"Office Practice" is the administration of the requirements of the Patent Cooperation Treaty (PCT) and PCT Regulations, using the guidance of the PCT International Search and Preliminary Examination Guidelines, the Administrative Instructions under the Patent Cooperation Treaty, the PCT Applicant's Guide, Exam Bulletins and the ISA & IPEA Training and Reference Manual.
1.1 Subject matter issues are appropriately addressed.
Subject matter issues include:
- lack of statutory subject matter or utility;
- inadequate description of the invention;
- introduction of new subject matter;
- lack of unity; and
- lack of support for claims.
1.2 Search and/or examination is reserved when appropriate.
Search and/or examination may be reserved (completely or partially) when deficiencies in the specification make it impractical to issue a comprehensive report. Situations where reservation may be justified include:
- the specification is so insufficient or unclear that a meaningful search and/or examination cannot be carried out;
- the claim(s) are directed solely to non-statutory subject matter;
- claimed subject matter is not properly supported by the specification as filed or as corrected by incorporation of reference;
- a lack of unity exists in the claims except if little or no additional effort would be required for searching all of the claimed groups of inventions; and
- new subject matter is introduced (the new subject matter is not examined).
When examination is reserved, the extent of the reservation and the reason are clearly stated in the International Search Report (ISR), Written Opinion (WO) [Ch I or Ch II] or IPRP. In instances of lack of unity, the applicant is informed that a lack of unity exists and they are invited to pay for the search and examination of additional identified inventions beyond the first/main invention identified. The first/main invention will always be searched and examined, along with any others for which additional fees have been received.
A useful International Search Report (ISR) is one that contains all the necessary citations needed to either draft a set of novel and inventive claims, or which completely anticipates the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.
2.1 An appropriate search strategy is adopted according to the Patent Cooperation Treaty (PCT) Guidelines
An appropriate search strategy, where a meaningful search can be carried out,
- identifies the inventive concept(s) underlying the claims and deals with a plurality of inventions, where appropriate;
- relies on a search of a breadth to generate documents relevant to the novelty and inventive step of the inventive concept(s) or to which they might reasonably be expected to be directed after they have been amended;
- uses search fields and search methods appropriate to the search, with priority given to those fields where the probability is highest of finding relevant documents;
- always searches on inventor and applicant names;
- pays regard to the amount of searching that is reasonable and practicable;
- makes effective use of earlier search results when appropriate; and
- is properly documented according to office practice.
2.2 Search results and necessary information are recorded and reported clearly
The ISR lists relevant documents, which are selected on the basis that the applicant is provided an overview of the prior art, including all particularly significant documents, and their family members on the Patent Family sheet, while avoiding undue repetition.
- identifies search information including database(s), search strings including the IPC symbols, keywords and number of hits documented, relevant documents, claims not searched and the supporting rationale;
- accurately categorises the documents (X, Y, P, etc.) in relation to each claim, and the categories are consistently applied in the accompanying written opinion;
- when only "A" documents are cited in the ISR, a short discussion on the most pertinent aspects of said "A" documents should be provided in WO/IPRP (Box V) in order to show how the claimed invention is distinguished from the prior art;
- identifies relevant passages in the documents;
- if an English family member exists and time permits includes it and its relevant passages;
- in instances of lack of unity, indicates claim groups with supporting rationale;
- in instances when limitation has been placed on the search, indicates what has been searched with supporting rationale.
2.3 Novelty and inventive step defects are appropriately addressed.
Novelty and obviousness
If the examiner has reasonable grounds to believe that the invention lacks novelty or inventive step:
- the most relevant prior art is listed in the ISR and WO/IPRP (Box V);
- a summary of the relevant teachings of the prior art is provided in Box V of the WO/IPRP;
- each lack of novelty defect is identified under PCT Article 33(2) in the ISR and in Box V of the WO/IPRP; and
- each lack of inventive step defect is identified under PCT Article 33(3) in the ISR and in Box V of the WO/IPRP.
When identifying a lack of novelty or lack of inventive step defect, each claim must be assessed in light of the prior art. Emphasis should be placed on the independent claims. For dependent claims, the level of detail may vary depending on the number of claims and the nature of limitations introduced in the dependent claims.
