Searches Reporting

Under this filing procedure, once the single International PCT appHcation is filed a patentabiHty search is conducted by an approved search office. After the search is completed, the search report is pubHshed and reported to the appHcant. 

Table 2.1 Example of problematic match decision from a library search report...

DOE, Ordnance and Explosive Waste Records Search Report, DOE/RL-94-07, Rev. 0, U.S. Department of Energy, Richland, WA, 1995. 

Examine the DBE value for each candidate from the elemental search report. If a compound shows UV absorbance at a wavelength... 

The international search report is communicated to the applicant by the international search authority. The applicant may then decide to withdraw his patent application if, for example, the prior art found makes the granting of a patent highly unlikely. If the international patent application is not withdrawn, it is published together with the search report. Third parties now have the possibility to take notice of the claimed invention and to form their own opinion about its presumed patentability. In addition, they can assess any possible later dependencies should they want to practice the invention. An example of the cover of a published international patent application is shown in Figure 13.2. 

Fig. 13.1. Example international search report listing several prior-art documents. These are categorized with respect to their influence on the patentability of die subject matter of die claims.

Prior art cited in search reports of a foreign patent office in a counterpart application, and... 

The USPTO examiner conducted an independent search of the subject matter, and in the search report, the JACS paper turned up—in other words, the examiner s search identified the paper even though it was not submitted. Nevertheless, there was no evidence that he actually reviewed the reference but the search report was entered into the file. Remember that the U.S. attorney who understood the U.S. law and the affirmative burden it places on applicants did not know about the reference, the French agent did. The French agent would have seen the search report in the file and would have known that the U.S. examiner saw at least the abstract to the reference. If you were the French agent after having seen the JACS reference turn up in the examiner s search report, might you have assumed the examiner looked at his own search report and if he had a question about any reference, asked the applicants ... 

After submission to a patent office, the file is examined for some basic formal requirements and, if adequate, is given a filing date. A first indication about the chances of a patent application may be obtained from a search report which is issued by the European Patent Office and also for international patent applications under the Patent Cooperation Treaty (see below). In most cases, the search report will list a number of earlier patents or publications and indicate whether these interfere with the proposed claims of the examined file. As a consequence of the search report the applicant can amend the proposed claims before the examination is initiated. 

The International Patent Cooperation Treaty (PCT) created the opportunity to file a patent application almost world-wide (most countries accept PCT applications) at international patent registration offices which are usually identical with the national patent offices. A search report summarizing relevant prior art will be issued and, if requested, a preliminary examination considering the prior art is performed. The preliminary international examination provides a non-binding opinion whether the claimed invention appears to be novel, inventive and industrially applicable. It does not investigate the patentability according to any national law. 

International (PCT), European (EP) and most other national patent applications are published 18 months after the priority date. PCT and EP applications are published along with the search report. (If a search report is not available at that time, it will be published separately.) This publication offers third parties the possibility of inspecting the file upon request and to inform the patent offices about their related observations. These must be considered by the patent office and will be transmitted to the applicant. 

In most countries the formal process of patenting includes several regulations and steps which enable third parties to prevent the grant of patents which are not justified. These steps are early publication of a patent application, publication of the search report, access to the files upon request, provision of an objection period after publication of a patent grant and finally the possibility to submit objections against granted patents. 

Applications for a national patent or at the International Patent Office may cost up to an equivalent of US 3,000 per application for a search report and the examination. A similar amount can be assumed for the involvement of a patent attorney as long as only formalities are concerned. Creative work by a patent attorney office (e.g. formulation of the claim or of defending statements) as well as translations result in the extra cost of about US 100-300 equivalent per hour, depending on the qualification of the person who deals with it. Thus, the effective cost of the patent application may rise up to US 8,000-10,000 per country. Annuities for a national patent are raised as a constant rate per year or increase during the life-span of a patent. The figure of US 100-300 per year and country (or per patent certificate from international patent organizations) may serve as a clue for what must be expected. 

The effective patent protection would be shortened and less valuable. A favourable search report, however, may be useful to considerably strengthen the position of the patent applicant. 

Prior Art documents found by the International Search Report... 

Generic solid-phase synthesis of heterocycles was claimed A common precursor to all libraries was described and claimed Several relevant documents found by the International Search Report... 

Compilation of a bibliography. Choice of a topic conduct of search report. Government documents (except patents). General indexes production statistics import-export statistics Office of Publication Board reports. 

Sometimes original ideas which occur to the searcher are best routed into regular suggestion channels. Most laboratories have a more or less formalized setup for receiving and considering them. Another form of presentation is a recommendation in the search report or its introduction. 

Everyone will agree that a searcher, like any other investigator, should be competent in his own specialty-searching. A good searcher decides on the relative value of the references he finds for the search objectives, and states his evaluation in the search report. 

Know when to stop. Some searchers cannot let go and just keep on searching. There is no such thing as a complete search. There is, however, a point of diminishing returns when additional time spent on rounding up obscure references no longer yields worth-while results. When that point has been reached, by mutual agreement between search originator and searcher, the search should be terminated and the results written up in a search report. 

The actual form of such a search report is likely to vary and to reflect the requirements and standards of the organization in whose interest it has been prepared. No matter what form of final write-up is selected, it should embody ... 

A discussion of the results of the search, if requested. Sometimes the final search report may be of a noncritical type. 

International Phase The PCT filing results in an International Search and the issuance of an International Search Report, a Written Opinion (which comments on the three aspects of patentability (novelty, obviousness and utility) as they apply to the claims, and possibly comments on other matters as well), and an International Preliminary Examination Report (IPER). WIPO will also publish the patent application 18 months after the priority date. The designation WO... in the upper right hand of what many call a patent actually indicates that the document is only a published PCT patent application, not a patent. The PCT patent application is itself never prosecuted to allowance. The filing allows an applicant to defer further action (and... 

According to the EPC, a European patent application is submitted to a single examination system. An applicant files a patent application in one of the official languages of the EPC, namely German, English, and Erench. This application is examined at the EPO for formalities and then for prior art. The invention must not have been disclosed by prior publication or in prior patents. It must not have been in public use or on sale. The patent application and the search report are then published. 

After publication of the application and the search report, the applicant has to request substantive examination for patentability to be performed at the EPO. The examination of the application is performed by the Examining Division of the EPO. On completion of the examination, which includes an examination for inventive step as well as for novelty (novelty and inventive step are basic requirements for patentability see Section IV. A.), either the application is rejected or the European patent is granted. The specification as granted is published and the grant of the European patent leads to national patents being registered in the designated EPC countries. 

The international application is examined with the required formalities. A prior art search is performed by an International Searching Authority (ISA), and a search report is sent to the applicant. The application and the international search report are published. This is known as the international phase of the procedure (Chapter I of the PCT). 

After the issue of the search report (and the international preliminary examination, if applicable and requested) the application passes to the national patent office of each of the designated countries, and this is the start of the national phase of the procedure. 

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