Section 17: Search
Sections (17.01 - 17.121) last updated: January 2019.
This section sets out the conditions necessary for an application to proceed to search, makes provision for carrying out the search and for reporting the results, provides that in some instances a search may not be performed or may not be completed, specifies how the search shall be conducted in the case of an application which relates to more than one invention, and authorises the performance of supplementary searches. Rule 27 is particularly relevant to this Section.
Information security: a reminder
s.118(2) is also relevant.
The initial search at least for UK patent applications is carried out before A publication, and so most of the guidance in this section relates to pre-publication actions. Before A publication, the application, the search report, and any other documents or information concerning the content of the application (other than that prescribed under s.118(3)) must be protected and must not be communicated to anyone outside the Office other than the applicant or his designated representative – see 118.16-118.16.1 for further guidance on these issues.
More generally, in all cases, whether pre-or post-publication, formalities examiners should ensure that any communications (including telephone conversations) are directed to the intended recipient.
[Where correspondence from the Office is reported as never having arrived at its intended destination, or is reported as being misdirected or delayed, this fact should be recorded by sending a minute to the relevant formalities group with any relevant details. Use of r.111 to extend a deadline may only be authorised by the relevant Head of Administration see 123.47.1.]
|The comptroller shall refer an application for a patent to an examiner for search if, and only if
(a) the comptroller has referred the application to an examiner for preliminary examination under section 15A(1) above;
(b) the application has not been withdrawn or treated as withdrawn;
(c) before the end of the prescribed period
(i) the applicant makes a request to the Patent Office in the prescribed form for a search; and
(ii) the fee prescribed for the search (“the search fee”) is paid;
(d) the application includes
(i) a description of the invention for which a patent is sought; and
(ii) one or more claims; and
(e) the description and each of the claims comply with the requirements of the rules as to language.
r.27(1), r.22(2) is also relevant.
The request for search must be made on Patents Form 9A; the time r.22(2) allowed for filing this is prescribed in r.22(7), (see also 15.52 - 15.53) Any further search under s.17(6) or supplementary search under s.17(8) on an application should be requested on Patents Form 9 (for applications filed before 1 January 2005) or Form 9A (for applications filed after this date).
Before the application is sent to an examiner for search the requirements of s.17(1) must have been met, this includes the payment of any excess claims fees. The excess claims fee is part of the search fee therefore it follows that if the excess claims fee is not paid, the Patents Form 9A is considered not to have been filed.
[If any application does not meet the requirements of this section, on payment of the Application Fee, these will be requested in a preliminary examination report issued under s.15A by the Formalities Examiner (see 15A.20) Once the requirements of section 17(1) have been met, the Formalities Examiner will send the application to the appropriate examining group via the ESO.
[The application should be inspected immediately upon receipt in the examining group to ensure that it has been correctly allocated. Any case found to be incorrectly allocated should be transferred as quickly as possible. This should be done by direct enquiry on the part of the Deputy Director or of the search examiner in charge of the heading to which the case has been allocated. Difficult re-allocations should be settled between Deputy Directors. When transfer has been agreed to a heading in another examining group, a minute titled “ALLOCATED [HEADING] [GROUP]”, should be added to the dossier and the appropriate PDAX message should be sent to the Examination Support Officer in the search examiner’s group. The Examination Support Officer will then send a PDAX message to the Examination Support Officer responsible for the correct heading. Since it is for the search examiner to decide the subject matter to be searched, the dossier minute should indicate which headings have been considered and the subject matter for which search is or is not appropriate.]
[Private applicant cases]
[Applications from private applicants are typically dealt with by the Private Applicant Unit (PAU). Unless the application has been identified as a potential ‘no case’ (see 15A.03), most applications from private applicants will be sent to PAU after preliminary examination in the normal way. PAU examiners will consider whether the application is insufficient under s.14(3), or clearly unpatentable under s.1(1)(c) or (d) because it lacks industrial applicability or falls within one of the excluded categories. If the PAU examiner considers that the application has no patentable content for one of these reasons, then the applicant should be sent a letter under the action before search (ABS), or action before combined search and examination (ABCSE), procedure described in full at 17.94.5-9, informing him of the shortcomings, and giving him the option to withdraw (with a refund of the search fee) or continue with the application.
[Otherwise, the PAU examiner will perform a search sufficient to identify documents relevant to novelty and inventive step. If the application contains subject matter that requires specialist knowledge, PAU examiners will consult with the relevant examination group, or transfer the case to that group.
[If the search provides strong evidence of a lack of novelty or inventive step, and combined search and examination has been requested, the PAU examiner may defer the substantive examination and offer the applicant the option of withdrawing their application and receiving a refund of their examination fee.
[Further information on PAU workflow and process can be found in PAU desk notes.]
[If it appears that an invention is not patentable but may be suitable for some other form of protection, care should be exercised in suggesting this to applicants. It is important not to imply that such protection will be obtainable, nor to indicate that thesubject-matter is appropriate to an application for design registration, without first referring the matter to Designs Section. If, e.g.: because of urgency, the opinion of Designs Section is not obtained, then the advice given to the applicant should be in general terms, e.g.: that it may be possible to take advantage of some other form of protection such as that afforded by design registration or copyright; the pamphlet “How to register a design” being enclosed.]
The search should be undertaken as promptly as possible, not only so that the application may be sent for publication in due time (see 16.31) but also so that the applicant can have an early opportunity to consider the search report and any documents cited (see 17.104.1) He will then be in a position to decide whether to take any action, such as the filing of amended claims or withdrawal, before preparations for publication have been completed. Moreover an applicant who files an application either without a declaration of priority or with some of the twelve-month priority period remaining may want to receive the search report in sufficient time to enable him to decide whether to file abroad under the International Convention.
[The aim should be for a search to be done as soon as possible. Where a backlog of work begins to build up a search examiner should ensure that his Deputy Director is made aware of the situation. The Deputy Director should make it one of his primary objectives to ensure that the work of searching is fairly and reasonably distributed among the members of his group.]
If the applicant has requested for an accelerated search to be performed, this should have been marked clearly to ensure prompt action is taken. Requests for acceleration should be in writing, and may be made electronically using the Office’s online patent filing services (as a covering letter). It is possible for an examiner to exercise discretion to accept an acceleration request by email; however this practice should not be encouraged. A request for an accelerated search, examination or CSE should be allowed if an adequate case specific reason is given; requests giving no (or inadequate) reasons should be refused. Where requests for accelerated search and publication are made at the same time, but the request for accelerated search is refused, the request for accelerated publication should also be refused. Once search has been completed in the usual timescales, the applicant may again request accelerated publication. Awareness of a potential infringer, a need for a faster processing to secure an investor, or a need for a granted patent in order to subsequently request accelerated processing under the Patent Prosecution Highway (PPH) at another office (see 18.07.1) for details of PPH processing at this Office) are likely to be accepted as adequate reasons for acceleration. These reasons are also set out in paragraph 6.2 of the Patents Fast Grant Guidance. In addition, where the applicant requests acceleration in order to take advantage of the Patent Box, the applicant should explain how a delay in grant would have a significant cash flow impact because of its effect on eligibility for the Patent Box; however, detailed financial records are not normally required. (A significant cash flow impact would be one which might affect solvency of the company or its ability to obtain significant financing or to continue with investment or research programmes). For Green Channel requests, the applicant must state in writing which action(s) they wish to accelerate, and provide an appropriate explanation of how their application relates to a “green” or environmentally-friendly technology. Examiners should not conduct any detailed investigation into such Green Channel explanations, but should refuse Green Channel requests if they are clearly unfounded, for example if the application relates to a perpetual motion machine.
What constitutes an adequate reason for acceleration may depend, in part, on the applicant’s actions. For example, any delay in filing the Form 9A may be taken into account, particularly if acceleration is being requested in order to obtain a search report before the end of the priority year, and filing a timely Form 9A earlier in the year would have achieved this. Where search and examination would normally be combined, similar considerations should be made when deciding whether to allow accelerated treatment, and if this is acceded to, both the search and examination of the application should be performed at the same time. The applicant should always be informed as soon as possible whether the request has been accepted or refused, and a record of this decision and its reasons should be placed on the dossier. If the request has been accepted, the search (or combined search and examination) report should be issued in a timescale which is in line with any existing Agency targets. If the search/CSE report is itself issued immediately then there is no need to send a separate acknowledgement, but an indication should be included in the covering letter to confirm that processing has been accelerated. It should be assumed, unless an explicit request is made, that accelerated publication is not required. A regular Notice to this effect appears in the Journal. (See 18.07.3) concerning a request for confidentiality relating to accelerated processing of an application.)
[A case on which accelerated search has been requested should be identified by the appropriate dossier cover label and an acceleration PDAX message. A GREEN CHANNEL label should also be added to the dossier cover where the acceleration request is under the Green Channel, and this should be recorded on COPS using the function Record Green Channel Patent Application (REC GRE). The examiner in charge of the classification heading concerned may decide whether to allow such requests]
A request for refund of the search fee is normally acceded to if it is received before a report under s.17(5) has been issued. This refund is a matter of discretion; it is not a right. Where a refund is requested after an ABS letter has been issued see 17.94.9, and see 17.96 where a refund is requested after the issue of a report under s.17(5)(b).
[The request should be dealt with by the formalities group; if the application has already been sent to an examining group the group should be informed immediately. A search report should not be issued after receipt of a request for a refund, even if the search has already been performed.]
[Sections 17(2) and 17(3) Repealed]
These subsections which covered preliminary examination of an application ceased to have effect when the Regulatory Reform (Patents) Order 2004 (S.I. 2004 No. 2357) came into force on 1 January 2005. For applications filed after this date, preliminary examination is covered by s.15A. For applications filed before 1 January 2005, preliminary examination is still performed under sections 17(2) and 17(3). The procedure for preliminary examination is described in 15A.01
17.08 to 17.29 [deleted]
|Subject to subsections (5) and (6) below, on a search requested under this section, the examiner shall make such investigation as in his opinion is reasonably practicable and necessary for him to identify the documents which he thinks will be needed to decide, on a substantive examination under section 18 below, whether the invention for which a patent is sought is new and involves an inventive step.|
The search examiner must therefore put himself in the position of the substantive examiner and consider what kind of evidence he would require in order to make an objection of lack of novelty or inventive step (see also s.3). At the same time he may also need, in order to carry out the search, to come to an opinion on such matters as clarity of the claims and unity of invention. Also, although the search under s.17(4) is concerned solely with providing evidence touching on whether the invention satisfies the conditions for patentability set out in s.1(1)(a) and (b), it may in some cases be necessary at this stage for the search examiner to form an opinion as to whether the invention is excluded from patentability on other grounds. The search examiner should however act on these opinions only to the extent that this is necessary in order to carry out the search (but see 17.67, 17.94-17.98.1). Views formed at this stage do not bind the substantive examiner.
It is not possible, given the wide variation in nature and scope of protection sought in different applications, the great variety of technical subjects and the wide divergence between classification systems in different subject-matter areas, to give more than general guidance as to how the search is to be performed. The search examiner is required to make “such investigation as in his opinion is reasonably practical and necessary”, and while what is set out in the following paragraphs will apply to most applications, an unusual case may require an unconventional approach.
Preparing for the search
Assessing the invention
In order to carry out his statutory duty the search examiner must read as much of the specification as is necessary to obtain a clear understanding of the essential nature of the invention. The main claim itself may give a guide to this, particularly if it is in the two-part form prescribed by Rule 43(1) EPC and Rule 6.3 PCT, with a preamble setting out the state of the art followed by a statement of what characterises the invention. (This type of claim is also sometimes referred to as the Germanic form of claim or, in the US, a Jepson claim). A discussion in the specification of the prior art and/or of the problem to be solved by the invention may also provide, in conjunction with the main claim, a good guide to the essential nature of the invention. Neither the search examiner nor the substantive examiner is however bound to accept the applicant’s assessment of what constitutes the inventive step.
Where there is no discussion of the prior art in the specification the search examiner will have to rely on his own knowledge to form an opinion as to what the invention is. If he is unable to do this a preliminary search may be necessary before the nature of the invention can be established with reasonable certainty.
The extent to which it is necessary to read the description and the dependent claims will therefore depend on the case. Although the search examiner need not study all the details of the description, he should consider them to the extent that this is necessary to understand the workings of the invention, the problem to be solved, the way in which this solution is arrived at, and whether all of the features specified in the main claim as characterising the invention are in fact technically essential in the sense that the invention could not be performed without them, or whether some could, without ingenuity, be replaced by equivalents or be omitted altogether (see 14.114-14.116.2) It is also necessary to establish whether there is unity of invention (see 14.157-14.168), particularly where there are two or more independent claims but see 14.164; if there is not unity the search must be directed to the first invention claimed (see 17.106 and 17.107). See 19.23-19.26 for practice relating to trade marks in patent specifications.
For cases where the original claims were filed after the filing date of the application, the search examiner should also make a prima facie judgement of whether they are supported by the description. If support is clearly lacking (e.g. the claims include additional features not present in the description, or the scope of the claims is broader than the original teaching in the description), amendment will in due course be necessary to comply with s.14(5)(c) (see 14.145). The examiner should therefore direct his search to what the claim might reasonably be expected to cover after amendment (see 17.36). It is essential that this is drawn to the applicant’s attention at the search stage (see 17.83.2) in order for the applicant to decide how he wishes to proceed, since this defect may have serious consequences if significant amounts of technical disclosure are unsupported.
[A minute should be placed on the dossier to state whether late-filed claims are supported or not. If unsupported, the internal search report form should make clear if/how the search has been restricted. Where the claims contain additional features not in the original description, clause SC5 (at search stage) or SC6 (at CS&E) should be used. Private applicant versions of both these clauses are available (SC5PA and SC6PA).]
r.31(5)(a) is also relevant.
