1.12.5.2 Citation Category ​​​​​​​ 6.1.12.5.4 Citation of URLs 6.1.12.5.5 Citation Examples 6.1.12.5.6 Citing Patent Documents Retrieved from AbS 6.1.12.5.7 Relevant Claim Numbers ​​​​​​​ Key Legislation: Administrative Instructions under the PCT: s503 Method of Identifying Documents Cited in the International Search Report and the Written Opinion of the International Searching Authority s507 Manner of Indicating Certain Special Categories of Documents Cited in the International Search Report Regulations under the PCT: Paragraph 16.78B Citation of the Documents WIPO Standards: ST.14 References cited in patent documents ST.16 Identification of different kinds of patent documents Related Chapters: 5.6.4.6 Identifying and raising citations 6.1.12.5.5 Citation Examples 6.1.12.5.6 Citing Patent Documents Retrieved from EPOQUE Annex B Annex C Annex Z RIO - Processing PCT Tasks - Citations RIO - COMPASS RIO - Citation Manager On this page General Patent literature Additional ‘descriptors’ Jurisdiction-specific considerations WO documents US documents JP documents SU documents Kind Codes Publication Date (INID Codes) Patentee or applicant name (INID Codes) Non-patent literature Non-English language documents Non-written disclosures Citing Chemical Abstracts (CAS) Registry Numbers General Note : When identifying cited disclosures, those errors that reflect a misapprehension of the facts rather than a simple miskeying are regarded as serious mistakes . They are errors whose routine correction is not obvious to a reader in the light of other citation information. Such errors are misleading in that they would reasonably lead the reader to an incorrect conclusion. Examples include: a typographical error that results in an incorrect applicant name which is the name of a known competitor firm in the art concerned a citation publication date that erroneously indicates that the citation cannot be used to establish want of novelty Examiners should identify any disclosure according to WIPO standard unless indicated otherwise in the manual (see WIPO standards ST.14 and ST.16 , PCT Administrative Instruction 503 ). For examples, see PMPP pages 6.1.12.5.5 and 6.1.12.5.6 , completed example International Search Reports (ISRs) in Annex B and C ). This means that the details required for each entry in the citations list include, as available: Patent literature: country code publication number publication Kind code applicant date of publication Non-patent literature: name by which the journal or reference work is known date of publication volume number starting page reference and/or the title of the article Internationally recognized abbreviations are permitted when citing documents. Additionally, the citation list must be free from frequent or serious spelling or typographical mistakes and must not contain misleading information. Note : Copies of all documents (both patent and non-patent literature) cited in official IP Australia examination and search reports and opinions (including any document having relevance categorised ‘A’) must be stored on the relevant application folder in COMPASS for future reference. Patent literature In general, cited patent documents should be identified in the form: CC NUMBER KC (APPLICANT) Publication Date specific pages, paragraphs or lines containing the cited disclosure These indicate the relevant parts of the disclosure, where: CC = country code, identifies country or region from which the document originates NUMBER = document number of the patent, patent application or abstract cited KC = Kind code, identifies the type and level of publication APPLICANT = name of the applicant for the patent Publication Date = date of publication of the document cited See 6.1.12.5.5 for a non-limiting list of example citation formats. Although the document number and country code of a citation are critical to correct identification of a document, it is recognised, that there is substantial variation in the number formats as they are adopted by different databases. Moreover, it is expected that the reader/user of the information will adjust the format to suit the database accessed when retrieving the document. Therefore: For the purposes of consistency when reporting prior art patent documents: A citation is correctly identified when the document number (including any leading zeroes) and the convention country as cited are identical to these descriptors as they appear on the document viewed and cited. This principle may be applied when citing documents from any jurisdiction , including when citing a WO document. Copies of all documents (both patent and non-patent literature) cited in official IP Australia examination and search reports and opinions (including any document having relevance categorised ‘A’) must be stored on the relevant application folder in COMPASS for future reference. Where a copy of the document cited has been placed on the relevant application folder in COMPASS, the details of the citation written in the report should mirror this information. Note : Where the abstract does not indicate all the elements for identification it may be identified with whatever elements are available from the abstract. Additional ‘descriptors’ Where additional descriptors or alphanumeric codes are included in English in the number on the document considered, as stored on the relevant application folder in COMPASS (e.g. H or S in Japanese citations, see below ), they must be included in the citation details. Where they are either absent from the document considered or appear in another language, examiners are not obliged to determine, translate, or include them in the citation. However, if an examiner is aware of the English translations of such descriptors, examiners may include them in the citation details (at their discretion). As they are not considered critical, examiners may add or omit slashes, hyphens, and commas except where essential to the unambiguous identification of the document. Note: If system limitations prevent the entry of the citation number in the format of the document actually considered, the matter should be referred to the Supervising Examiner for direction and reporting. Jurisdiction-specific considerations WO documents WO documents have adopted a variety of number formats at various times. In view of this, examiners may identify WO documents according to the 10-digit format, regardless of the format of the number on the document viewed . Examiners may (at their discretion) insert leading zeroes and century digits to the numbers as they appear on the document viewed. See 6.1.12.5.5 for a non-limiting list of example citation formats. US documents 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 US Patent and Trademark Office (USPTO) explaining the new system. As a result of the America Invents Act, the applicant for a US Patent filed on or after 16 September 2012 is no longer restricted to being the Inventor and may be the assignee. Consequently, when citing US applications filed after this change took effect, examiners cannot rely on the name appearing at the top of the document , just below box (12), as indicating the applicant, as this name refers to the inventor who may not be the applicant. Instead, examiners should refer to the name appearing