IPA patent 6.5.4-search-procedure — IP Australia Patent Manual of Practice and Procedure – 6.5.4 Search Procedure

Also in this Chapter: 6.5.1 Introduction to Thai Applications 6.5.2 Completion Time and Priority 6.5.3 Initial Processing ​​​​​​​ 6.5.5 Search Report 6.5.6 Final Processing 6.5.7 Annex A - Thai Search Report Related Chapters: 4.6 Recording the Search Details 6.2.1 Procedural Outline - International Type Search Annex D - Search Information Statement Annex E - Completed Invitation to Pay Additional Fees Annex F - When to Complete the Search Information Statement (SIS) RIO - Bilateral Application Tasks RIO - Processing Bilateral Application Tasks RIO - COMPASS On this page Introduction Workflow Modifications to the search Classification Unity of invention requirements No meaningful search See also Recording search details Introduction The agreement between IP Australia and the Department of Intellectual Property of Thailand stipulates that IP Australia will discover as much of the relevant prior art as our facilities permit and will, in any case, consult the documents specified in the PCT minimum documentation in accordance with Rule 34 of the Regulations under the PCT. Workflow The search examiner will: Classify the invention. Indicate a proposed search, which will be a standard international search. Conduct an international-type search using the procedures set out in 6.2.1 Procedural Outline - International Type Search , but modified as described in ‘Modifications to the search’ below: Download and store all citations relating to the Thai application in the respective International application folder in COMPASS. Modifications to the search Classification The Thai application is treated as though a provisional in that the examiner will determine the classification (see 4.2.1 Patent Classification Systems ). Unity of invention requirements The application has to meet the PCT unity of invention requirements (see 6.1.4 Unity of Invention ). If the application does not meet these requirements, IP Australia shall establish the search report on the parts of the application which relate to the invention first mentioned in the claims (‘main invention’). If there is a lack of unity, then the main invention will be searched and reported on. Examiners should give an indication at checkbox 2 of the first sheet, which is ‘Unity of invention is lacking (See Box II)’, and provide full explanation in Box II, continuing on the extra sheet if necessary. See the completed example in 6.5.7 Annex A - Thai Search Report . For further examples of lack of unity explanations, see the Supplemental Boxes in Annex E - Completed Invitation to Pay Additional Fees . There is no requirement that either the Thai office or the applicant are advised of lack of unity other than in the search report. In particular, no invitation to pay additional fees will be issued. No meaningful search There may be instances where a meaningful search cannot be made, such as when there are multiple inventions or obscure claims. The search examiner, in consultation with a senior examiner, should write to the Thai Office explaining precisely the nature of the problem and requesting a proposed course of action to it. Examples of proposed course of action include, to more clearly define the invention or to limit the scope of the claim. The letter should be forwarded to the PCT Unit (together with the case file) for despatch. This may result in a justifiable delay to the search completion date. See also For more information on International and International-type searching, see 6.1 International Searching and 6.2 International Type Searching . Recording search details All details of the search must be recorded on the Search Information Statement (SIS), which is generated by the SmartIQ (Intelledox) template. For information on when a SIS must be completed, see Annex F - When to Complete the Search Information Statement (SIS) . Further information on the SIS, including instructions for its completion and use, are provided at 4.6 Recording the Search Details and Annex D - Search Information Statement .