The applicant is allowed to amend the specification with the comptroller’s s.117(1) consent before being informed of the search report, although only corrections under s.117(1) or amendments to the claims will be published in the A specification (see 16.20-16.23).
When amendments are proposed before the search, the search examiner should consider their allowability, having regard to ss. 14(3), 14(5) and 76, and consent to those found allowable. Where relevant, an allowable amendment should be taken into account in determining the search strategy. If, during combined search and examination, a proposed amendment is found not to be allowable but would not, in any event, affect the search strategy, the amendment should be refused and the applicant advised accordingly, with reasons. Where search only is being undertaken and either it is impracticable for the search examiner to determine the allowability of a proposed amendment, or he considers that it is not allowable, consent should be withheld and the applicant advised that, pending consideration of the amendment at the examination stage, the amendment will be treated as a voluntary amendment filed under r.31(3) on the date of issue of the search report (see 19.15-19.19). If the proposed amendment is not allowable and would have affected the search strategy substantially, consideration should be given to consulting the applicant to determine whether the search should proceed in respect of the invention claimed in the application as filed. Amendments filed before A publication and unable to be published in the A specification will be incorporated in the specification and laid open to public inspection after A publication.
[The appropriate version of SC1 will usually serve to advise an applicant that consent has been given under r.31(5)(a) to an amendment filed before issue of the search report. Where search only is being undertaken and consent to an amendment filed before issue of the search report has been withheld, the other version of SC1 may be used to inform the applicant that the amendment will be treated as a voluntary amendment filed under r.31(3) and that it will be considered later at the examination stage.
[Purported claims which cannot be regarded as claims within the meaning of s.14 (eg claims to a sum of money), or claims which have clearly been filed on the wrong case may be replaced and if such replacement claims are filed within the prescribed period (see 15.50), they may be regarded as original claims for the purposes of the search.]
Matter to be searched for
The search should ideally cover all the subject-matter to which the claims are directed, or to which they might reasonably be expected to be directed after amendment (see also 17.34.1 and 17.83.2). On the other hand the search must be limited by what is practicable and reasonable. The completeness of any search is limited by the inevitable imperfections of any classification system and its implementation, and the vagaries of search words, and a complete search may not be justified, bearing in mind that the cost must be kept within reasonable bounds. The search examiner should therefore do his best within the time that is reasonably available to minimise the likelihood of failing to find existing highly relevant documents.
s.125 is also relevant.
Although sometimes the subject-matter to be searched for will be based on what is defined in claim 1, as interpreted with due regard to the description (see 17.34), there are many instances in which a somewhat broader search will be necessary. This would be the case if there were a later, broader, independent claim linked to it by a single inventive concept, for example if claim 1 were directed to apparatus, defined narrowly, and a later claim to a method, defined more broadly. Also there may be a later claim which is formally dependent on, but is not within the scope of, the main claim (see 14.164), or there may be a specifically described embodiment, or a generalising statement in the description, which is not consistent with claim 1 (see 14.144). It is desirable that account be taken of such matters at the search stage in order to minimise the need for further searching at the substantive examination stage should the main claim be broadened on amendment. Moreover, it will usually be necessary for the matter to be searched for to be broader than claim 1 in some respects in order to cover inventive step as well as novelty (see also 17.50).
If what is claimed constitutes a novel application of what can be shown to be a known technique, material or structure, chosen for properties useful in the claimed field, the search will need to be directed to establishing whether there is anything in the prior art which points towards its use in the field in question, or whether it has been recognised as a generally available option in circumstances where the need for those properties arises. If either of these circumstances applies, or if it can be argued that the technique, material or structure and its properties would form part of the common general knowledge of the skilled person in the field in question, then the relevant disclosure(s) should be cited for lack of inventive step. The onus is then put on the applicant at substantive examination to argue that the skilled person in that field would be unaware of, or have reason to disregard that technique, material or structure.
If all or part of what is claimed is functionally equivalent to that which is known in the particular field, search should be directed to establishing this equivalence, unless it appears to be sufficient to rely on common general knowledge. If however the differences between what is known and what is claimed are matters of design having no functional significance it will normally be sufficient to assume that such differences do not provide a basis for establishing an inventive step, and no extensive search should be made for the non-significant differences.
If the claim is directed to a compound defined by a general chemical formula, the search should primarily be directed to finding compounds falling within the scope of the claim (preferably those described in the worked examples), and secondarily to discovering documents which disclose generic formulae overlapping the generic formula claimed. When citing documents disclosing generic formulae, citations relating to the same purpose as the application being searched should be cited in preference to those where a different use is envisaged.
If an invention is defined by reference to parameters (of a material or composition) which are not usually specified in the documents searched, and also by reference to a method of producing the material or composition, a search for the method per se may suffice. If the claim does not specify a method, reference data may be utilised to identify materials likely to possess the specified parameters, with a search then being made for such materials, and/or a search may be made for disclosures of prior art materials akin to those exemplified in the application and which might reasonably be expected to possess the required properties. Prior disclosures of such likely anticipations should be cited and the onus of distinguishing the invention thus put upon the applicant. The same procedure may be used if difficulties arise with the use of parameters in a method claim. (See also 2.18-2.20) 3.88-3.93 and 14.121.
If the search examiner is of the opinion, after considering the whole specification, that the claims as they stand do not clearly define the invention, when for example because of an inappropriate choice of wording or terminology the claims in fact define something different from what has been described or unwittingly embrace matter which is well known, then the search should primarily be directed to what the search examiner perceives to have been invented. Documents may be cited against the claim as presently worded, but undue time should not be spent in finding “paper citations” which are likely to be rendered irrelevant when the claims are clarified.
No special effort need be made to carry out a complete search in respect of an unduly broad or speculative claim (see 14.152-14.156). The search should be directed to that aspect of the claim which is supported by the description and which it is thought likely will form the subject of the claim if it is amended in response to an objection to its undue breadth. For example if an electrical servosystem is described and the claims also embrace a fluid pressure system, but it is not apparent from the description how a non-electrical system would be made, extension of the search beyond the electrical field would not normally be justified. If it is not possible to predict what is likely to be claimed after amendment or if an unduly broad and speculative claim appears to be merely a device for giving an impression of unity of invention, then the search examiner should use their judgement to decide the best course of action to follow as set out in 17.110.
Acknowledged prior art
If the specification acknowledges specific prior art, identified by document reference, the search examiner should consider the documents referred to, preferably before beginning the search, unless it is reasonably certain from the context that such documents are unlikely to be relevant to the issues of novelty and inventive step. Such declared prior art is often the most relevant available and may render the invention claimed obvious, or even, on occasion, anticipate it. Any such documents considered to be relevant should be reported in the same way as documents found as a result of the search. (See also 17.91)
[Where copies of acknowledged prior art documents are needed, they should be ordered at the first opportunity. However, where it is clear that the delay in obtaining the copies is going to be excessive, the search examiner may perform the search before receiving them. The action taken by the search examiner with regard to such documents and copies thereof should be recorded on the internal search report. If a document subsequently becomes available to the search examiner after issue of the external search report and proves to be relevant, then the search examiner should send a copy of it to the applicant together with SL5 or SL5B, as appropriate.]
If the search examiner is unable to obtain through normal channels a copy of an apparently relevant document he should contact the agent or applicant and make an informal request for a copy. (In the case of a reference to a German Gebrauchsmuster, the abstract (available in the Science Reference Library) should first be consulted). Such a request should still be made by the search examiner even if the search has already been done before the normal channels are exhausted or is likely to have been done before the request is answered. If the agent or applicant is unwilling to comply, or if to wait for him to do so would unduly delay s.16 publication, the matter should not be pursued. A formal request should not be made, nor should a translation of a foreign language document be asked for (see also 18.10) 89B.11. If the document is not available to the search examiner when the application is due to be sent for publication it may be included in the search report if the reference in the specification indicates that the document may be citable.
Documents said to be relevant which are referred to in a letter from the applicant or agent should be dealt with in the same way as prior art referred to in the specification.
Unidentified prior art referred to in the specification which appears to be relevant to the issues of novelty and inventive step should not be included in the search report, although it may be noted on the internal search report and considered at substantive examination (see 18.67)
Using the results of an earlier search
If the application claims priority from an earlier UK application the report of any search carried out on the earlier application should be inspected. (Even if it is merely necessary to update the previous search no refund of the search fee should be made). [It is necessary for the search examiner to be aware of any search performed on the earlier application. Therefore, if such a search has been carried out, the formalities examiner should annotate Form 1 and send the appropriate message to the search examiner. The examiner may import the ISR of the priority case into a dossier. If the earlier ISR is imported, then the examiner should ensure that the earlier ISR document is clearly distinguished from that of the application in question by appending the annotation “ISR of related case”. The copy function can be used to copy it across to the new dossier in which case it will retain its original document code. If no search has been made on the earlier application Form 1 should be annotated accordingly.]
Likewise in the case of a divisional application the search done on the parent application should be consulted, see 15.38. (For refunds in such cases, (see 15.47-49). It may also be useful to inspect the search report of an earlier pertinent application referred to in the specification or found in the course of the search.
Performing the search
When the search examiner is satisfied that he has understood the essential nature of the invention he should draft a statement of the critical matter (search statement), any non-essential limitations in the claims being ignored (see 17.34, 17.36-17.37, 17.42-17.43, 17.53 and 17.57). The statement should as far as practicable be such that if no anticipation of it is found it can confidently be concluded that what is claimed is both new and inventive (see also 17.58). That is, if the critical matter is novel the invention claimed cannot be said to be obvious.
The search for the critical matter should then be made. The search examiner must use his knowledge and experience to formulate a search strategy, deciding which databases or other sources could contain citable documents and establishing the order in which these should be searched, taking into account all available classification systems and suitable search words. This decision depends not only on the technical character of the critical matter (whether corresponding to a broad concept of wide application or whether highly specific in a narrow technical field), but also on the manner in which the search material is organised.
When formulating the search strategy account should be taken both of the likelihood of search in a given area being fruitful and of the amount of effort needed to search that area. Thus search having a low (but finite) chance of success in a particular area may be justified if the search would be short, but not if a disproportionate amount of time would be necessary, and may even be done before a considerably longer but potentially more fruitful search.
If possible, the search statement and search strategy should be determined provisionally before beginning the search. Since the critical matter depends not simply on what is disclosed and claimed but also on its relationship with the state of the art, the search examiner must always be prepared to revise both during the search, and in some cases a preliminary search may be necessary before either can be decided upon.
Field of search
Although any matter (subject to certain specified exceptions), including prior use, which forms part of the state of the art (see s.2) may be cited in support of an argument that an invention is not new or does not involve an inventive step, for the purposes of the investigation under s.17(4) the search examiner is only required to consider documentary evidence. There are no limits as to where the prior disclosure was published. Publication anywhere in the world becomes effective on the date on which it takes place. This publication date must (except in the case of an application forming part of the state of the art by virtue of s.2(3)) be earlier than the priority date of the invention being searched. For search purposes, the priority date is that indicated in accordance with 17.74. In considering internet disclosures, the search examiner should cite any documents which are considered to be highly relevant, even if no publication date can be established or there is a possibility that the document was published later than the priority date of the invention being searched. Such documents should be cited under category X or Y with an accompanying note in the covering letter to say that a ‘publication’ date cannot be established but that the disclosure appears highly relevant and there may well be a related patent application which does form part of the state of the art (see 17.83). When updating the search, the examiner should search for such corresponding patent applications. Where the application in suit has not been published the examiner should not contact the owner or author of any such prior art in an attempt to establish a publication date. Following publication of the application in suit examiners may contact a third party author if they feel such action is appropriate, however consideration should be given to the efficient processing of the application and unnecessary investigation should be avoided. The documentary evidence may also include descriptive matter, published subsequently to the relevant priority date, but indicating that the invention was known before that date. Thus the search report may include a document containing a description of the invention together with a statement that it was used publicly before its priority date or that an oral description thereof was made public, e.g. in a lecture before a learned society, before that date (see 2.27). Non-documentary evidence of prior use should not formally be cited at this stage. However, if the search examiner is aware, either from personal experience or from information from another examiner or from a member of the public (see 21.12-21.13), of an instance of prior use which is apparently destructive of the novelty or inventive step of the invention claimed, all the relevant facts should be communicated to the applicant - provided sufficient circumstantial details of the prior use are available to enable the applicant to make his own independent enquiries. Therefore a vague or anecdotal allegation of prior use should not be pursued. (See also 18.24) for the procedure at examination stage). [The letter accompanying the search report should be used for bringing an instance of prior use to the applicant’s attention. In no circumstances should the search examiner offer to make the anticipatory matter (or a drawing or photograph of it) available to the applicant or to third parties, unless provided by a member of the public. This is in order to avoid the involvement of the examiner in his personal, as opposed to his official, capacity in the patent proceedings.]
The search examiner consults documents available through online databases and may supplement this search with an internet search and/or a search through paper documents held in the Office. Online databases include patent databases (such as the European Patent Office Documentation (EPODOC) and Derwent World Patents Index (WPI) databases) and non-patent literature databases, which often cover specialist areas of technology. The choice of databases and tools used to perform the search will depend on the subject matter of the application, and should be based upon the examiner’s judgement of where relevant prior art is likely to be found.
[The search should not rely exclusively on CPC classification terms as there can be a delay between publication of non-EP/US patent documentation and its classification in CPC and not all national document collections are classified to that scheme (for example most JP, KR and CN patent publications are not classified to the CPC). Therefore, unless the search is deliberately curtailed (see 17.83(d), 17.83(e) and 17.117), a search should also cover documents only classified to IPC (either directly or by word-only searching). The examiner should also consider whether a FICLA and/or FT search would be appropriate].