against Internationally agreed Numbers for the Identification of (bibliographic) Data (INID) 71 which code formally identifies the applicant . In the absence of INID 71 on the front page of a US application/patent, examiners should continue to use Inventor name as identifying the applicant. JP documents 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. See sample DERWENT and Patents Abstracts of Japan abstracts at 6.1.12.5.5 [ Ad. Inst. 507(g) , Ad. Inst. 507(h) ]. Where a Japanese document number includes (in English) an ‘H’ or ‘S’ (indicating the year of the emperor’s reign), it must be included in the citation details. If they are absent from the document actually considered by the examiner or present only as a Japanese character, examiners are not obliged to determine, translate or include the associated letter in the citation. However, if examiners are aware of the English translations of such descriptors, examiners may include them in the citation details (at their discretion). SU documents For SU documents, the citation is presently based on the DERWENT abstract. Kind Codes Note: When citing a patent document, a Kind Code must be included. When citing a document for which no Kind Code is identified, ‘A’ should be applied in the absence of any other indication or means of identification. When citing an older Australian patent document for which no Kind Code is identified, an appropriate Kind Code should be ascribed as set out in 5.6.4.6 Identifying and raising citations . A Kind Code, when included in a reported citation list or reference, must comprise at least the letter (A, B, etc.) as required to indicate the level of publication. Where the letter (A, B, etc.) alone is not sufficient to provide certainty as to the content of the disclosure of the cited document being referenced, the number (e.g. A3) must also be recorded (if known). When the examiner is compiling the Search report, the publication level of the document actually considered and assessed as relevant 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. Publication date (INID Codes) 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 Notes: In the absence of other indications, where documents refer to multiple publication dates, with or without INID code identification, the earlier date should be assumed to apply. Accepted Australian patent documents (i.e. B level documents) may include more than one INID code relating to the date of publication, e.g. INID numbers 43 and 44. In such cases, the correct date of publication of the accepted patent document is the date following the INID number 44 (accompanied by the text ‘Accepted Journal Date’). The date following the INID number 43 should not be taken as the date of publication of the accepted patent document because this date refers to the date of original publication of the corresponding patent application. Patentee or applicant name (INID Codes) 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 filed before September 2012 this is INID 75 or 76. For example: (71) Name(s) of applicant(s) (73) Name(s) of grantee(s) Non-patent literature The name by which a journal or reference work is known and the date of publication (or URL and retrieval date) are critical information items. Therefore examiners must correctly recite these for non-patent literature. The details used when citing non-patent literature must be the same as those recited on the document actually viewed and considered to be relevant . Where a copy of the document cited has been placed on the relevant application folder in COMPASS, the details of the citation should mirror this information (see 6.1.12.5.5 Citation Examples for a non-limiting list of citation formats). Non-English language documents For non-patent literature citations in a language other than English, the original (non-English) reference should be included (wherever technically possible). This is followed by an official translation into English (if one exists and it is available) in round brackets. An ‘official translation’ here means an existing rendering of the original language name or title in English coming from the same source as the citation. It must be useful for identifying and retrieving the relevant document. In case an official translation into English is not available for some elements of the original citation, an informal translation into English for those elements may optionally be provided after all elements of any official translation. Any informal translation should be preceded by the text ‘non-official translation’ (see PCT/GL/ISPE/12 at paragraph 16.78B ). Non-written disclosures Identification of an oral disclosure, use, exhibition or other non-written means of making available to the public should be made according to WIPO Standard ST.14, indicating the earliest date of the disclosure to the public, applying the provisions of WIPO Standard ST.2 where year, month and day are available. This could be the date of a public oral presentation, use or exhibition, or in the case of a private audio or video recording, the date the recording was posted on the Internet (see paragraph 11.22 ). Later dates of disclosure that could be relevant for the disclosure such as the date of publication of written conference proceedings or the date of posting on the Internet of a public event should also be included, along with the date of retrieval for an Internet citation e.g. ‘retrieved on [2010-04-05]’. In the case of an audio or video recording, the examiner could indicate specific sections of the timeline of the recording, e.g. ‘from 01:22 to 01:56’. In the case of documents referring to an earlier oral disclosure, use, exhibition or other means, such as conference proceedings or a posting on the Internet (citation category ‘O’, followed by ‘X’, ‘Y’ or ‘A’ as appropriate), the details of the earlier disclosure should be preferably provided first, followed by the document that refers to the prior disclosure (see 6.1.12.5.5 Citation Examples ). Citing Chemical Abstracts (CAS) Registry Numbers When a CAS Registry Number is cited as the result of an original or additional search, sufficient information should be included in either the Citation Details or the text of an objection, to enable the compound to be identified. For example, the compound may be identified by: its chemical name an examiner-prepared chemical structure (e.g. using ChemDraw) reference to a chemical formula (e.g. compound of formula X wherein R = methyl). An example where the chemical name is included in the Citation Details is provided below: D1 CAS Registry Number 780007-06-9; STN Entry Date 14 November 2004; 1-Piperidinebutanoic acid, 4-[(4-methoxyphenyl)phenylmethylene] Category: X Claims: 1 – 10 Document found in an original search. See attached Search Information Statement for details. Note: A copy of each document cited in official IP Australia examination and search reports , including any document having relevance categorised ‘A’, must be stored on the relevant application folder in COMPASS, for future reference. The copy of a cited document stored on the relevant application folder in COMPASS is regarded as determinative of the content of the cited document, the number format and therefore the detail to be included in citation details.