IPA patent 6.1.13-reissued-amended-or-corrected-isrs-and-isos — IP Australia Patent Manual of Practice and Procedure – 6.1.13 Reissued, Amended or Corrected ISRs and ISOs

Also in this Chapter: 6.1.1 Procedural Outline - PCT International Search 6.1.2 Introduction - International Searching 6.1.3 Search Allocation and Preliminary Classification 6.1.4 Unity of Invention 6.1.5 Abstract and Title 6.1.6 Subjects to be Excluded from the Search 6.1.7 Claim Interpretation, Broad Claims, PCT Articles 5 and 6 6.1.8 Search Strategy 6.1.9 Basis of the Search 6.1.10 Non-Patent Literature 6.1.11 Search Procedure 6.1.12 Search Report and Notification Form Completion 6.1.14 Priority Document 6.1.15 Foreign Patent Search Aids and Documentation 6.1.16 Assistance with Foreign Languages 6.1.17 Rule 91 Obvious Mistakes in Documents 6.1.18 Nucleotide and/or Amino Acid Sequence Listings 6.1.19 Annexes Key Legislation: PCT ISPE Guidelines: para 15.74 Amended International Search Reports Related Chapters: 6.1.8.2 The Three Person Team (3PT) 6.1.12.1 Background Search Report and Notification Form Completion RIO - Reissuing Corrected or Amended PCT Reports (ISO, ISR, and SIS) RIO - Examiner Workflow - Quality Improvement (QI) Task On this page Introduction When to issue a corrected or amended report Correcting only the ISR or ISO Carrying out a new search Timeframes for issuing an amended report Initiating corrected report workflows Introduction On rare occasions it will be necessary to replace a previously issued International Search Report (ISR) and/or International Search Opinion (ISO). For example, this can arise if: A further relevant document is discovered. An error has been made in the transcribing of details into the report. When to issue a corrected or amended report Where the error or omission is not one which would have procedurally disadvantaged the applicant, the examiner should issue a ‘Corrected’ report bearing the same date of establishment and same date of issue (mailing) as the original report. Examples of this situation include errors such as an incorrect IPC mark or a misspelling of the applicant’s name. By contrast, the examiner should issue an ‘Amended’ 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. For example, this can arise when a new citation is identified or a citation whose number has been misrecorded. 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 (or a citation has been missed) thus requiring a further search and/or opinion 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 In this situation, the examiner should issue an ‘Amended’ report having both (see PCT/GL/ISPE/12 at paragraph 15.74 ): the actual date of establishment the actual date of issue (mailing) Correcting only the ISR or ISO 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. However, reissuing or correction of one will often require reflection in the other, for example, to ensure that any change to the deemed date of mailing was properly reflected as one or the same in both documents. Carrying out a new search 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. Otherwise, another examiner will need to take carriage of the case. The search copy file is retrieved and either (if practical), the original 3-person team or (if not practical) a new 3-person team determines the need for an amended search or the relevance of the later search (see 6.1.8.2 The Three Person Team (3PT) ). If there is a need for a further search as above, then the 3-person team determines the appropriate search strategy and proceeds according to the procedure in a normal international search (see 6.1.12.1 Background Search Report and Notification Form Completion ). 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. Timeframes for issuing an amended report If the task above is completed in sufficient time for the amended report to arrive at the International Bureau (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 6.1.12.1 Background 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. The examiner may also need to issue an amended ISO with the amended search report. Initiating corrected report workflows Corrected reports can be initiated in RIO through the ‘Corrected report’ option in the ‘View IP Right’ of the application. See guidance under RIO - Reissuing Corrected or Amended PCT Reports (ISO, ISR, and SIS ) in the Patents Manual. Information about issuing corrective actions as a result of a quality review finding can be found in the Patents Manual (see Examiner workflow - Quality improvement (QI) task).