Where a patent document is found during the search which is relevant for novelty and/or obviousness, the examiner should consider whether to perform a citation search on that document, to identify documents cited against it, and to identify other patent documents against which it has been cited. While such a citation search is normal practice for relevant patent documents (ie those which are to be cited as “X” or “Y”), this may depend on the factors such as the overall relevance of the document, the numbers of documents cited against it and the circumstances of the case; for example, if there are numerous novelty citations it is unlikely to be useful to perform citation searches to identify yet further relevant documents. Similarly, when a published case equivalent to the application in suit is found, citations on that case should generally be checked. This is discussed further in the discussion of the top-up search see 17.115 as such equivalents will not normally be published at the time of the initial search.
[Citation searches can be carried out using COMBI, and noted in the internal search report. For citation search against family members of the application in suit, see 17.115]
As a matter of course and as necessary, to establish common knowledge in an art for the purpose of establishing the presence or absence of an inventive step the search may extend to other readily accessible published information e.g. standard text books and technical review articles. If, in any particular case, the search examiner is aware of a relevant prior publication, he should include it in the search report.
The areas most likely to contain the most relevant documents will normally be those relating to the technical subject with which the invention, or specific embodiments of it, is concerned. However if the critical matter is of broad application but is claimed narrowly, it may be appropriate first to search disclosures of general applicability, and it may then be unnecessary to extend the search to areas more specifically concerned with the particular manufacture claimed. For example if the claim were directed to a vehicle body or container comprising a particular structural joint, but the critical matter appeared to consist of the joint per se then the primary search would be in the areas relating to such joints. The search examiner should keep a look-out for any documents disclosing the use of similar joints in vehicle bodies or containers or in an art close enough for the document to be used in conjunction with a disclosure of the joint per se to show that it would not be inventive to use particular joints in this way. If an anticipation of the critical matter has been found, extension of the search to those areas concerned with the higher level of organisation (in this case vehicle bodies or containers) may not be necessary, particularly if a supporting document of the kind referred to in the preceding sentence has been found. This would also be the case even if no anticipation of the critical matter had been found if it could be said with reasonable certainty that if a document disclosing the joint per se did exist it would be found there.
If the invention is a prima facie new organisation for which documents would need to be found showing it to be known or obvious as a whole if an objection were to be sustainable, then a single search in the fields most relevant to such an organisation will generally suffice, and there will not normally be any point in searching at different levels of organisation. If the invention appears to be a non-inventive combination, for example a particular element in a particular machine, a search to establish whether the combination is known should be made as a matter of course, unless in the search examiner’s opinion the chances of finding an anticipation are remote. If no such anticipation is found or searched for, search should be considered for the element and the machine per se, and/or for documents which could be used to argue the non-inventiveness of the combination by showing that the particular element is a conventional option in the relevant technical field. For example if a central heating boiler having a particular fuel spraying nozzle were claimed, and a disclosure of the same nozzle in an engine were found, a further document describing similar nozzles in a way which implied that they could be used in both boilers and engines would be highly relevant. Separate search statements should be written for the respective searches, which may need to be carried out in different headings. If both the element and the machine are sufficiently well known for this to be asserted without documentary evidence, and the obviousness of making the combination can be argued from common general knowledge, then the novelty search may suffice.
In some circumstances it may only be feasible to make a novelty search, ie a search limited to the claimed context even though the characterising part of what is claimed is not peculiar to that context. This could arise if the claim were directed to the use of a generally applicable technique in a specific context but where the available classification and search words do not provide a way of feasibly searching for that technique in general and the searcher is unable readily to identify the various contexts in which it may find use.
When the search examiner considers that a search might usefully be made in an area which is the field of expertise of another examiner, he should consult and take advice on where to search and the likelihood of finding relevant documents. The results of these consultations should be recorded on the ISR. Consultation should be restricted to whatever is necessary for the other examiner to understand what the search need is, and a second analysis of the case by the other examiner should be avoided unless the latter has reason to believe (eg because of his greater experience) that it would be useful. The primary examiner should normally make the whole of the search himself. Exceptionally the application may be sent to another examining group for search, eg where the examiner consulted thinks that it would be more economical or convenient for him to do the search himself. It must however always be remembered that avoidance of delay is of the utmost importance and cases should be sent to another examining group for search instead of being done by the primary search examiner himself only when the time allowable for completion of the search is adequate.
The search examiner should beware of an ex post facto approach to the subject of obviousness when deciding to extend the search to arts not mentioned in the application. The question to be answered is not, given the invention, in what fields might it be applied, but, given the problem to be solved by the invention, in what analogous arts would it be reasonable for the skilled person to seek the solution (see also s.3).
Reconsidering strategy during the search
While searching for the critical matter the search examiner should keep in mind the nature of any evidence which would be needed, in conjunction with an anticipation of the critical matter, to support an argument of lack of inventive step. If an anticipation of the critical matter, but not of every feature of the claimed invention, has been found, the search examiner should consider whether to search for supporting evidence elsewhere.
If the novelty and inventiveness of the main claim cannot be impugned there is no point in making a special search for the subject matter of dependent claims. It is however as well to note any disclosure of the subject matter of a dependent claim which is found while searching the main claim, since this could become useful if material citable against the main claim were either found later on in the same search or came to light subsequently.
The search strategy should be reviewed on finding documents which demonstrate either that the invention of the main claim lacks novelty or is obvious or, when there is more than one independent claim, that the claims relate to more than one invention (see 17.88). It should be borne in mind that while several documents may produce a stronger argument that something forms part of the common general knowledge (for assessing inventiveness) than a single document, in the case of an objection of lack of novelty a multiplicity of citations may be merely redundant.
The search examiner should attempt to anticipate in what way the claim is likely to be amended. Often amendments will take the form of combining one or more of the dependent claims with the main claim; in other cases the search examiner may be able to tell, from his knowledge of the art and the results of his search, that a feature described but not brought out in the claims is likely to be used on amendment to characterise the invention. If the direction of amendment can be predicted with any reasonable confidence, the search should be focussed on finding documents of potential relevance to possible amended claims. However, no search is necessary for claims which merely add features which are trivial or conventional.
If it is not possible to predict what is likely to be claimed after amendment, the search examiner should use his judgement to decide the best course to follow. The aim should be to minimise the need for searching at the substantive examination stage, but there is no point in performing at the search stage any search for which there is a strong possibility that the effort will prove to have been misdirected. If the invention of the main claim is shown to be not novel or inventive, and a complete search in respect of it is not practicable, and the dependent claims diverge from it, for example in order to embrace different embodiments, so that while in form the claims relate to a single invention, in practice they do not, several courses are possible: see 17.110 and 14.164
Other documents found
The search examiner should also, while searching for documents which bear on the questions of novelty and inventive step, note any documents which may be relevant for other reasons, for example conflicting UK or European (UK) applications (see 18.91-18.97.1) 73.05-73.12 or documents which support a view that the invention is nonpatentable on other grounds or cast doubt on the validity of the claim to priority (for example suggesting that the priority document was not the first relevant application), or which illustrate the technical background or contribute to a better understanding of the invention. Such documents should be cited as “A” unless they are also relevant for the novelty or obviousness of the searched invention (see 17.80). No special search should however be made for such documents unless there is a good reason in a particular case for doing so.
|On any such search the examiner shall determine whether or not the search would serve any useful purpose on the application as for the time being constituted and
(a) if he determines that it would serve such a purpose in relation to the whole or part of the application, he shall proceed to conduct the search so far as it would serve such a purpose and shall report on the results of the search to the comptroller; and
(b) if he determines that the search would not serve such a purpose in relation to the whole or part of the application, he shall report accordingly to the comptroller;
and in either event the applicant shall be informed of the examiner’s report.
The search report
In the normal case, where the examiner has been able to carry out a search, a report identifying the relevant documents and indicating why they have been cited is sent to the applicant. The documents are also listed on the front page of the published Adocument which also includes a copy of the external search report(s).
[That information which is to constitute the search report to the applicant (see 17.69 17.82) should be recorded within the upper and lower tables of the internal search report. Information which is intended solely for the substantive examiner (see 17.86 and 17.93) should be recorded outside these tables. The search report to the applicant should not include an excessive number of citations. Where a very large number of items has been found, the search examiner is expected to use his judgment and select the most relevant. If it is difficult to determine which are the most relevant, normally only examples should be cited and the applicant so informed by adding a passage to the search report letter before the paragraph about other search results (see 17.83).The number of items cited should not in general exceed twelve unless there is a special reason for more, although a larger number can of course be noted outside the tables of the internal search report.
[The Deputy Director or subclass examiner, after due consultation, should arrange for an appropriate early response to issue following enquiries from the agent or private applicant regarding the date of issue of the search report. Any letter confined to such an enquiry is forwarded by the formalities examiner direct to the relevant group Deputy Director. The method and substance of the response should be determined according to the particular circumstances: in general, the response should be by letter rather than telephone (plus telephone report), and may be issued by the appropriate Formalities Manager. When it is possible to make a relatively accurate estimate the response should specify the anticipated month of issue. In other circumstances it may be appropriate to be less precise eg to indicate that the report is not likely to issue before a specified date (month). In any event, the response should indicate the telephone number of a named contact.
[In most cases, publication of an external search report does not require any action on the part of the search examiner. However see 16.33 and 17.105 for action to be taken if the search examiner becomes aware of an error in the external search report or of an additional citation after the external search report has issued.
[Search report covering letters SL1, SL1A, SL3, SE1 and SE3 include a request for disclosure of details of search results from other patent offices on the same invention. This request covers official search reports only, but excludes reports issued by WIPO or the EPO, reports with no citations, or those already supplied on an earlier GB patent application. The request is active for reports issued before the first response made to a report under section 18 issued on the application, or two months after the date of a report under section 18(4) where no response is made to this report.
Private applicants’ cases
[The search examiner should use SL1PA to act as the covering letter for the external search report. The Preliminary Examination Report (using LFEPA) should be issued only if there are any formalities objections. Paragraphs may be added to the search report covering letter before the paragraph about other search results (see 17.03 and 17.83) and the search examiner should satisfy himself that the letter and any enclosures will make a coherent whole. The procedure for obtaining copies of cited documents for issue with the external search report is outlined in 17.104.1. Where there is plurality of invention on a private applicant case, SC13 can be used. Where there is no standard private applicant letter or clause available, other standard letters and clauses may be used where appropriate, with modification to suit the individual case if the search examiner sees fit. SC17PA should be included to recommend the use of a patent attorney or other professional advisor.]
Field of search
The search examiner should identify the field of search by entering the appropriate details in the “Field of Search” table in the internal search report. Only current IPC terms and (if used) terms from the final edition of the UK Key (edition X) can be entered. When a search is made through documents classified under the IPC, CPC or FICLA, the relevant IPC sub-class(es) should be indicated in the “IPC” entry - eg G03B, G06F. In the rare instances that the search was limited only by search words and was not limited to any IPC or CPC sub-classes, the “IPC sub-class” box should be left blank. The “UKC” entry should be used if the search has been conducted through documents classified on the UK Key (whether GB patent documents or otherwise). Only the heading(s) searched should be recorded under the “UKC” entry - eg G3N, H2F.
[Details of the field of search are entered into the “Field of Search” table by opening a dialogue box while editing the internal search report in Word; this is done by clicking on the ‘Add-Ins’ tab and then selecting ‘Maintain FOS’. There are two input fields for Other Field Of Search: The ‘Other Field Of Search for this ISR’ is used by PROSE to record the other field of search specific to the current ISR, while the ‘Other Field Of Search total for the case on COPS’ is that which is to be stored on COPS. This is because COPS only has one free text field for this information and different searches conducted on a case may include different fields of search. For the first ISR on a case the examiner should enter the same data in each field. For each subsequent ISR at the ‘A’ stage, the first field should be filled with the details specific to that ISR, while the second field should be filled with an accumulation of the data for all the ISRs up to that point, but should not contain any duplication. When the examiner enters the details for a second ISR, for example, the second field will already be populated with the data recorded for the case from the first ISR and so all the examiner need to add to the second field are further “other” fields of search, such as databases not searched in the first search. The examiner should enter the appropriate text (see 17.71) or right click to display standard texts for selection.
[Fuller details on the field of search should be entered outside the “Field of Search” table - usually under the heading “Other details about field of search”. For the UKC, a heading and any classifying terms searched in it should be recorded here - eg H2F (F3C, F3D). For a search of documents under the IPC or CPC, more detail should be given, including sub-classes, sub-groups and all CPC terms searched - eg E05B 1/00, 1/0007, 1/003, 1/04. Other details given may include any search using terms from earlier editions of the UKC or IPC, or an explanation if the CPC classifications have no suitable IPC equivalent at sub-group level.
If the search has been stopped at a certain date because the search examiner considers that no relevant documents would be found earlier than that date, for example because of the nature of the technology used in the invention, there is no need to tell the applicant. If however the search has been discontinued for some other reason (usually because sufficient relevant documents have already been found) then the applicant should be informed (see 17.83).
Databases used and document collections searched should be recorded under the Field of Search entry “Online & other databases”. Online databases should be recorded using the standard database names e.g. EPODOC, WPI, INSPEC. When fulltext searching is conducted, this should be listed as “Patent Fulltext”. Those database names which are also registered trademarks are acknowledged as such in the standard database names document but not in the search report. If an internet search has been performed, this should be recorded as such in the external search report, but names of individual search engines that are used for the search should not be listed unless they have been accessed through a subscription and are not freely available. If however only one or two websites have been looked at, then the Internet should not be listed on the external search report because this may lead to the impression that a significant internet search has been conducted.
