IPA patent 6.2.9-completing-search-report-and-opinion-form — IP Australia Patent Manual of Practice and Procedure – 6.2.9 Completing Search Report and Opinion Form

Also in this Chapter: 6.2.1 Procedural Outline - International Type Search 6.2.2 Introduction - International Type Searching 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 6.2.10 Annexes Key Legislation: Regulations under the PCT: Rule 6.2 References to Other Parts of the International Application Related Chapters: 6.1.7 Claim Interpretation, Broad Claims, PCT Articles 5 and 6 6.1.12.3 General Details - ISR 6.1.12.4 Fields Searched - ISR 6.1.12.5 Documents Considered to be Relevant 6.1.12.5.2 Citation Category 6.2.4 Unity of Invention 6.2.5 Subjects to be Excluded from the Search 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability 6.3.8.7 Box VI Certain Documents Cited 6.3.8.8 Box VII Certain Defects 6.3.8.9 Box VIII Certain Observations 6.2.10 Annex C - Blank Article 15(5) Search Report RIO - Processing Article 15(5) Tasks RIO - Request for Sequence listing RIO - Corrected Article 15(5) reports On this page Forms Front Sheet Bibliographic Information Total number of sheets Item 1a Items 1b and 2 – 4 Box No. I Nucleotide and/or amino acid sequence Box No. II Claims found unsearchable Box No. III Lack of Unity Second Sheet of the Search Report Box A Classification of Subject Matter Box B Fields Searched Box C Documents Considered to be Relevant Written Opinion Supplemental Box Search statement Continuation of Box III Other Observations Electronic data base consulted during the International Type Search (continuation) Corrected Article 15(5) report Forms The Search Report and Opinion are completed using RIO. See the RIO Manual page on International Type Searches for further instructions. A blank Article 15(5) search report form is shown in Annex C . Bibliographic Information All bibliographic information for the International Type Search will be automatically entered on the front sheet including: National Application No. Country or Office of Filing Applicant’s or Agent’s file reference Filing date Priority Date Applicant Total number of sheets Upon completion of the report, the number of sheets will be automatically calculated and entered on the front page in the relevant place. Item 1a If the search was based on claims, cross the upper box under item 1a and enter claim numbers. If the search was based on a search statement filed by the applicant, cross the lower box under item 1a and provide the search statement in a Supplemental Box. Items 1b and 2 – 4 Cross boxes as applicable. Box No. I Nucleotide and/or amino acid sequence See ‘Nucleotide and/or amino acid sequence listings’ in 6.1.12.3 General Details . If a sequence listing has not been filed by the applicant, see RIO Request for Sequence listing on how to prepare a request for Sequence listing. Box No. II Claims found unsearchable See: Subjects to be excluded from the search ( 6.2.5 Subjects to be Excluded from the Search ) Broad claims or multitudinous claims ( 6.1.7 Claim Interpretation, Broad Claims, PCT Articles 5 and 6 ) Omnibus Claims (per Rule 6.2(a) and 6.3.8.8 Box VII Certain Defects ) Box No. III Lack of Unity The International Type Search report is completed so as to clearly establish the extent of the search actually performed. Where lack of unity has been found, Box 3 of the first sheet is to be checked and Box III of the report is to be completed. This is irrespective of whether a letter to the applicant was written advising that the application did not comply with the requirements of unity of invention (see 6.2.4 Unity of Invention ). The search report must indicate the separate inventions present in the national application, whether additional search fees were requested and paid, and which inventions were searched. Box A Classification of Subject Matter See ‘Classification of Subject Matter: IPC Symbols’ in 6.1.12.3 General Details - ISR . Box B Fields Searched See 6.1.12.4 Fields Searched - ISR . If the text does not fit in the ‘Electronic data base’ box, RIO will automatically move the text to a supplemental sheet. All the text will be moved to the supplemental box when the report is generated (see 6.2.10 Annex C - Blank International Type Search Report ). Box C Documents Considered to be Relevant See 6.1.12.5 Documents Considered to be Relevant . Written Opinion The opinion must include the same level of details with respect to the cited documents as in the: International Search Opinion (ISO), International Preliminary Examination Opinion (IPEO) International Preliminary Report on Patentability Chapter 2 (IPRPII) See 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability , and 6.3.8.7 Box VI Certain Documents Cited . The International Type Search and Opinion Form does not include Box VI (Certain Documents Cited) as found in ISO/IPEO/IPRPII. Therefore, any relevant P and E category documents will need be discussed under the headings Novelty and/or Inventive Step (as applicable) under Citations and Explanations (see 6.1.12.5.2 Citation Category ). If the search was based on a search statement provided by the applicant, then the following items should be left blank: International Type Search report: ‘Relevant to claim No.’ under Box ‘C. DOCUMENTS CONSIDERED TO BE RELEVANT’ Written Opinion: ‘STATEMENT’ under ‘Reasoned statement with regard to novelty, inventive step or industrial applicability; …’ Search statement If the search was based on a search statement filed by the applicant, the search statement is provided here. Continuation of Box III Where lack of unity has been found, provide the details of separate inventions present in the national application. Other Observations Any defects in the form or content of the national application will be noted here. For matter that may be required to be noted here see 6.3.8.8 Box VII Certain Defects . Specific issues of clarity of claims, description and drawings and whether the claims are fully supported by the description will also be noted here, see 6.3.8.9 Box VIII Certain Observations . Electronic data base consulted during the International Type Search (continuation) If the text does not fit in the ‘Electronic database’ box, RIO will automatically move all the text here. A blank Article 15(5) search report form is shown in Annex C . The Search Report and Opinion are completed using RIO. See the RIO Manual page on International Type Searches for further instructions. Corrected Article 15(5) report There may be situations when an examiner needs to send out a subsequent (‘corrected’) Article 15(5) International Type Search report. This could be, for example, due to a post-process quality review or the examiner noticing an error in the issued report. RIO guidance is provided in RIO - Corrected Article 15(5) reports.