IPA patent 6.2.2-introduction---international-type-searching — IP Australia Patent Manual of Practice and Procedure – 6.2.2 Introduction - International Type Searching

Also in this Chapter: 6.2.1 Procedural Outline International Type Search Report ​​​​​​​ 6.2.3 Classification and Search Indication 6.2.4 Unity of Invention 6.2.5 Subjects to be Excluded from the Search 6.2.6 Obscurities, Inconsistencies or Contradictions 6.2.7 Abstract and Title 6.2.8 Search Report 6.2.9 Completing Search Report and Opinion Form 6.2.10 Annexes Key Legislation: Patent Cooperation Treaty (PCT): Article 15(5) The International Search Patents Regulations: Regulation 3.14A Request for international-type search relating to provisional application Schedule 7 Fees ​​​​​​​PCT ISPE Guidelines: Paragraph 2.22 International-Type Searches ​​​​​​​ Related Chapters: 3.2 Customer Service Charter (Timeliness Standards) 6.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings RIO - Processing Article 15(5) International Type Search Tasks On this page Introduction Timeframes and payments Applicant timeframes Examiner timeframes Note: From 15 April 2013 applicants will only be able to file a request for an Article 15(5) search on a provisional application. A search report and opinion must be provided for all Article 15(5) search requests filed on or after 1 July 2012. However, for requests filed before 1 July 2012, only a search report will need to be provided. Introduction 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. It follows that the purpose of an Article 15(5) search report is to provide the prospective PCT applicant with a list of prior art documents relevant to the field of technology of the invention as broadly defined in claims or a search statement. This information assists the applicant in assessing the patentability prospects of subject matter contained within a national application. International-type searches are by definition similar to PCT international searches and similar considerations apply (see PCT/GL/ISPE/12 at paragraph 2.22 ). Article 15(5)(a) states: 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. Applicant timeframes The Patents Act 1990 provides authority for such a search to be carried out. Applicants must request a search within 10 months of making the application (see Regulation 3.14A ). The fee payable is specified in Schedule 7 Part 2 item Schedule 7 Part 2 item 236 . 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. This 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 Customer Experience Group (CEG) to the Assistant General Manager – Policy and Technical for consideration. Note :When the situation arises that a request is made after 10 months, the PCT Unit will contact the applicant or 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 Article 15(5) task will be sent to the relevant examination section. Examiner timeframes Examiners should take all reasonable measures 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 6 weeks of request date and have the highest priority of all international searching (see 3.2 Customer Service Charter (Timeliness Standards) for apology time limits). 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. Where nucleotide and/or amino acid sequence listings are present, the same considerations given in 6.1.18.1 Background Nucleotide and/Or Amino Acid Sequence Listings apply.