[Databases should also be recorded using PROSE; the particular database(s) searched being indicated using the which are listed on. For further information on internet references, see the Internet Searching Manual.]
The search report also includes an indication of the claims in respect of which the search has been done. In general, all claims dependent on a main claim which has been searched should be listed by number provided none falls outside the scope of the main claim (eg by virtue of specifying omission of some feature(s) of the main claim). Where a dependent claim introduces a feature which is not trivial or conventional, this claim should still be listed in the claims searched. However, if the search examiner considers that further searching in respect of this feature may be required at a later stage then the applicant should be warned in the covering letter. Independent claims and claims dependent upon them should also be listed by number when they fall within the scope of the search made. If the claims searched have been amended in wording or numbering from those originally filed, their date of filing should also be stated in the “Claims searched” box.
[The indication of claim(s) searched should be consistent with the indication as to which claim(s) the cited documents are considered relevant (see 17.77).]
Where there is lack of unity, then claims relating wholly to second or further inventions should not be included in the “claims searched”. Claims relating to a first invention and also dependent upon claims to subsequent inventions should be listed in the “claims searched” along with an indication that only a partial search has been performed in respect of these claims. In addition, independent claims should not be searched if they relate to subject matter wholly unpatentable under s.1(2), s.1(3) or s.4a (see 17.94 and 17.107). However, claims which are unpatentable under s.1(2), s.1(3) or s.4A as worded but which could form the basis of a patentable claim – for example, method of treatment claims which could be converted to a valid second medical use claim – should be searched if they fall within the first invention. Claims which are completely unsupported and of indeterminate scope (for example, “reach-through” claims to compounds identified by an assay or screening method – see 14.156.1 should not be searched. A brief explanation in the internal search report and search letter as to why the claim was not searched should be included in the internal search report and search letter. Occasionally applications contain totally indeterminate claims, for example, directed to “any novel matter disclosed”. Such claims should be disregarded at the search stage; no reference need be made to them in either the external search report or the accompanying letter.
[In the “claims searched” the examiner should record “(in part)” after any claims which have been partially searched because they relate to a first invention and also depend upon independent claims to subsequent unsearched inventions]
The search examiner should report primarily those prior publications including those acknowledged in the application - which could prove useful to the substantive examiner when constructing an objection based on lack of novelty or of inventive step. He should be generous in his assessment of what the substantive examiner might consider relevant and particularly in the absence of category X or Y documents should also include documents illustrating background art, see 17.80. The examiner should always cite at least one document in the first search report on an application, unless – exceptionally – he considers that the invention relates to a wholly new field of technology and so no relevant documents of any kind can be found. If a document of the kind referred to in 17.67 is included, the reason for its inclusion should be referred to in a supplementary report in the search letter (see 17.83).
[The first two columns of the lower table of the internal search report headed “Ref” and “Location” are for the convenience of the search examiner, who can include in the first of these a private shorthand reference code to readily identify a citation and, in the second, the source or location where the cited document is to be obtained or found. The information in these columns will not be carried over to the external search report.]
[In the exceptional case that no relevant documents have been cited, “None” should be inputted in the citation field of the ISR]
Whether or not a given document forms part of the state of the art in the case of an invention may depend on the priority date of the invention, and also on that of the matter in the document. The priority date may differ for different parts of the matter disclosed in an application or for different aspects of the invention (see 5.20-5.24) The search examiner should however treat the actual filing date of the application being searched as though it were the priority date of all the matter present. In this way, if it should transpire that an invention is not entitled to a priority date which has been declared, or if the applicant should relinquish his priority date, this will not cause him to be confronted with a citation of which he had been left unaware. In order to decide whether a published application should be included in the search report by virtue of s.2(3), the potential citation should be treated as though all the matter in it were entitled to the earliest priority date declared. All this is without prejudice as to what may be the true priority date of matter in either the application being searched or in the potential citation. (For the practice at substantive examination see 18.14 18.16).
The citations should be listed according to relevance, starting with any category X documents, followed by category Y documents and lastly category A documents. The documents within each category should also be listed with the most relevant (eg the one relevant to most claims) first. The relevant passages for consideration in each document should normally be indicated (see 17.81). In the absence of any significant priority (eg where all the documents are category A), UK patent specifications should be listed first, followed by EP specifications, PCT pamphlets, foreign patent specifications in country code order and finally non-patent literature.
[Details on citation formats in PROSE can be found online).
An indication of why each document has been included in the search report should be given by assigning a category indicated by a code letter (eg X, Y or A – see 17.78-17.80). The claims to which it is considered relevant should also be indicated, as should pertinent passages wherever possible (see 17.81)). The relevance of the document to each claim (except for any relating to a second or subsequent invention where there is not unity of invention, see 17.106 to 17.110) should have been investigated and all of the claims affected should be listed on the search form, as far as it is reasonably practicable to do so. In cases which are complex or obscure or have a very large number of claims, it may not be practicable to consider all of the claims in sufficient detail for every claim affected to be identified. In any event, at least those claims (or those of the claims which relate to the first invention where there is not unity of invention) which are independent or which appear prima facie to relate to new or important features or the characterising features of particular embodiments, rather than merely reciting standard prior art features, should have if possible received particular attention and be listed if appropriate. While the substantive examiner will be guided by the search examiner’s assessment of the citations, he is not bound by it, and may take a different view after his more detailed consideration of the whole specification.
[All claims listed against cited documents in the search report should be included in the list of claims searched. A supplementary report should issue in the form of an appropriately headed passage in the search letter (before the paragraph about other search results) if only a partial search was made in respect of any claims so listed (see 17.72.1). Examiners should consider and report on the relevance of citations to appendant claims only to the extent that it is reasonably practicable so to do. Where it has not been practicable to consider all of the claims, it is acceptable to qualify listed claims with “at least”. Consideration should then be given to including comments in the internal search report form (ISRF) and search letter explaining the extent to which the relevance of the citations to the claims has been considered. However, a bare reference to “claim 1 at least” (i.e to one independent claim only) should be avoided in all but exceptional circumstances e.g. where the scope of the invention is extremely unclear or there are a very large number of claims.]
Category X is to be used to indicate a document which is relevant when taken alone. It may disclose (or imply - see 18.22) all the features specified in a claim, i.e. may demonstrate lack of novelty. Alternatively, it may of itself indicate a lack of inventive step - for example, where the difference between what is claimed and the disclosure of the document is considered to be non-inventive or to be common general knowledge, or where features of two embodiments can be combined to show all the features of what is claimed. The essential point about a category X document is that it can be used without the support of other documentary evidence to attack patentability. It should be indicated as relevant to those claims whose novelty or inventive step is impugned by the document standing alone.
Category Y is to be used to denote a document which is relevant when combined with another document and which will therefore form one limb of an obviousness argument. If a category Y document is listed against a claim, it follows that at least one other document of this category must also have been listed against that claim. A document may be assigned both categories X and Y. In this regard a document may be X category in respect of one or more claims and Y category in respect of a different claim or claims; or may be both X and Y category against a single claim eg because it is relevant to lack of inventive step both as taken alone (in the light of common general knowledge) and when combined with another document cited under category Y.
[Each document should be listed only once on the search report and, if it is relevant under both categories X and Y, “X, Y” should be indicated against it. The “Claims” column should be completed by inserting “X: ” and the numbers of the claims affected under that category in one group and inserting “Y: ” and the numbers of the claims affected under that category in a second group.]
Category A is for documents indicating technological background and/or state of the art. No search is made for such documents, and if the normal search reveals documents in category X and/or Y it will not usually be necessary to cite background art as well. However, if the search reveals nothing in category X and/or Y, one or more documents representing the most relevant background art should normally be cited under category A, whether these are revealed by the search or otherwise, eg acknowledged in the application. Documents cited for other purposes may also be assigned category A but the reason should be given in a supplementary report in the search letter, see 17.83. Such purposes include those referred to in 17.67 (and in particular include citation to support an objection under s.1(2) which, prior to the introduction of category A, was assigned category X). The search examiner may also include any other document which he feels is relevant to the application and should be brought to the attention of the applicant, but does not merit category X or Y.
Where a search has been made for the common matter of two or more independent claims in order to ascertain whether the inventions are linked to form a single inventive concept, only documents which appear relevant under s.1(1)(a) or (b) to the (or the first) invention claimed should be designated X or Y; other documents found may be designated A (see 17.83,17.106 and 17.109). There is no bar on citing category A documents as well as category X or Y documents although, since category X and category Y can each be taken to subsume category A for most purposes, it is unlikely to be appropriate to assign code A in addition to code X or Y to citations of category X or Y. The listing of claims and pertinent passages against cited documents may be dispensed with for category A documents but may be done where the search examiner considers it would be helpful. Only claims which fall within the scope of the search (at least in part) should be listed against cited documents, claims relating to second or subsequent inventions should not be listed (see 17.72.1 and 17.77).
Category & may be used to indicate cited documents which are members of the same patent family (eg GB and foreign equivalent) or otherwise correspond. Corresponding documents should only be listed where their inclusion enhances the search report, eg by providing the English text, by bringing matter into the s.2(2) field, or by disclosing or claiming different aspects of the invention.
Relevant passages of cited documents should always be indicated (other than for category A documents, where this is optional, see 17.80 except where this is clearly impracticable, for example where there are many separate and equally relevant passages throughout a document or where the document is short and its relevance is self-evident. Such an indication will not in any way restrict the substantive examiner, who will be free to rely on any part of the document in order to support an objection.
Citations in the s.2(3) field or whose effectiveness depends on their priority date and/or that of the application in suit (see 17.74) should be indicated by further code letters. These are:
P - document published on or after the priority date but before the filing date of the application in suit. Such a document would lie in the s.2(2) field if the invention were not entitled to the priority date requested. On the other hand, if the claim to priority were sustained, the document would be either in the s.2(3) field or outside the state of the art. If a late declaration of priority is filed after search, then documents cited in the search report may no longer form part of the art (see 18.14). That is, a citation may become a ‘P’ document (although this will not be indicated on the search report) as a result of the late declaration of priority.
E - UK patent application, or European or international application designating the UK, which has a filing or priority date earlier than, but a publication date the same as or later than, the filing date of the application in suit. Such a document is therefore prima facie in the s.2(3) field but may be rendered nugatory if the applicant can sustain his own priority date and/or attack that of the document listed. Such a document should be listed only if it impugns the novelty of the invention, since there is no possibility of it being in the s.2(2) field and documents in the s.2(3) field are not relevant to obviousness.
Since these codes convey only supplementary information a document to which they are assigned should of course also be categorised as X, Y or A (see 17.78-17.80).
In some cases it may be necessary for the search examiner to add observations, which should be as concise as possible, to the letter which accompanies the search report. Thus, a brief explanation should be added to the letter as a supplementary report:
(a) if the claims lack unity of invention but it is thought that it would not be self-evident to the applicant why this is so (NB the fact that the examiner considers that the claims relate to plural inventions should always be reported where this is the case, whether or not further explanation is needed – see 17.106-17.110);
(b) if the search examiner is not confident that the applicant will be able to deduce the way in which cited Y category documents are to be combined merely from information (eg identified relevant passages) provided in the search report;
(d) if the search examiner has conducted only a partial search, for example because documents found in the search demonstrate that the invention of the main claim lacks novelty and inventive step, and it is not apparent in what way the applicant might amend, or because the claims are insufficient due to excessive claim breadth (see also 14.79-14.82, 17.83(e) and 17.117;
(e) if the documents cited are examples only of relevant prior art, in which case the supplementary report should also give a warning (when appropriate) that a further search may be necessary at the substantive examination stage. In some circumstances it may be useful to include an explanation as to why particular documents have been cited, for example because they show a particular embodiment or demonstrate the wide breadth of a speculative claim;
(f) why an independent claim has not been searched when it relates to an excluded invention under s.1(2);
(g) where the categories X or Y have to be omitted from the search form because an application is so obscure;
(h) where documents which may be relevant have been revealed by an online database search but only an abstract has been seen and there will be some delay in obtaining the complete document for the search examiner to inspect. The search report should include an indication of the likely relevance of the complete document where possible;
r.27(2) is also relevant.
i) where documents which may be relevant have been revealed by an online database search and the complete document is unavailable, where a document is available as a library loan only, or where copyright allows for in-office use only and no copy can therefore be provided to the applicant;
(j) where the search examiner has determined that the claims do not clearly define the invention, and so has searched what he perceives to be the invention when taking the application as a whole (see 17.42);
k) where the search examiner considers that the application may relate to matter excluded under section 1(2) but where action as described in 17.83.4) or 17.94.5-17.101 is not appropriate (see 17.94.2-17.94.3);
l) where a ‘publication’ date for an internet disclosure cannot be established but the disclosure appears highly relevant (see 17.54).
[The supplementary report should be one or more appropriately headed paragraphs added to the search report covering letter before the paragraph about other search results. In the case of an application from a private applicant, SC3PA should be added if it is necessary to indicate the interpretation which has been put upon unclear claims in order to carry out the search. If the matter cited completely anticipates the entire subject-matter of an application from a private applicant SC4PA should be added. SC14 or SC14A should be added to report documents revealed by an online database search but unseen. Where partial searches only have been conducted in respect of some claims see 17.72.1 and 17.77.]
Where the search report has been issued on the basis of an abstract as in 17.83(h) above, the examiner should analyse the full document when it becomes available and send a copy or copies to the applicant as soon as possible (whether it is then considered relevant to the invention or not). An accompanying letter should confirm, or not, the relevance of the document and should include any information which would if known have been included on the search report, or indicate any differences between what was indicated on the search report and the document’s actual relevance as appropriate (see also 17.105-17.105.2). An amended search report should be issued if there is a significant difference between the indicated likely relevance and the actual relevance of the document and the application has not yet been published. The examiner should enter particulars as necessary on the internal search report and COPS using PROSE. If copies of a document prove to be unobtainable, the applicant should also be informed.
