PB Quality Standards for International Search and Preliminary Examination

"Office Practice" is the administration of the requirements of the Patent Cooperation Treaty (PCT) and PCT Regulations, using the guidance of the PCT International Search and Preliminary Examination Guidelines, the Administrative Instructions under the Patent Cooperation Treaty, the PCT Applicant's Guide, Exam Bulletins and the ISA & IPEA Training and Reference Manual.

Subject matter

1.1 Subject matter issues are appropriately addressed.

Subject matter issues include:

1.2 Search and/or examination is reserved when appropriate.

Search and/or examination may be reserved (completely or partially) when deficiencies in the specification make it impractical to issue a comprehensive report. Situations where reservation may be justified include:

When examination is reserved, the extent of the reservation and the reason are clearly stated in the International Search Report (ISR), Written Opinion (WO) [Ch I or Ch II] or IPRP. In instances of lack of unity, the applicant is informed that a lack of unity exists and they are invited to pay for the search and examination of additional identified inventions beyond the first/main invention identified. The first/main invention will always be searched and examined, along with any others for which additional fees have been received.

Search

A useful International Search Report (ISR) is one that contains all the necessary citations needed to either draft a set of novel and inventive claims, or which completely anticipates the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.

2.1 An appropriate search strategy is adopted according to the Patent Cooperation Treaty (PCT) Guidelines

An appropriate search strategy, where a meaningful search can be carried out,

2.2 Search results and necessary information are recorded and reported clearly

The ISR lists relevant documents, which are selected on the basis that the applicant is provided an overview of the prior art, including all particularly significant documents, and their family members on the Patent Family sheet, while avoiding undue repetition.

The ISR:

2.3 Novelty and inventive step defects are appropriately addressed.

Novelty and obviousness

If the examiner has reasonable grounds to believe that the invention lacks novelty or inventive step:

When identifying a lack of novelty or lack of inventive step defect, 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 nature of limitations introduced in the dependent claims.

Application Formalities

3.1 Application formalities and observations are appropriately addressed.

Application form and content defects include (non-exhaustive list):

Application clarity and support observations include (non-exhaustive list):

Note: Clarity matters do not extend to minor defects of grammar or spelling which do not lead to ambiguity.

Examination

A useful Written Opinion (WO) or International Preliminary Report on Patentability (IPRP) contains clear explanations of the basis of the opinion, how the cited documents are applied to the claims and general observations on the application.

4.1 Examination is carried out consistent with the PCT Guidelines

4.2 Abstract defects are appropriately addressed

4.3 Defect Identifications are maintained when appropriate.

Communication

Written and verbal communications are clear and correct so they are useful to clients.

5.1 Written communications are complete and correct

Sufficient detail is always provided when identifying a defect or observation so that the applicant can understand the defect or observation and determine an appropriate response. This includes the following:

5.2 All communications are clear and appropriate

Clear and appropriate communications require:

5.3 Format of WO or IPRP is clear and content is accurate.

Written communications include the following matters of form, where appropriate:

5.4 Notes of Informal Communication with the applicant are accurate and complete

Notes of informal communication with the applicant include the following matters of form, where appropriate:

Timeliness

International Search and Examination are carried out efficiently in keeping with established time limits and the Canadian Patent Office Priorities of Examination.

6.1 Examination is performed in a timely manner.

Timeliness requires the observance of:

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