Best Practice Searching IP Australia Best Practice Searching

Why Best Practice? Major offices have and are increasingly producing reports that are viewed by customers as being international “Best Practice”. WIPO is encouraging the ISR/ISO to being a definitive product. We need to be performing international “Best Practice” to continue delivering competitive products and services.

RIP Old Practices Broad Brushing Only searching for Novelty Brief or non-referenced comments on cited documents

Types of changes Behind the scenes Changes impacting on the reports Changes seen in the report

Behind the scenes Three Person Team – Search Strategy Quality assurance process

Changes impacting on the report Claim construction hierarchy Special meaning Ordinary meaning Everyday meaning Inherency in citations Inventive step searching

Changes impacting on the report Searching Broad Claims Four Groups (i) Many claims in the one application (ii) Many possibilities in the one claim (iii) Desideratum claims (iv) Parametric claims

Changes seen in the report Detail of reporting Reasoning presented for lack of Novelty is separate from lack of Inventive Step reasoning.

Changes seen in the report References to relevant part of citation. Inventive step search results Improved reasoning for observations taken under Articles 5 (clarity) & 6 (support). Breadth of claims Nature of the invention General knowledge of the person skilled in the art The level of predictability in the art The amount of direction provided by the applicant The amount of experimentation required

Details of changes and examples are…. Located in the Patent Office Manual of Practice and Procedure –amendments to Vol. 1 dated 1 October 2008.

Transition arrangements An IPEO/IPRPII will be consistent with the previous ISO or IPEO. Elements of Best Practice may appear in an IPEO/IPRPII, but it should be consistent with previous reports.

Thank you Contact Details Name : Alistair Bestow Position : Supervising Examiner Section B3 (Pharmaceuticals) Phone 6283 2450