[The application should be diaried for one month to safeguard against the order for references going astray. This should be done by creating an entry in the PD electronic diary system and adding the diary action to the dossier in PDAX. This diary entry should state the examining group after the application number in the format GB0000000.0 – EX00. SL14 should be issued when a document previously cited on the basis of an abstract is considered not relevant to the claims after the full document is available.]
If search in respect of later-filed original claims is restricted in the circumstances discussed in 17.34.1, then the applicant should be advised accordingly in a supplementary report in the letter which accompanies the search report and informed that amendment to the claims will be necessary in due course.
[Where the claims contain additional features not in the original description, clause SC5 (at search stage) or SC6 (at CS&E) should be used. Private applicant versions of both these clauses are available (SC5PA and SC6PA).]
While conducting the search, if major issues are identified in the application that will require considerable amendment if the application proceeds to substantive examination, the issue of an examination opinion should be considered by the search examiner where combined search and examination is not being conducted. This examination opinion is non-statutory, but may form the basis of the first examination report under s.18(3) at substantive examination (see 18.47.1).
Examples of situations where the issue of an examination opinion will be appropriate include complete or extensive anticipation of the subject matter disclosed, broad speculative claims where there is no clear indication of how the applicant may wish to proceed, complex independent claims with overlapping scope relating to a number of separate inventions, and inventions falling within excluded categories. However, in the case of plurality of a more limited extent, an examination opinion should not be issued for this reason alone. Furthermore, under some circumstances (e.g. excluded inventions), action prior to search, or issue of a report under s.17(5)(b) in addition to the examination opinion may be more appropriate (see 17.94-17.101).
[The search examiner should use search letter SL1A as a covering letter for the search report and accompanying examination opinion. This letter invites amendment before substantive examination and informs the applicant that the examination opinion will form the first report under section 18(3) if the points in the opinion are not addressed.]
[The examination opinion should include clauses selected from EC1 to EC8, which may be supplemented by further explanation if necessary or for clarification. Where plurality of invention is present, in addition to using clause EC6 (where plurality alone would justify an examination opinion) or EC8 (where the examination opinion is being issued for another reason), clause SC13 should be used in the search letter (see 17.108).]
[For private applicant cases major issues such as those exemplified above may be detailed in a supplementary report in the search letter rather than an examination opinion (see also 17.83). Alternatively an examination opinion may be issued to a private applicant if the examiner feels it is appropriate.]
If an applicant, at the time of filing an application, purports to inform the comptroller under r.5(1) of the display of the invention at an international exhibition the search examiner should ascertain whether the exhibition cited by the applicant is an international exhibition within the meaning of s.2(4)(c). If the exhibition cited does comply with the statutory requirement (see 2.41) the search examiner need take no further action except to note the fact on the internal search report. If it does not, a paragraph should be added to the letter accompanying the search report informing the applicant that the exhibition cited by him is not an international exhibition within the meaning of s.2(4)(c), and that the admitted display of the invention will be taken into consideration by the substantive examiner during substantive examination in due course (see 18.23). No reference to the display should be entered on the external search report, but again a note of it should be made on the internal search report.
17.85 [Moved to 17.72.2]
The internal search report
The search examiner should record on the internal search report any information which is likely to be of use to the substantive examiner. This should not include matters which are self-evident from the specification or otherwise, but should provide a record of the thoughts and strategy of the search examiner which would not be apparent to another, or even to himself at a later date. This should as a minimum include a statement of the critical matter (see 17.50), details of the classification terms searched (including CPC and IPC subgroups), and a list of the documents found. If comments such as “further search may be necessary” are made, then informative reasons should be given. Full details of the online search strategy should also be recorded, either in the internal search report or a stand-alone document. The way in which each document is relevant under an identified strategy should be clear: this is particularly important with regard to documents listed as examples. If comments such as “best of many” are made, then a clear indication of the criterion used in the selection should be given. If on the other hand documents cited are examples only, then this should be clearly stated. Multiple citations, showing more or less the same features, should not be made. If the reasons for the particular form of the search statement are not readily apparent from the claims searched, for example if the search has been cast more broadly or has been restricted, for the reasons discussed in 17.36-17.37 and 17.42-17.43, then a suitable explanation should be given. Where there is more than one search statement or strategy, it should be made clear which one produced each of the documents listed. If any part of the search has been deferred the reasons for this should be clearly explained. If some thought has been given as to whether to search using a particular heading, or to consult the examiner in charge of another heading, and it has been decided not to do so, then this should also be noted.
[The online search strategy may be recorded either in the internal search report, or in an OSS (Online Search Strategy) document on PROSE. This may be done using a history print (from the HI command on EPOQUE) or a print-out of the full strategy, but however it is recorded it should be clear what has been searched and which documents have been viewed.]
[It is not necessary for the search examiner to make comments in every case in respect of:
plural invention if there is only one independent claim
technical subject problem(s) addressed
any subject-matter assumed, without search, to be common general knowledge
[Where a search reveals a large number of citable documents and examples (whether “best of many” or “examples only”) are cited, not only should this be recorded on the internal search report for the benefit of the substantive examiner but also the applicant’s attention should be drawn to the situation in a supplementary report in the search letter (see 17.83)]
If the specification contains obscurities and it has been necessary for these to be interpreted in a particular way in order for the search to be performed, this should be made clear on the internal search report (as well as in a supplementary report in the search letter, see 17.83.
If the application contains more than one independent claim, a comment on plurality should always be included on the internal search report, even if it is considered that the claims relate to a single inventive concept. If the search examiner considers that the claims lack unity of invention then this should be recorded, together with an explanation if necessary, and it should be made clear to which invention the search relates. If it has been decided to treat a group of inventions as being so linked as to form a single inventive concept this should be noted, together with the reason if this is not self-evident.
The substantive examiner is entitled to assume, in the absence of any indication to the contrary, that all documents found which fall within the terms of the search statement and within the databases searched have been recorded. If many such documents were found and only a selection has been cited, this should be made clear see 17.83(e) and 17.86. In such cases, it may sometimes be useful to record on the internal search report those documents which were not selected for citing in the external search report. If any such documents are recorded, they should be accompanied by an indication of why they are relevant.
[No document should be cited which cannot properly be justified. However, since it is for the substantive examiner to decide whether claims are novel and inventive, doubt at the search stage should be resolved in favour of citing.]
If a specification published after the declared priority date of the application in suit has been noted, the search examiner should, unless he has grounds for believing that the exercise would be fruitless, determine whether or not there is a foreign or European equivalent with an earlier publication date.
Any other document found in the course of the search which is likely to prove useful to the substantive examiner, for example a document relating to a subordinate claim for which no special search has been made (see 17.63) or relevant for reasons referred to in 17.67, should also be noted, together with the reason, for consideration by the substantive examiner. No document lying outside the scope of the search statement should be listed without explanation, since this would leave uncertain the true extent of the search performed. Where any prior art specifically referred to by the applicant has been inspected, the result should be noted. Finally, any relevant instance of prior use which is known to the search examiner should also be noted (see 17.54).
While the search examiner should not spend time delving into matters in the specification which are not necessary for the performance of the search and ancillary duties (see 17.102) any such matters which are noticed and are likely to be of relevance to the substantive examiner should be briefly noted.
Search would not serve a useful purpose
Section 17(5)(b) directs the examiner to determine whether or not a search on an application would “serve any useful purpose”, and if it would not, to report accordingly. This situation may arise if the specification is so unclear that a meaningful search is simply impossible. Alternatively, although a search might be possible, it may be considered that there is no prospect of obtaining a valid patent and so the search would not serve a useful purpose. For example, this might be the case if the specification was considered to be classically insufficient under s.14(3), and/or because it is not patentable by virtue of s.1(1)(c) or (d).
However, the effect of section 17(5) as a whole is that if a search would serve a “useful purpose” in relation to any part of the application, then one should be carried out, at least in relation to that part. Since the aim must always be to keep to a minimum any searching done subsequent to the initial search stage, cases in which a report is made under s.17(5)(b) will be relatively rare (unless the claimed invention is clearly not patentable by virtue of s.1(1)(c) or (d) – see 17.98). In many instances where a search could be performed more efficiently if the scope of the invention were made clearer, it nevertheless remains practicable for a search to be performed without amendment of the claims. In such a case the search examiner should do his best to glean from the claims and description what appears to be the invention, at least to a sufficient extent to enable a partial search to be performed, as provided for by s.17(5)(a). In any such instance the search letter should include a supplementary report explaining the scope of the search, and giving reasons – see 17.72.2 and 17.83.
s.4A(1) is also relevant.
If there is plurality and the first claimed invention appears to be wholly excluded, but one or more subsequent inventions are not excluded under s.1(2), then the search should be directed to the first non-excluded invention – see 17.107. If there are multiple independent claims that form a single inventive concept and claim 1 relates to subject matter excluded under s.1(2), the examiner is able to search any matter which could form the basis of a non-excluded claim.
Where it is considered that the or each claimed invention is excluded from patentability, but there is a possibility that the claims may be amended to define a non-excluded invention supported by the disclosure and it is readily apparent what this invention would be, a search should be directed to this invention and the applicant should be informed of the search examiner’s views (in a supplementary report in the search letter, see see 17.83; see also 17.94.8. The examiner should only seek to identify such a “searchable” invention as far as it is efficient and practical to do so. Where a “searchable” invention cannot be readily identified and no saving amendment is obvious the examiner should consider the strategies discussed below see 17.94.8 and 17.98 in particular). For example, if the claims all relate to a method of performing a surgical operation but the application as a whole clearly discloses a potentially patentable surgical instrument for use in such a method, then the surgical instrument may be searched. If on the other hand the method is performed using entirely conventional instruments, then there would appear to be no saving amendment possible and so a search would serve no useful purpose.
Strategies at search stage where it appears that a search would serve no useful purpose
Section 17(5) states that the examiner should determine whether or not a search on an application would serve any useful purpose, and if it does not, to report accordingly. However, a formal report under s.17(5)(b) is not the only option available at search stage for applications where there appear to be significant patentability issues, and it may not be the most appropriate option, at least initially. If the claimed invention appears to be unpatentable under s.1(1)(c) or (d), but it can be searched and the examiner considers that the objection might be successfully disputed or avoided by amendment, the applicant should simply be informed when the search report is issued that the potential objection will need to be fully considered if and when substantive examination is performed.
However, if the search examiner considers that the entire application clearly has no patentable content, then he should consider the most effective way to deal with the application. This will depend, in most applications, on the nature of the potential objection(s) and whether the applicant is professionally-represented or not. The search examiner can consider several options:
a) action before search (ABS – sometimes also referred to as “amendment before search”);
b) issue of a report under s.17(5)(b);
c) issue of a substantive examination report under s.18(3) before search (the “Rohde & Schwartz” procedure – but this should only be done in very limited circumstances).
These options are not mutually exclusive; it is possible to use the ABS procedure prior to issuing either a s.17(5)(b) report or s.18(3) report.
a) Action Before Search (ABS)
If, in the examiner’s opinion, the application has no patentable content, and it is considered likely that the applicant would wish to simply withdraw the application and receive a refund of the search fee once that opinion is communicated to him, then the best option is likely to be issue of a letter suggesting action before search (ABS), or, if appropriate, action before combined search and examination (ABCSE). However, the search examiner should not respond to a request for a further search under s.17(6) by issuing an ABS letter (see 17.111). An ABS or ABCSE letter should state the examiner’s view that there is no likelihood of a patent being granted, and clearly and simply set out the reasons why the examiner considers that the invention is not patentable, or is classically insufficient see 14.67-14.75, or lacks novelty and/or inventive step, together with any documents illustrating this. The letter should also:
a) Set a period (usually one month, but can be longer if appropriate) for response;
b) advise the applicant that he can either:
(i) withdraw the application, in which case the search fee will be refunded. The letter should inform the applicant that in order to withdraw the application the applicant should write to the Office stating clearly his wish to withdraw the application; or
(ii) request that the application proceeds.
c) clearly state what will happen if no response is received from the applicant within the specified period. This should make it clear to the applicant that a search report will be issued after the end of the specified period if no response is received from the applicant, and the application is not withdrawn. If it is considered likely that this report will be a report under s.17(5)(b) stating that a search would serve no useful purpose, then the letter should clearly warn the applicant of that likelihood. The letter should also make it clear that once a search report is issued there will be no refund of the search fee.
Where the application is considered to lack sufficiency under s.14(3) or to be unpatentable under s.1(1)(c) or (d), the ABS letter should normally be followed by a report under s.17(5)(b) if no response or withdrawal request is received from the applicant. [If an ABS or ABCSE letter is issued, the COPS status should be set to “Out for ABS”/”Out for ABCSE”, an appropriate diary entry created in the PD electronic diary system and a diary action added to the dossier in PDAX. (taking into account any as-of-right extension to the reply period that might be requested). The diary entry should state the examining group after the application number in the format GB0000000.0 – EX00.]
[If the application is from a private applicant, then it will normally be considered by the Private Applicant Unit (PAU) – see 17.03. If the PAU examiner considers that the application is clearly insufficient or unpatentable, or clearly lacks any novelty, then an ABS or ABCSE letter should be sent to the applicant as outlined above. Only one ABS or ABCSE letter should ever be sent to an applicant, and so if the applicant has either not responded, or responded with an indication that he wishes to proceed with the application, then the applicant should not be sent a further ABS/ABCSE letter. ]
In response to the letter, the applicant may provide amendments and/or arguments to address the issues raised in the ABS/ABCSE letter. Where such arguments and/or amendments are received the search examiner should carefully consider them and decide whether to issue a search report under s.17(5)(a) (or combined search and examination report), or issue a report under s.17(5)(b) that a search would serve no useful purpose. The examiner should not issue another letter requesting action before search.
