PB Quality Standards for National Examination (2 of 4)

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Prior art

2.1 A correct search strategy is adopted.

A correct search strategy, where a meaningful search can be carried out:

  • identifies the inventive concept(s) underlying the claims;
  • includes a first-to-file search of Canadian patent documents;
    • A search of these documents (including non laid open documents) is carried out to identify first-to-file (novelty) and overlap (double patenting) issues. A first-to-file search aims to identify relevant documents filed or published in the five years prior to the filing date of the application.
  • makes effective use of available search results;
    • For PCT national phase cases, the Examiner considers the PCT search results and IPRP/IPER, when available.
  • includes a supplemental or comprehensive search, as required;
    • Comprehensive searches are carried out when there is no PCT ISR and there are no corresponding/family member foreign search results available for the claimed subject matter.
    • If adequate foreign search results are available, the examiner need not conduct a supplemental search unless, in light of the examiner's knowledge of the art, it is expected that prior art will be found which is citable against claims not already anticipated by the available foreign search results.

When performing a first-to-file, supplemental or comprehensive search, the examiner:

  • relies on a search of a breadth to identify documents relevant to the novelty and inventive step of the inventive concept(s);
  • uses appropriate search fields and methods, with priority given to those fields where the probability is highest of finding relevant documents; and
  • pays regard to the amount of searching that is reasonable and practicable.

A correct search strategy is appropriately documented according to office practice.

It is not necessary to search claimed embodiments that are not properly supported by the specification as filed.

2.2 Novelty, obviousness and double patenting are appropriately addressed.

Novelty and obviousness

If the examiner has reasonable grounds to believe that the invention is anticipated or obvious:

  • the most relevant prior art is listed in the references section of the examiner's report;
  • a summary of the relevant teachings of the prior art is provided;
  • each objection for lack of novelty is made under section 28.2 of the Patent Act; and
  • each objection for obviousness is made under section 28.3 of the Patent Act.

If, after performing a search, the examiner has reasonable grounds to believe that the invention is novel and unobvious in view of the state of the art, a statement is made in the examiner's report that a search of the prior art has failed to reveal any pertinent references.

When objecting for anticipation or obviousness, 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 stage of prosecution and the nature of limitations introduced in the dependent claims.

Double patenting

If the examiner has reasonable grounds to believe that the same invention is claimed in the pending application and one or more issued Canadian patents to the same applicant:

  • the report identifies the claim(s) as containing a conterminous or obviousness double patenting defect; and
  • where the filing date of the pending application is different from that of the issued patent(s), a defect is also identified under section 44 of the Patent Act.

Where overlap exists between the claimed subject matter in two or more copending Canadian applications, this potential for double patenting is brought to the attention of the applicant in the examiner's report. This warning is maintained as long as the overlap exists until one of the co-pending applications is allowable, at which time the allowable application is approved for allowance, and once granted, the co-pending application is identified as containing a double patenting defect.

If the issued patent or co-pending application can be cited as prior art under section 28.2 or 28.3 of the Patent Act, the defect for overlap or double patenting should not be identified.

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