IPA patent 6.1.9-basis-of-the-search — IP Australia Patent Manual of Practice and Procedure – 6.1.9 Basis of the Search

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 6.1.10 Non-Patent Literature 6.1.11 Search Procedure 6.1.12 Search Report and Notification Form Completion 6.1.13 Reissued, Amended or Corrected ISRs and ISOs 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: Regulations Under the PCT: Rule 4.18 Statement of Incorporation by Reference Rule 20.5 Missing Parts Rule 20.5bis(c) Erroneously Filed Elements and Parts Rule 20.6 Confirmation of Incorporation by Reference of Elements and Parts PCT ISPE Guidelines: Paragraphs 15.10 – 15.11C Basis of the Search Related Chapters: 6.1.12.5.2 Citation Category 6.1.17 Rule 91 Obvious Mistakes in Documents 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs RIO - Processing PCT Tasks - Box I On this page Introduction Sheets marked with ‘Incorporated by Reference’ Sheets marked with ‘Not to be Considered’ Sheets marked with ‘Erroneously Filed’ Introduction There is no right to amend the application until after the international search has been established. Consequently, the international search must be carried out on the basis of the search copy of the application (as transmitted to the International Searching Authority by the Receiving Office). The exception is that obvious mistakes may be corrected (see 6.1.17 Rule 91 Obvious Mistakes in Documents and PCT/GL/ISPE/12 at paragraph 15.10 ). Sheets marked with ‘Incorporated by Reference’ The application may contain later filed pages marked ‘INCORPORATED BY REFERENCE (Rule 20.6)’. These are pages containing missing parts or corrections to elements/parts which have been incorporated by reference from the priority document under Rules 4.18 and 20.6 by the Receiving Office. Such pages should be considered as originally filed and should be indicated so on the forms. In the case the Examiner notices that the incorporated elements or parts were not completely contained in the priority document, then they need to include a corresponding remark in item 5 of Box I of the International Search Opinion (ISO) (see 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs ). In such a case, the search report may further include additional documents (‘L’) which would be relevant if a re-dating of the application would be made (see PCT/GL/ISPE/12 at paragraph 15.11 and 6.1.12.5.2 Citation Category ). If the examiner receives from the Receiving Office a notification of later filed pages after the examiner has begun to draw up the International Search Report (ISR), the examiner should still take these later filed pages into account. This may be pages that are either: Marked ‘INCORPORATED BY REFERENCE (Rule 20.6)’ as described above Otherwise included in the international application following a change of the international filing date under Rule 20.5(c) or 20.5 bis (c) For the above scenario, PCT/GL/ISPE/12, Paragraphs 15.11A – 15.11C provide for the examiner to issue an invitation to pay additional fees. However, this fee is not currently included in Australian Government’s International Searching Authority agreement with WIPO. Therefore, the examiner is not to issue an invitation to pay fees. If the agreement changes, this page will be updated. Sheets marked with ‘Not to be Considered’ The file of the application may also contain sheets stamped: NOT TO BE CONSIDERED (RULE 20.5(e)) NOT TO BE CONSIDERED (RULE 20.5 bis (e)) NOT TO BE CONSIDERED (RULE 20.7) This means that these sheets were not allowed by the Receiving Office under the relevant provisions (for formal or substantive reasons) or that the applicant has withdrawn those parts in order to avoid re-dating of the application. Such sheets therefore do not belong to the application documents and should be ignored for search and examination (see PCT/GL/ISPE/12 at paragraph 15.11 ). Sheets marked with ‘Erroneously Filed’ The application may also contain sheets stamped ‘ERRONEOUSLY FILED (RULE 20.5 bis )’. These are the sheets that were erroneously filed by the applicant and have been superseded by the sheets marked ‘INCORPORATED BY REFERENCE (Rule 20.6)’. They remain in the international application pursuant to Rule 20.5 bis (d) and usually need not be taken into account for search and examination.