3.1 Application formalities and observations are appropriately addressed.
Application form and content defects include (non-exhaustive list):
- the description shall not contain any drawings;
- all pages contained in the application shall be numbered in consecutive Arabic numerals; and
- terminology and the signs used in the description shall be consistent throughout the entire application.
Application clarity and support observations include (non-exhaustive list):
- the description does not make mention of feature claimed;
- references made to the description/drawings for completeness and clarity, rather than claiming the subject matter in explicit terms; and
- a claim containing a negative expression.
Note: Clarity matters do not extend to minor defects of grammar or spelling which do not lead to ambiguity.
A useful Written Opinion (WO) or International Preliminary Report on Patentability (IPRP) contains clear explanations of the basis of the opinion, how the cited documents are applied to the claims and general observations on the application.
4.1 Examination is carried out consistent with the PCT Guidelines
- A WO or IPRP contains a positive or negative opinion regarding the novelty, inventive step and industrial applicability for every claim that is the subject of an international search.
- A WO or IPRP is consistent with the ISR, taking into account any amendment to the claims.
- Opinions on novelty, inventive step and industrial applicability are justified and appropriate.
- All observations regarding clarity and descriptive support are justified and appropriate.
4.2 Abstract defects are appropriately addressed
- Particular attention should be paid to the abstract's relevance and length.
4.3 Defect Identifications are maintained when appropriate.
- When an amendment has removed a defect, the defect should not be identified in a subsequent WO or in the IPRP;
- When, by convincing argument, it is clear that identifying the defect is no longer warranted, the defect will no longer be identified in a subsequent WO or the IPRP;
- When a client response fails to overcome an identified defect by amendment or convincing argument, the defect will continue to be identified in a subsequent WO or the IPRP.
Written and verbal communications are clear and correct so they are useful to clients.
5.1 Written communications are complete and correct
Sufficient detail is always provided when identifying a defect or observation so that the applicant can understand the defect or observation and determine an appropriate response. This includes the following:
- referencing the correct authority basis for the defect or observation identified;
- appropriately explaining the defect, particularly where there is lack of inventive step, or lack of clarity;
- indicating relevant passages of the application and prior art references (and their English family member) when appropriate;
- identifying the defective claims of the application;
- identifying groups and rationale when identifying a lack of unity defect;
- at the second or subsequent WO stage, addressing the applicant's amendments and arguments when defects continue to be present;
- Opinions and observations are clearly explained using clear and appropriate language (see 5.2);
- All information related to prior art citations is accurate, including dates, names, document numbers, list of family members and basis of opinion; and
- The latest and correct version of each PCT form is used and filled out according to the PCT Guidelines.
5.2 All communications are clear and appropriate
Clear and appropriate communications require:
- straightforward language;
- polite and professional approach;
- addressing of all issues;
- a suitable response to all requests and inquiries; and
- proper record keeping, including all appropriate forms and examiner's notes.
5.3 Format of WO or IPRP is clear and content is accurate.
Written communications include the following matters of form, where appropriate:
- all bibliographic information is accurate including agent contact information, application number, owner, title, classification, applicant reference number, examiner name and examiner telephone number;
- the basis of the report is clearly identified, such as:
- any reservations to the search and/or examination;
- the unity group first claimed and any other group for which the applicant paid;
- the applicant's latest amendment and/or superseded sheets, as appropriate;
- the number of claims;
- format of citations are correctly identified, according to WIPO Standard ST. 14, with sufficient detail to retrieve the document; and
- content is presented in a logical order.
5.4 Notes of Informal Communication with the applicant are accurate and complete
Notes of informal communication with the applicant include the following matters of form, where appropriate:
- all information is accurate including the names of the participants of the interview, date of the interview, international application number and summary of discussion and/or agreement;
- an indication where an extension of time is granted, if appropriate; and
- an indication of whether a copy of the note is being sent to the applicant.
International Search and Examination are carried out efficiently in keeping with established time limits and the Canadian Patent Office Priorities of Examination.
6.1 Examination is performed in a timely manner.
Timeliness requires the observance of:
- the time limits specified in the PCT and Regulations under the PCT;
- the internal processing time limits; and
- established client service standard on responding to enquires by telephone.