This procedure may also be useful for applications which are very clearly lacking in novelty and/or inventive step in their entire content. In such cases, it may be helpful to perform a very rudimentary search to identify a small number of documents which illustrate this, and a copy of each of the documents should be sent with the letter. Again the letter should set out the options for the applicant, including withdrawal with a refund of the search fee, set a period for response, and state what action will be taken if no response is received. If the search examiner considers that the invention lacks novelty and/or inventive step but is otherwise patentable and could be searched, then if the application is not withdrawn the ABS/ABCSE letter should be followed up with a search report under s.17(5)(a) (or combined search and examination report) rather than a s.17(5)(b) report (other than in the very rare situation described in 17.101).
A similar procedure may also be used if it is considered that, while the claims as drafted are not patentable, there is a possibility that a claim defining a patentable invention could be supported by the disclosure, but it is not clear what this would be. In this case, a letter requesting amendment before the search is carried out may be sent to the applicant. Again, the letter should set a date for response and should clearly set out what the search examiner’s action will be if no satisfactory response is received.
The examiner may refer to the Code of Practice in a letter requesting action or amendment before search. However, it should be noted that non-compliance with the Code of Practice is not in itself justification for a report under s.17(5)(b). [SC16 should be used when referring to the Code of Practice at the search stage, inserting the number of the relevant point of the Code].
[If the application is withdrawn and a refund of the search fee is requested, the request should be referred to the examiner by formalities. The request for a refund should be accepted unless the period specified for response to the ABS/ABCSE letter has expired and the examiner has already initiated work on a search report (under either s.17(5)(a) or (b)).
b) Report under s.17(5)(b) that a search would serve no useful purpose
If the examiner has determined that a search would clearly serve no useful purpose in relation to making an application for a UK patent, and either an ABS letter is not considered appropriate, or a letter has been issued and no satisfactory response has been received, then (unless the Rohde & Schwartz procedure is adopted) he should report this in a letter to the applicant under s.17(5)(b). The letter should be accompanied by an examination opinion (see 17.83.3) (for a search) or an abbreviated exam report (for a CSE – see square brackets of 17.94.11 and 18.47.2), outlining the reasons why the search would serve no useful purpose. If, having considered the facts of the case, the examiner feels that issue of an examination opinion is inappropriate, the reasons for not performing a search should instead be detailed in the search letter. For private applicants either an examination opinion should issue or alternatively the letter under 17(5)(b) should provide a brief explanation of the reasons why the search would serve no useful purpose (reports under 17(5)(b) to private applicants will be relatively rare as ABS or ABCSE action will usually be most appropriate in the first instance, see 17.94.5-17.94.9). In all cases the applicant should be informed that if amended claims are submitted, then the examiner will reconsider whether a search can be made.
If, following amendment, the search examiner still considers that a search would serve no useful purpose, then he should avoid entering into lengthy correspondence at this stage and should suggest that the matter is dealt with at substantive examination or the applicant should be offered a hearing. If the application is unsearchable because it lacks patentability, the hearing may deal with that substantive matter too - see 17.98-17.98.1.
[When no search has been made because one would have served no useful purpose, this should be recorded on the internal search report through the Field of Search entry on PROSE, which will transmit this information into COPS.]
[The report under 17(5)(b) should take the form of letter SL2 and be accompanied by an OPINION document (In private applicant cases, SL2PA should be used and the OPINION document is optional. If an OPINION document is issued, the SL2PA letter and checklist should be modified to refer to the OPINION document. If no OPINION document is issued, an explanation why the search was not completed should be included in the SL2PA). In combined search and examination cases SE2 (SE2PA) should be issued along with an abbreviated examination report including a brief explanation of the reasons why no search has been performed. These letters offer the applicant the opportunity to submit amended claims. For further details on the procedure where combined search and examination is requested but the search would serve no useful purpose, see 18.47.2 ]
[No external search report should issue, not least so that Formalities can rely on the absence of an external search report on file as a signal that any new or amended claims should be referred to the search examiner (see 16.18). Insofar as no search report will have issued no search report should be included with the published A - document.]
[For a search or CSE on a case which has not been published, a response to a report under 17(5)(b) would preferably be considered within one month. This is because if the examiner decides to carry out a search as a result of the response it is preferable that the application is published with the search report. For a CSE on a case which has been published, a response should be considered within the usual amendment target; if a search is required, it should also be completed within this timescale and preferably at the same time as the consideration of the response.]
[For a search, if a response to a report under 17(5)(b) does not convince the examiner that the claims are now searchable, the examiner can respond by way of the SL6 letter. The SL6 can be edited to include brief reasons, although lengthy correspondence should be avoided. If a hearing takes place at this stage, a s.18(3) report can be issued as a pre-hearing report (see 18.79-18.80.1). If such a response is received on a CSE then it should be processed in the same way as a normal amendment, i.e. with further examination reports issued, culminating in the offer of a hearing if necessary.]
If, following a report that a search would not serve a useful purpose, searchable amended claims, or observations which convince the search examiner that a meaningful search is possible in respect of the original claims, are received before the application has entered the actual publication cycle under s.16, then the search should be carried out. If no response to such a report has been received by the time the application is due to be sent for publication by the search examiner (see 16.31) then, provided the application has not been refused following a preliminary objection (see 17.96.1-17.96.4) it should be sent for publication in the usual way. The front page of the published document will indicate, in the place provided for documents cited, that no search was possible. If a response enabling a meaningful search to be made is received after the application has been sent for publication, the search should be carried out as soon as practicable in order to give the applicant as much time as possible to decide on his subsequent course of action. If the application has been sent for publication but it has not entered the actual publication cycle then a search may be carried out as normal.
[The amendments should be added to the dossier by Index and Scanning and annotated appropriately, and a PDAX message sent to the examiner.]
[If a search is subsequently performed the search examiner should create a fresh internal search report and an external search report. A report of a search in respect of amended claims should be accompanied by letter SL3 (to which SC13 should be added if there is plurality of invention) together with a copy of any citations (see 17.104.1). The search should normally be carried out as soon as possible; if the search is carried out before the case is picked for publication, the Examination Support Officer will add a “P” to the external search report in the table of contents. However if COPS has selected the application for publication from those in the A-publication queue when the amended claims are placed on the file, the search on the amended claims should be deferred until after publication. In these circumstances the amended claims should normally be put on the file at Publishing Section by the publication liaison officer, and will be published if the preparations for publication are not complete (as determined by 16.02).]
No refund is made following issue of a report under s.17(5)(b) indicating that no search has been performed on the grounds that it would not serve a useful purpose (see also 17.06). As discussed above, if it is considered likely that the applicant will wish to withdraw and seek a refund once he becomes aware of the search examiner’s opinion, then the search examiner should consider sending an ABS letter instead. However, if it appears that the applicant would be fully aware of the possible objections, then there is little to be gained by adding an extra round of correspondence.
c) Report under s.18(3) before search (“Rohde & Schwartz”)
Issuing an examination report under s.18(3) before a search is conducted is very rarely considered to be appropriate, because this option will normally result in a hearing officer having to issue a decision, but it may be done in exceptional circumstances. This approach may only be considered where the search examiner is in no doubt before a search is commenced that the, or each, invention claimed is not patentable by virtue of s.1(1)(c) or (d), or s.14(3), and is equally convinced that the disclosure is such that it could not possibly support any allowable claim. A report under s.18(3) may be issued even though no request for substantive examination has been filed and regardless of whether the other requirements of s.18(1) are met - see Rohde and Schwarz’s Application  RPC 155.
Where such action is taken, no report should be made under s.17(5). Instead, a reasoned report under s.18(3) should be made giving the search examiner’s opinion that the application should be refused. This report can be brief in stating the reason why the application should be refused. For example, it is not necessary to write a detailed argument on why an invention that is contrary to physical laws will not work when this is clear from reading the application. The report should add that if the application is withdrawn a refund of the search fee will be made (see 17.06). If the matter is not resolved (either because the applicant submits arguments which do not dispose of the matter or because there is no response) then a hearing should be offered and a hearing officer’s decision issued in the usual way. In order to efficiently resolve the objection resulting in issue of the s.18(3) report, examiners should avoid entering into protracted correspondence with the applicant.
[ The examiner should consult their group head before issuing a report under s.18(3) before search. Where an examiner issues a report under s.18(3) before search, a period of four months should be set for reply in the first instance. A “Diary” entry should be created in the PD electronic diary so that the application will return to the examiner in 6 months (to take into account a possible two month extension of the reply period). A diary entry should also be created for any subsequent exam reports. Each diary entry should state the examining group after the application number in the format GB0000000.0 – EX00, and a corresponding diary ‘action’ should also be added to the PDAX dossier. ]
[ At the appropriate time, in order to avoid protracted correspondence, a letter should be issued by the examiner saying that he is minded to refuse the application and offering a hearing. The applicant should be given one month to indicate whether he wishes to be heard in the matter, a diary entry should again be created so that the application returns to the examiner even if no response is received. If the applicant does not wish to heard (or does not respond), then a hearing officer will decide the matter on the papers. ]
[ It should be noted that if, after consulting a group head, an ex-officio objection is made under s.18(3) in the circumstances mentioned above, the report containing that objection is considered to be the first report under s.18(3) for the purposes of determining the compliance period. If the application does proceed to normal substantive examination, every effort should be made to ensure that substantive examination is not unduly delayed since the applicant is deprived of the potential benefit of r.30(2)(b). ]
An ABS letter may be sent to an applicant which effectively gives the applicant the choice of withdrawal with a refund of the search fee, a report under s.17(5)(b) or a s.18(3) report before search. In this case, the search examiner may inform the applicant before a report under s.17(5) is issued that whilst the application would seem to give rise to an objection under s.1(1)(c) or (d), or s.14(3), the matter will not be pursued prior to substantive examination unless within two months the applicant indicates a wish to have the matter resolved immediately. If the applicant so indicates, the objection should be pursued under s.18 as indicated in 17.96.1. If the applicant does not take the opportunity either to have the matter settled immediately or to withdraw the application, a report under s.17(5)(b) should then be issued indicating that because no patentable subject matter is disclosed it is not apparent what could be usefully searched, and the application sent to await A-publication in the usual way. There is no entitlement to a refund of the search fee after issue of the search report.
Another situation where an application may be refused without performing a search is on the grounds of estoppel by record where the application is for the same invention as an earlier application which has been refused by the courts or the comptroller, as occurred in Ward’s Applications BL O/143/02 and BLO/055/06.
[ A letter should be issued by the examiner offering the applicant the opportunity to withdraw and have his search fee (and, if paid, the substantive examination fee) refunded (see 17.06). The letter should state that he is minded to refuse the application if no withdrawal is made, and a hearing should be offered. The applicant should be given one month to indicate whether he wishes to be heard in the matter. If he does not wish to heard (or does not respond), then a hearing officer will decide the matter on the papers. ]
No useful search possible: reasons
a) No useful search possible because the invention is obscure
A report under s.17(5)(b) (preceded, if appropriate, by an ABS/ABCSE letter) should generally be made if obscurities in the specification are such as to render a meaningful search impossible, or to make the scope of the invention so uncertain that the search is likely to be incomplete. The search examiner should however avoid entering into dialogue with the applicant or agent regarding possible amendments or about other matters which should be dealt with at the substantive examination stage. No report should be made directing attention to alleged defects or obscurities if, despite these, the search examiner has been able to perform what is reasonably likely to be a complete search.
b) No useful search possible because the invention is not patentable
A report under s.17(5)(b) (preceded, if appropriate, by an ABS/ABCSE letter), or an examination report under s.18(3) before search, should generally be made if the, or each, invention claimed is clearly not patentable by virtue of s.1(1)(c) or (d) (for example if the invention relates to a pure business method), or by virtue of s.14(3) (for example, in the circumstances set out in 4.05 and 14.79. In CFPH LLC’s Application  RPC 5. Peter Prescott QC (sitting as a Deputy Judge in the Patents Court) confirmed at paragraph 96 that it will not always be necessary for an examiner to carry out a search before he or she can determine whether the invention is new and not obvious (and susceptible of industrial application) under the description “an invention” (in the sense of Article 52): “In order to identify what is the advance in the art that is said to be new and nonobvious the Patent Office may rely on prior art searches. But in my judgment it is not invariably bound to do so. It will often be possible to take judicial notice of what was already known. Patent Office examiners are appointed because they have a professional scientific or technical training. They are entitled to make use of their specialist knowledge. Of course the letter of objection will state the examiner’s understanding of the technical facts in that regard, and thus the applicant will have the opportunity to refute it in case there has been a mistake.”
Furthermore, in Shopalotto.com Ltd’s Application  RPC 7 (see 1.22), it was held that the question of whether the claimed invention includes a contribution outside the list of excluded subject matter may be answered notwithstanding the fact that there has been no novelty search in relation to the invention. Pumfrey J pointed out the distinction between the scope of contribution and the area in which the contribution is made and added that there comes a point where the relevant matters are so notorious that a formal search is neither necessary nor desirable and the Comptroller is entitled to use common sense and experience.
It should be noted that “useful purpose” means serving a useful purpose in relation to making an application for a UK patent. A search does not serve a “useful purpose” within the meaning of s.17(5)(b) merely because it may help the applicant with a decision on whether to file in a country in which the equivalent application is not excluded from patentability.
