IPA patent 6.4.5-search-report-and-advisory-opinion — IP Australia Patent Manual of Practice and Procedure – 6.4.5 Search Report and Advisory Opinion

Also in this Chapter: 6.4.1 Introduction 6.4.2 Completion Time and Priority 6.4.3 Initial Processing 6.4.4 Search Procedure ​​​​​​​ 6.4.6 Further Advisory Opinion 6.4.7 Final Processing 6.4.8 Annexes Key Legislation:​​​​​​​ Patents Act: Section 18(1) Patentable Inventions Related Chapters: 6.4.7 Final Processing RIO - Bilateral Application Tasks RIO - Processing Bilateral Application Tasks On this page Introduction Contents of the search report and advisory opinion Patentability Novelty Level of detail Patentability Novelty More than one invention No meaningful search possible Finalising the report Introduction On completing the search, the examiner will complete a Search Report and Advisory Opinion form (see completed example at 6.4.8.1 Annex A - Fiji Search Report 1 ). The report and opinion are completely of an advisory nature. Contents of the search report and advisory opinion The report and opinion will be based on Australian patent law concepts. It should be clearly stated in the opinion that the subject of the opinion is the invention as defined by the search statement (which may draw on suitable claims, if any). Patentability The opinion on patentability will be limited to the manner of manufacture consideration of Section 18(1)(a). This limitation should be clearly stated in the written opinion using the expression ‘...patentable to the extent that it satisfies Section 18(1)(a) of the Patents Act 1990’. See item 1 of 6.4.8.1 Annex A - Fiji Search Report 1 . Novelty The opinion on novelty will be based on the considerations for Section 18(1)(b)(i) of the Patents Act 1990. This should also be clearly stated in the written opinion using the expression ‘...novel, as required by Section 18(1)(b)(i) of Patents Act 1990’. See item 2 of 6.4.8.1 Annex A - Fiji Search Report 1 . It is important to include the essence of both expressions above in the opinion so that the Fijian Administrator-General, who has a copy of the Australian Patents Act 1990, clearly understands the scope of the opinion. Level of detail In preparing the opinion it will be necessary for examiners to fully explain each objection since the Fijian Administrator-General may not have ready access to other sources of technological or patent law advice. Examiners should avoid quoting case law, and instead, provide a clear statement of the principles involved and how they apply to the present situation. Patentability Where there is no objection to patentability, a simple statement to this effect is sufficient. This is expected in most cases. Where there is an objection to patentability, a full explanation is required. Novelty Where there is no novelty objection, sufficient explanation should be given for an understanding of why novelty does exist. For example, this can be done by showing the integer of a combination of the present invention not found in the closest prior art or a discussion of other differences. Where there is a novelty objection, the level of explanation required is exemplified in the completed examples of the annexes. More than one invention If more than one invention is present, this will be identified in the search statement and in the opinion. Citations found, if any, in each search will be discussed in relation to each relevant invention. No meaningful search possible Where the subject matter or the nature of the application is such that it is not possible to arrive at a meaningful search statement or to conduct a meaningful search, then this will be fully explained in the opinion. Finalising the report If the search examiner is not an authorized officer, upon completing the report and opinion form, the search file is referred to the responsible officer for supervision. The search examiner and/or the authorised officer will closely check the report for any errors before clicking SUBMIT in Intelledox for the template to be automatically sent to the PCT Unit for final processing (see 6.4.7 Final Processing ). There is no requirement for reports to be signed. To avoid any confusion in the mind of the applicant resulting from differing practices, reports should not be signed. A Search Information Statement (SIS) will be generated by the template in Intelledox.