1. Best Practice Searching
IP Australia
Best Practice Searching

2. 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.

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

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

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

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

7. 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

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

9. 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

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

11. 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.

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