17.99-17.99.2 [Moved to 17.96.1-17.96.3]
17.99.4 [Moved to 17.96.4]
17.100 [Moved to 17.94.2]
c) No useful search possible when the invention is not novel or is obvious
Whenever the search examiner takes the view that an invention claimed is not novel or is obvious, documents demonstrating this should be selected and cited if this is at all possible. If, exceptionally, this view can be supported from common general knowledge but the search examiner considers that it would be impossible, or that a disproportionate amount of time would be necessary, to find such documents, a report to this effect should be made under s.17(5)(b), preceded, if appropriate, by an ABS letter. In general, such a report will not be appropriate in respect of any claim when a search has been made on another claim and the claims are considered to relate to a single inventive concept. Thus, for example, independent claims and claims dependent upon them should be listed as having been searched when they fall within the scope of the search made (see 17.72.1).
The search examiner should also check, and if necessary reframe, the abstract (see 14.169-14.191 and classify the disclosure on both the IPC and CPC (even if an abstract has not been filed). The search examiner must therefore study the specification in whatever detail is necessary to carry out these tasks, in order to minimise errors on the published document, even though this may be time-consuming, particularly where relatively deep indexing systems are in use. The classification and/or index should normally be assigned in the light of the search, and classification of what is obviously old should be avoided. All significant technical disclosure should be classified and/or indexed, including any second or subsequent inventions, even though it may not have been the subject of a search and even if the same disclosure in a co-pending application is being given the same classification/index. The search examiner must see that any subclass examiner who may need to assign a supplementary classification has been consulted, and should make a record of such consultation by the addition of a minute to the PDAX dossier.
[The abstract title should be entered into the ‘Abstract Title’ field in the Details area on PROSE, and the figure to be used with the abstract should be entered into the ‘Fig. Ref.’ field as well as on the Abstract itself. ClassTool should be used to enter IPC and CPC classification data.]
While the search examiner should not check those matters which are the responsibility of the formalities examiner, if he comes across an apparent omission or error on the part of the formalities examiner he should draw it to his attention.
[After preparation of the report, a message should be sent to the Examination Support Officer from the examiner, either directly or via a message to their Revising Officer, depending on whether the examiner is revised or not. The Examination Support Officer will then print the reports and covering letters, and ensure that the relevant documents are imported into the PDAX dossier. The printed reports and covering letters should be placed together with any cited documents and sent to the post room for issue to the applicant.]
[ (For the issue of the search report on a divisional application, see 15.41-42 .]
r.27(2) is also relevant.
Issuing copies of citations is at the discretion of the Comptroller (see rule 27(2)). The default is for search reports issued by the Office to be accompanied by a copy of any non-patent literature (NPL) cited and an English language abstract of any cited foreign language patent document or NPL citation. Applicants are able to request, on Form 9A, that a copy of any cited patent document is also provided. The applicant will not be able to later ‘opt in’ to receive paper copies of patent documents. However, the option remains for a paper copy of any foreign language document to be issued to the applicant should they have difficulties obtaining a copy on the Internet. In general full copies of citations are provided except for the rare case that the cited document is of such a thickness that provision of only the most relevant sections is justified. In citing an NPL disclosure which cannot be obtained in time, the search examiner may initially rely on an abstract only. However a copy of the source document should be obtained and sent to the applicant as soon as possible. Where a cited document is not in English, machine translations of the cited document should not normally be issued to the applicant because they cannot be relied upon for accuracy and (depending on the source) there may be contractual and copyright restrictions. If a free translation can be obtained (e.g. through the website of another patent office), reference may be made to this source e.g. by URL. If the examiner feels it is nevertheless necessary to send a machine translation (and there are no copyright or contractual restrictions to doing so) a clear explanation of the status of the translation should be provided. In particular, it should be explained that the translation is machine-generated and therefore should not be relied upon as being definitive, but is being provided to be helpful for the applicant. Conversely, the search or substantive examiner may use a machine translation which he is unable (e.g. for contractual or copyright restrictions) to share with the applicant. In such cases, if the applicant disagrees with the examiner’s interpretation of the disclosure then it is ultimately the applicant’s responsibility to provide an explanation of his view. It should be remembered that it is the foreign language disclosure itself which forms the citation, not the translation. Translations are merely used to assist in understanding the prior art.
[The situation regarding abstracts is as follows:
(a) if the search examiner does not have a copy of the NPL source document, (whether because it is not needed or it is unavailable), then the abstract alone issues to the applicant;
(b) if the search examiner has a copy of the NPL source document as well as the abstract and the source document is not in English, then both the source document and the abstract are copied to the applicant.
(c) abstracts of any foreign language patent documents are issued to the applicant. Where the applicant has requested copies of all citations the foreign language patent document will accompany the abstract.
[In the case of cited documents with over 50 pages the search examiner should generally indicate for the benefit of the Examination Support Officer which pages are to issue (the front page should always be included) by annotating the checklist. The option remains for the search examiner to direct that a full copy should issue, if deemed necessary.]
[If a machine translation is to be issued to the applicant the copyright notice from the provider should be included. K-PION translations should not be provided; however a reference to the online KIPRIS service – which is free for use by the public - may be added to the search report (e.g. by URL).]
[The search examiner should record the appropriate COPS processing status in PROSE (see 16.30).]
Documents found or considered in full after issue of the search
The applicant should be sent a copy (or copies) of any non-patent literature (NPL) (and patent documents only when they have been requested on Form 9A) which the search/substantive examiner has become aware of after issue of the search report and which would have been included in the report had it been found during the search, or considered in full after citing the abstract in the search report (see also 17.83.1 and 17.75 square bracket note (d)). Where a copy of the patent document is not to issue, the applicant should nevertheless be informed of the citation. If the search examiner becomes aware of or considers the document before substantive examination, then the applicant should be immediately notified of the document so that he may decide whether to proceed with substantive examination, although this will not normally be done if it is a newly published document added to the files since the date of the search. A document found after issue of the search report and after the filing of amended claims and which anticipates the original rather than amended claims should nevertheless be communicated to the applicant. If the date of completion of preparations for publication has not passed, an amended external search report should be issued and the new document will be included on the front page of the published application. If the date of completion of preparations for publication has passed, an amended search report is not issued and the new document will only be mentioned on the front page of the specification published after grant (see also 18.85).
[When a search examiner becomes aware of a citation after the external search report has issued, the publication status of the application should first be checked on COPS using the “Display Processing Status” (DIS PRO) function. If the application is not yet ready for A publication, the search examiner should prepare amended internal and external search reports, and enter the new citation using PROSE. Depending on the circumstances in which the citations came to the notice of the search examiner, the Field of Search may, of course, also require updating on the internal and external search reports. The amended external search report, together with copies of the additional citation (see 17.105.2), should be issued under cover of SL5B, in which the new citation is identified. The amended search report should also be identified as such. The date of search on the amended report should correspond with that on the original report, but a suitable qualification may be added if necessary eg the date of any additional search. The Examination Support Officer should remove “P” from the original search report in the PDAX dossier in question but leave as open to public inspection, and mark the new search report as “P” allowing it to be published.
[When a search examiner’s attention is drawn to an error in an external search report after the report has issued but before preparations for A-publication are complete (eg a citation has been wrongly identified), a similar procedure to that outlined above should be followed, except that the aim is to produce a corrected report for issue to the applicant, together with a copy of the correct citation(s), where appropriate (see 17.105.1), under cover of SL5C and for publication with the A-document, and to correct any corresponding error in the internal search report form. [If it is too late for a corrected external search report to be published with the Adocument then SL5D should be issued (together with a copy of the correct citation(s) where appropriate (see also 17.105.1)), and the formalities examiner should be advised to issue an erratum in respect of both the corrected external search report and any corresponding errors on the A front page (see also 16.33). After the application has been A-published, the citations should be corrected in COPS (using the “Record Citations” (REC CIT) function).
[If an applicant or agent is warned by telephone that an amended or corrected report is being issued it is not necessary to send a telephone report as well as the appropriate letter. See [18.11 for the procedure adopted if the substantive examiner becomes aware of a citable document when substantive examination is due.]
Where the search examiner is made aware by the applicant of a document that has been cited in a search report for a patent application on the same invention made in another patent office, consideration of the documents cited should be deferred until substantive examination. An amended search report should not be issued (see 18.64 for when substantive examination has already been performed).
[The foreign search report or letter received from the applicant mentioning the cited documents should be placed on the open part of the file. A minute should be added to the PDAX dossier and the appropriate PDAX message sent to the substantive examiner.]
Documents cited by the IPO after issue of the search report are copied to the applicant where appropriate (see 17.104.1). In the case of international applications under s.89, copies of additional documents cited by the UK search/ substantive examiner are provided but not copies of the documents cited in the International Search Report, Supplementary International Search Reports (if any), or the International Preliminary Report on Patentability.
[It is the examiner’s responsibility to ensure that the Examination Support Officer is instructed to send copies of newly cited documents to applicants: where NPL documents are cited for the first time at the substantive examination stage; where patent documents are cited for the first time at the substantive examination stage and the applicant previously requested that they be sent paper copies of cited patent documents by ticking the box on Form 9A; where a source document for a cited abstract has been obtained; where the wrong document has previously issued; where on an international application under s.89, documents are cited by the UK examiner which were not included in the international search report.]
|If it appears to the examiner, either before or on conducting a search under this section, that an application relates to two or more inventions, but that they are not so linked as to form a single inventive concept, he shall initially only conduct a search in relation to the first invention specified in the claims of the application, but may proceed to conduct a search in relation to another invention so specified if the applicant pays the search fee in respect of the application so far as it relates to that other invention.|
Plurality of invention
The question as to whether there is unity of invention (see 14.157 to 14.168) should always be considered whenever there are two or more independent claims in addition to any omnibus claim (but see 14.164); the answer to this question will usually be quickly apparent and should always be recorded on the internal search report (see 17.88.1). When it is clear that the claims relate to more than one invention or inventive concept then the search must be directed to the first invention specified in the claims, which will generally be the invention of claim 1 or of a group of claims whose scope embraces claim 1 (see also 17.37). Section 17(6) allows no discretion in this matter. The search must be directed to the first invention encountered when the claims are read in numerical sequence (see Hollister Inc’s Application  RPC 10), even if the claims are filed out of sequence. If it only becomes apparent after a partial or full search that unity of invention does not exist, this lack of discretion prevents the acknowledgement, in the “claims searched” or in the citation table, of any search other than that relating to the first invention. Nevertheless, prior art common to the first invention and any other invention(s) can be cited as background art relevant to the first invention if it is considered desirable in establishing the grounds for noting a plurality of inventions (see 17.80). The examiner may advise the applicant of prior art relevant to further inventions in a supplementary report in the search letter, but should make clear to the applicant that the further invention has not been searched. If the first invention of a divisional application is the same invention as in the parent, see 15.38.
[The extent and results of a search, as they relate to invention(s) beyond the first, should be recorded on the internal search report for the benefit of any search examiner called on to search the further invention(s) (see 17.86).]
As noted above, s.17(6) requires the examiner to search this first invention. However if the first invention claimed is excluded under s.1(2) but later claims define one or more not excluded inventions, the examiner is able to search the first of these (see 17.94.2). This is because s.1(2) is clear that matter which is excluded under that provision is not considered an “invention” at all. If it is clear that the first invention is excluded under s.1(2), this should be reported to the applicant in the search letter, exam opinion or CSE examination report as appropriate.
r.27(3), COP is also relevant.
When the search examiner has reported that the claims relate to two or more inventions not linked by a single inventive concept, the comptroller must notify the applicant of this fact. Those claims or groups of claims which are considered to constitute separate inventions should be identified in an accompanying letter or the examination report if the search and substantive examination are combined. In the latter case the report should make it clear that the notification of more than one invention is made under s.17 to keep open the opportunity for the second and any further inventions to be searched under s.17 (see 18.41). The letter or report should also indicate that the search has been directed to the first of the inventions. If it is not possible to state precisely how many inventions are specified in the claims, but it is nonetheless clear that unity of invention is lacking, for example in a case with a large number of overlapping in dependent claims, or where there are obscurities in the claims, or where a lengthy analysis of the claims, more appropriately done at substantive examination, would be needed, a report to this effect may be made. Where it is not practicable to identify all the claims encompassed by the first inventive concept, claim 1 of the application may be searched by the search examiner. Where excessive amounts of time would be incurred to identify the exact number of inventive concepts in an application, a clause may be inserted into the search letter, asking the applicant to identify the separate inventive concepts when requesting a further search under s.17(6).
[Plurality of invention should be indicated by the addition of SC13 to SL1 before the paragraph about other search results or by adding RC6 and RC6A to a combined search and examination report issued with SE1 or SE4 (see 15.41).]
In some cases it will be evident why the search examiner has reported that there is plurality of invention. Where this may not be immediately apparent, for example where prior art found during the search demonstrates that the matter linking two or more claims is not novel or inventive, or where a single claim embraces more than one invention (see 14.164 ), a specific report to this effect should be included in the letter or examination report accompanying the search report. Any such prior art should be designated A in the search report as described in 17.80, unless it is also relevant for novelty or inventive step in respect of the searched invention.
If a group of claims formally has unity of invention because one of them embraces in scope all the others, and it transpires that the invention of this claim is not novel or inventive, the search examiner should if practicable complete the search on this claim. If such a course is clearly not reasonable, for example if this claim is unduly broad and speculative and is apparently merely a device for giving an impression of unity of invention, then the search examiner should decide what appears to be the most efficient course. The search examiner may decide to read the main claim as notionally amended by combination with each of these dependent claims and search the invention which is then encountered first; in such a case the search examiner should indicate in the letter accompanying the search report that there is plurality of invention and add a brief explanation of the reason for this (see also 14.164). Alternatively he may perform a partial search in respect of the main claim, or, if the substance of the main claim is so blatantly well known or is so nebulous that search for it would serve no useful purpose and the claim is clearly an artificial attempt to give an impression of unity to differing inventions, he may defer the search altogether (see 17.94.5-17.94.9).
r27(4), r27(4), r27(4), r27(4), r.108(1) is also relevant.
