Search report

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In patent law, a search report is a report established by a patent office, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable. [1] The documents mentioned in the search report usually form part of the prior art.

Contents

Patent law

Categories of documents

Letters are often included in search reports established for patent applications to indicate the relevance of the documents identified by the examiner. For instance, the European Patent Office (EPO) uses the following letters in search reports or in the European Patent Register: [2] [3]

CategoryMeaning (in search reports established for a European patent application, or in the European Patent Register)
ATechnological background. [2] Used for a document representing "state of the art not [regarded as] prejudicial to the novelty or inventive step of the claimed invention." [4]
DDocument cited in the application, [2] [5] i.e. cited by the applicant itself.
EPotentially conflicting patent documents, i.e. document "bearing a filing or priority date earlier than the filing date of the application searched ... but published later than that date and the content of which would constitute prior art relevant to novelty." [6] See also Article 54(3) EPC and Article 56 EPC.
IThis category is not used in search reports but in the European Patent Register for a single "X" document "particularly relevant for reasons of inventive step". See category X. [2]
LDocuments cited for other reasons (than the other codes). [7] For example, if an examiner "considers that a publication, although undated, is highly relevant to the invention and can therefore be considered to be of interest to the applicant or third parties, he may choose to cite the publication in the search report as an "L" document. The search report and the written opinion should explain why this document was cited." [8]
ONon-written disclosure. [9]
PIntermediate documents, i.e. "[documents] published on dates falling between the date of filing of the application being examined and the date of priority claimed, or the earliest priority if there is more than one. [10] Such a document may be relevant if the claimed priority is not valid.
TDocuments relating to the theory or principle underlying the invention. [11]
XHighest possible level of relevance. [2] In search reports, "Category "X" is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or cannot be considered to involve an inventive step." [12] "In September 2011, the EPO started differentiating internally between two types of "X" citation. This differentiation [is not] visible in search reports, but can be found in the European Patent Register..." [2] "For citations coming from search reports published after 28 September 2011:
  • "X" indicates that a single document is particularly relevant for reasons of novelty
  • "I" indicates that a single document is particularly relevant for reasons of inventive step – in the written search report this continues to appear as "X"" [2]
YDocument particularly relevant if combined with another "Y" document. [2]

Combinations of different categories are possible. [3] For instance, a document classified as "D, A", i.e. in categories "D" and "A", would be a document cited in the application and regarded as representing the technological background of the invention.

See also

Related Research Articles

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields are regarded as valid by national courts.

<span class="mw-page-title-main">European Patent Office</span> One of the two organs of the European Patent Organisation

The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.

There are two provisions in the regulations annexed to the Patent Cooperation Treaty (PCT) that relate to the search and examination of patent applications concerning computer programs. These two provisions are present in the PCT, which does not provide for the grant of patents but provides a unified procedure for filing, searching and examining patent applications, called international applications. The question of patentability is touched when conducting the search and the examination, which is an examination of whether the invention appears to be patentable.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

In certain jurisdictions' patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this context, the concept of "industry" is far-reaching: it includes agriculture, for instance. An example of invention which would not be susceptible of industrial application is "a method of contraception [...] to be applied in the private and personal sphere of a human being".

<span class="mw-page-title-main">Representation before the European Patent Office</span>

The European Patent Convention (EPC), the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office (EPO).

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

<span class="mw-page-title-main">Internet as a source of prior art</span>

In the context of patent law, using the Internet as a source of prior art when assessing whether an invention is novel and inventive, may be problematic if it is difficult to ascertain precisely when information on websites became available to the public.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

The Guidelines for Examination in the European Patent Office are general instructions, for the examiners working at the European Patent Office (EPO) as well as for the parties interacting with the EPO, on the practice and procedure at the EPO in the various aspects of the prosecution of European patent applications and European patents. The Guidelines have been adopted, effective as at 1 June 1978, by the President of the EPO in accordance with Article 10(2)(a) EPC.

Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which also applies also in other jurisdictions.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is Article 54 EPC. Namely, "an invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again."

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

The fees due at the European Patent Office (EPO) in relation to a European patent application are laid out in the Rules relating to Fees of 20 October 1977, as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 and as last amended by decision of the Administrative Council of 12 December 2018.

References

  1. ↑ See for instance Rule 61(1) EPC
  2. 1 2 3 4 5 6 7 8 Search reports: when is an X document not an X document?, Patent Information News issue 4/2011, December 2011, p. 4.
  3. 1 2 Guidelines for Examination in the EPO , section b-x, 9.2 : "Categories of documents (X, Y, P, A, D, etc.)"
  4. ↑ Guidelines for Examination in the EPO , section b-x, 9.2.2 : "Documents defining the state of the art and not prejudicing novelty or inventive step"
  5. ↑ Guidelines for Examination in the EPO , section b-x, 9.2.7 : "Documents cited in the application"
  6. ↑ Guidelines for Examination in the EPO , section b-x, 9.2.6 : "Potentially conflicting patent documents"
  7. ↑ Guidelines for Examination in the EPO , section b-x, 9.2.8 : "Documents cited for other reasons"
  8. ↑ Guidelines for Examination in the EPO , section g-iv, 7.5.4 : "Disclosures which have no date or an unreliable date"
  9. ↑ Guidelines for Examination in the EPO , section b-x, 9.2.3 : "Documents which refer to a non-written disclosure"
  10. ↑ Guidelines for Examination in the EPO , section b-x, 9.2.4 : "Intermediate documents"
  11. ↑ Guidelines for Examination in the EPO , section b-x, 9.2.5 : "Documents relating to the theory or principle underlying the invention"
  12. ↑ Guidelines for Examination in the EPO , section b-x, 9.2.1 : "Particularly relevant documents"
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