If the search examiner has reported plurality of invention, a further search may be requested in respect of a second or subsequent invention which was present in the claims at the time of the main search. However, further searches under s.17(6) are carried out at the comptroller’s discretion. A request for a single further search should normally be fulfilled. However, where multiple further searches are requested, the examiner should use their judgement to decide how many to perform. The filing of a large number of further searches is undesirable – for efficiency and fairness the examiner should consider carrying out fewer searches than requested. (Further searches are not to be confused with supplementary searches under s.17(8) of an application which has been amended or corrected, see 17.120-17.123). A further Form 9A (or Form 9 see 17.02) and search fee must be filed for each such search requested, and this must be done at least three months before the end of the compliance period (including any extensions). A form 9A filed for a further search request is not subject to additional excess claims fees. The period for filing the form and fee may be extended at the comptroller’s discretion.
[Where fewer searches have been carried out than have been requested, this should be noted in a minute. The applicant should be made aware that the examiner has not carried out (all of) the requested further searches, and that a refund will be issued on any unsearched Form 9A. The examiner should send a minute to Formalities asking them to refund the fee.]
[A further search should normally be carried out concurrently with “primary” searches received in the group at the same time, whether or not the application has been published. During the 5-week period of the publication cycle, COPS is locked and so won’t accept any changes to bibliographic data or processing status. It is therefore not possible to generate an internal or external search report in the usual way (as nothing can be entered into the “citation” and “field of search” tables), and so if the further search is likely to be due during the publication cycle it is advisable to issue it before it enters the cycle. The initial search letter (eg SL1 or SE1) provides (under the heading “publication”) an estimated date after which the preparations for publication will be completed – the case will generally enter the publication cycle shortly after that date, and so this may be used to estimate the date from which COPS will be locked. Of course, the actual searching can be done during the publication cycle, and the case remains available on PDAX. If the search is urgent (for example if it has been accelerated) and so has to be done during the publication cycle, then the search results will need to be communicated to the applicant without completing a conventional search report. This may be done by creating a miscellaneous letter giving information about the claims searched, the citations and the field of search as free text, and enclosing copies of any citations. The case should then be diaried to a date after publication and a full search report created at this time in the usual way.]
[A report of a further search should be accompanied by letter SL4 and a copy of any additional citations (see 17.104.1). When further search is carried out before Apublication the resulting external search report will be published together with the original external search report. To ensure that this happens, the Examination Support Officer imports the later search report and marks it as “P” in the PDAX dossier allowing it to be published. The Examination Support Officer will then retrieve the sub-file and add a copy of the later search report, again marking the report as “P” allowing it to be published.]
[The search examiner should not respond to a request for a further search under s.17(6) by issuing an ABS letter (see 17.94.4-17.94.9) requesting amendment or other action before search]
If carrying out searches on more than one invention simultaneously the results of all the searches may be reported on a single search report providing it has been made clear in a letter or report what the different inventions are and the search report makes clear to which claims each document is relevant.
The practice of filing more than one Form 9A and search fee before the initial search report has issued is undesirable, since it amounts to an admission that the claims have been filed in the knowledge that they do not comply with s.14(5)(d). In this situation the normal course of action should be to search only the first invention. In which case, for efficiency, the search examiner may also decide to assess plurality only to the extent needed to search the first invention. However, the search examiner has discretion to carry out all searches and fully assess plurality. Any assessment of plurality should be made without reference to the applicant’s actions. If multiple searches are carried out the search letter heading should be modified to refer to both section 17(5) and 17(6). If after carrying out a full assessment of plurality it turns out that the claims have unity of invention, a single search should be made and the fees for the superfluous Form(s) 9A should be refunded.
[Where the search examiner has carried out fewer searches than have been requested, this should be noted in a minute. The applicant should be made aware that not all requested searches have been completed, that unsearched Form 9As will be refunded, and (where applicable) that a full assessment of plurality has been deferred. The examiner should send a minute to Formalities asking them to refund any unsearched Form 9A fees.]
When Patents Form 9A (or Form 9, see 17.02 is filed requesting a further search and the relevant subject-matter is dealt with by an examining group other than that in which the original search was performed, the further search can be carried out in the other group if desirable for quality and/or efficiency.
|After a search has been requested under this section for an application the comptroller may at any time refer the application to an examiner for a supplementary search, and subsections (4) and (5) above shall apply in relation to a supplementary search as they apply in relation to any other search under this section.|
A supplementary search will generally be necessary as part of the substantive examination in order to detect any relevant documents which have been published since the original search (although see 89B.12-89B.12.3 for specific points relating to s.89 cases). This “top-up” search will also normally include a check for published equivalent cases, both to identify any application which is potentially in conflict with the application in suit (and which might therefore give rise to action under s.18(5) or s.73(2) – see 18.91-18.97.1 and 73.05-73.12, and to identify any further citations raised against these equivalents see 18.10.1-18.10.4). The examiner may take into account how closely the claims of the equivalent application resemble those of the application in suit, and the apparent relevance (from the category, if stated) of the equivalent’s citations. A supplementary search of this type may not be necessary where the initial search is performed at such a time as to be effectively a “top-up” search, for example where the first search on a divisional is performed later than 21 months from the priority date.
Whilst the application of CPC terms to EPODOC abstracts may occur several months later than 21 months from the priority date (see also 17.118), databases should be sufficiently up to date at about 21 months to conduct a search for prior art falling in the s.2(3) field provided that the search relies on IPC terms. Note that in any case, a search cannot be considered complete unless it involves search of both CPC and IPC (see 17.55). Where a priority claim is invalid or relinquished, a top-up search before 21 months from filing may not uncover all relevant s.2(3) prior art because some documents may not yet be published.
Online databases should also be up to date three months from the priority or filing date of an application for prior art in the s.2(2) field. A top-up search should cover the period of at least 6 months before the original search date, to account for the time taken to classify published documents to CPC collections. If a document found lies in the field defined by s.2(3), consideration should be given as to whether there may be an earlier-published equivalent (see also 17.90). The examiner should ensure that a complete search in respect of at least s.2(2) art has been made before grant because only applications forming part of the s.2(3) field can be cited under s.73(1) after grant.
[If a priority date has already been determined as a result of the practice described in 18.15, then the examiner should take this into account when deciding when to carry out a top-up search for s.2(3) art. That is, if a priority claim is valid, then databases should be sufficiently up to date at about 21 months after the priority date. If the priority claim is invalid then the top-up for s.2(3) art should be delayed until at least 21 months after the filing date. If the priority date has not been determined, then the examiner should bear in mind that the priority claim may be invalid when carrying out a top-up search for s.2(3) art. The examiner should then decide the most effective course of action, which may be for example to: delay the top-up until 21 months from filing, check the priority claim, or continue on the basis that a top-up 21 months from the declared priority is appropriate. ]
[A top-up internal search report should be generated on PROSE to record details of the updated search. It should normally be sufficient to update a search at the first substantive examination stage only, unless that examination occurs very early (eg as a result of combined search and examination or a request for accelerated examination). The search statement used and the files searched need be recorded only if different from the search being updated. However, a record should always be made of the search strategy used, even if it is the same as the strategy used in the original search. This can either be recorded in the top-up search report or in an OSS (Online Search Strategy) document in PROSE. Any newly-cited documents should be recorded on the report and the Examination Support Officer instructed to issue them see 17.104.1, 17.105.2. If the search is further updated before grant, a further top-up internal search report should be produced, and the Examination Support Officer should be instructed as above as to which documents are to issue if further citations are found. A further updating search is necessary only to the extent that the first updating search was incomplete.]
[When conducting a top-up search the examiner should use the FAMI+REFI preparation on EPOQUE to identify equivalents and the documents cited against them. In addition, online file inspection may provide further details of the significance of a citation; see 18.10.1-18.10.4. A note should be made on the top-up search reporting whether or not such citations have been checked and – if not – the reasoning why not.]
[The FAMI+REFI preparation will also identify the CPC classifications that have been applied to the case by the EPO/USPTO. If this check reveals CPC classifications that were not searched during the original search, these should be recorded in the internal top-up search report and the examiner should consider whether the search needs to be extended accordingly. If the examiner considers extension of the search is not necessary, they should include an explanation on the top-up search report.]
[Patent examiners should only use the top-up internal search report for notes relating to the search. Any other notes, for example recording the examiner’s decision to drop an objection, should be added as a minute to the PDAX dossier.]
[If a top-up search is carried out at the same time as finding the application in order for grant, the examiner should create an internal search report (ISR-TOP) and associated checklist. The examiner should then send a “’ISSUE RELEVANT EL34 (OR EL3) LETTER AND TOP UP SEARCH’” message to the EA GRANT mailbox as described in 18.03.6, 18.81 and 18.86.2)]
This supplementary search may be deferred if thought appropriate, for example if much relevant prior art has already been cited and no amendment has yet been made, or if the first examination report is only a preliminary one (see 18.48), or if the claims are obscure; a note to this effect should be made on the internal search report and the applicant informed accordingly.
It will also be necessary to perform a search under s.17(7) if the search has been wholly or partially deferred under s.17(5), or if it is discovered on examining the specification that the search already performed under s.17(4) was deficient, for example if it transpires that the true scope of the invention is broader than had been thought, or if the specification has been amended in a way not anticipated by the original search strategy (see also 17.120-123 regarding the possibility of a fee for such a supplementary search). The course and results of such a search should be recorded on a top-up internal search report.
[The Examination Support Officer should be instructed to issue any newly-cited documents (see 17.104.1, 17.105.2.
When an application is sent to grant before 21 months or the substantive examiner is not otherwise satisfied that the supplementary search is complete for art in the s.2(3) field, the application should be diaried for return at some appropriate date after grant for the search to be completed and the applicant informed accordingly. If a document forming part of the state of the art by virtue of s.2(3) comes to the notice of the substantive examiner after the issue of a report under s.18(4), action may be taken under s.73(1) after grant (see 73.02-73.03).
[To ensure the applicant is informed, the examiner should send a minute to the EA asking them to include the relevant post grant top-up search clause in the intention to grant letter.]
[The examiner should create an entry in the PD electronic diary system and add the diary action to the dossier in PDAX. The diary entry should state the examining group after the application number in the format GB0000000.0 – EX00.]
[Online databases will usually be sufficiently up to date in respect of s.2(3) art in addition to s.2(2) art at about 21 months from the priority date of the application. Examiners should use their judgment as to whether the top-up search made is likely to be complete.]
[A top-up internal search report (ISR-TOP) should be generated on PROSE to record details of the updated search. Any additional fields of search or documents should be recorded in the free-text areas of the ISR-TOP. A checklist for the post grant top-up search report should be generated instructing the ESO to import the ISR-TOP.]
|A reference for a supplementary search in consequence of
(a) an amendment of the application made by the applicant under section 18(3) or 19(1) below, or
(b) a correction of the application, or of a document filed in connection with the application, under section 117 below,
shall be made only on payment of the prescribed fee, unless the comptroller directs otherwise.
Subsection (8) was added by the CDP Act along with s.18(1A). Where, before or during substantive examination, the substantive examiner considers that a supplementary search is necessitated by an amendment or correction in respect of an application, an extra fee is payable under s.17(8) and s.18(1A). This is not to be confused with a further search under s.17(6) at the request of the applicant for a second or subsequent invention which was claimed in the application as filed and identified in the search report, 17.111-114. Section 17(8) applies to amendments made either in response to the substantive examiner’s report o r the applicant’s volition, as well as to corrections.
If a supplementary search is required a request for a further search fee may be considered in the following situations:
i) A correction is made that alters what has to be searched and so necessitates a change to the search statement;
ii) An amendment shifts the scope of the main claim to include features of the description which were justifiably not searched. For example, where searching these features would not have been practical within a single search, or would have required undue additional searching (bearing in mind 17.32), if the search examiner communicated the scope of search clearly to the applicant, a further search fee request may be considered if the amended claims are no longer within the scope of the search. If the amendment could have readily been predicted then a request is unlikely to be justified;
iii) Where a plurality objection was raised in the initial search report, international preliminary search report or written opinion and the applicant deletes the first claimed invention, resulting in claim 1 becoming an unsearched invention. If multiple inventions remain in the application, any searches of later inventions should be dealt with in accordance with s.17(6).
A request for a further search fee is not appropriate in the following circumstances:
i) To overcome an unfortunate choice of search areas or search statement by the search examiner;
ii) When the amended claim remains within the scope of the original search statement;
iii) When the sole reason for the further search fee is that the original search was truncated;
iv) When the sole reason for the further search is a decision by the Examiner to extend the search to more relevant areas. For example, where reclassification has created a highly relevant place not available at the search stage, or other classification terms have been applied to the published document by the EPO;
v) Where the applicant broadens a claim to achieve consistency with the description (for example so that an embodiment falls within the scope of the claim) but there was no comment from the search examiner that the original search was not widened to take account of the description (see 17.37) and the applicant could have reasonably expected such a comment.
r.27(6) is also relevant.
Where action is taken under s.18(1A), see 18.03.2-03.6, and a fee for a supplementary search is paid, it should be accompanied by a fresh Form 9A (or Form 9, see 17.02 completed accordingly. A form 9A filed for a supplementary search request is not subject to additional excess claims fees. A search report is in due course issued reporting the result of the supplementary search.
[The Examination Support Officer should be instructed to issue any newly-cited documents (see 17.104.1, 17.105.2).]