Propanc Biopharma Inc (PPCB)

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Some DD on What the NEWS is about


http://www.wipo.int/edocs/mdocs/aspac/en/wipo_pct_tyo_13/wipo_pct_tyo_13_www_236087.pdf

Understanding of the International Search Report (ISR)
Feb.2013
Masataka Saito
Examination Standards Office
JAPAN PATENT OFFICE
2
Agenda
? International Search Report (ISR)
? Written Opinion of the International Searching Authority (WOISA)
International Searching Authority (ISA)
3
What are the ISR and the WOISA?
? ISR
¾ The result of the international search are recorded in the International Search Report.
¾ The Search Report is published by the International Bureau.
¾ The Search Report serves as a basis for any examination of the International application
by the designated Offices.
(PCT ISPE guidelines 16.01)
? WOISA
¾ Its primary role is to identify whether or not the claimed invention appears to be novel,
involve an inventive step (be non-obvious) and be industrially applicable.
(PCT ISPE guidelines 17.02)
¾ The written opinion will be issued by the International Searching Authority together with
the international search report.
(PCT ISPE guidelines 17.04)
4
Agenda
? International Search Report (ISR)
? Written Opinion of the International Searching Authority (WOISA)
International Searching Authority (ISA)
5
International Search Report
? Front Page
¾ Basic information
• International application number
• International Filing Date
• Earliest Priority Date
• Name of the applicant
? Basis of the Report
? Certain claims were found unsearchable
? Unity of invention is lacking
? Abstract, Title and Figure
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International Search Report
? Basis of the Report
? Certain claims were found unsearchable
? Unity of invention is lacking
7
? Observation where certain claims were found unsearchable.
¾ The international application relates to a subject matter which the ISA is not
required to search (Article 17(2)(a)(i))
• Scientific and mathematical theories
• Plant or animal varieties or essentially biological processes for the production of
plants and animals, other than microbiological processes and the products of such
processes
• Schemes, rules or methods of doing business, performing purely mental acts or
playing games
• Methods for treatment of the human or animal body by surgery or therapy, as well
as diagnostic methods
• Mere presentation of information
• Computer programs to the extent that the ISA is not equipped to search prior art
concerning such programs
¾ The description, the claims or the drawings fail to comply with the prescribed
requirements to such an extent that a meaningful search cannot be carried out.
(Article 17(2)(a)(ii))
International Search Report
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International Search Report
? Observation where certain claims were found unsearchable.
9
International Search Report
? Lack of Unity of Invention
¾ The international application shall relate to one invention only or to a group of inventions
so linked as to form a single general inventive concept ("requirement of unity of
invention").
¾ If the ISA considers that the international application does not comply with the
requirement of unity of invention, it shall invite the applicant to pay additional fees.
? Example
¾ Claim 1: A process of manufacture comprising step
A and
B
¾ Claim2 : Apparatus specifically designed for carrying out step
A
¾ Claim3 : Apparatus specifically designed for carrying out step
B
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International Search Report
? Procedure for determining of Unity of invention in the international phase
a communication communication which contains contains an invitation invitation to pay additional additional fee(s).
ISA
ISA
Applicant Applicant
paying additional additional fee(s).
ISA
paying additional additional fee(s)
and protesting protesting the allegation allegation of lack of unity of invention invention (and paying protest protest fee if necessary necessary )
ISA
No reaction reaction
Searching Searching the invention invention first mentioned mentioned in claims
and drawing drawing up the ISR
Searching Searching group(s group(s) of invention invention in respect respect of which the search fee and any additional fee(s) have paid
Searching Searching all invention invention
and examining examining the protest protest
To extent that the applicant applicant’s protest protest is found to be justified, justified, additional additional fee(s) are reimbursed reimbursed
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International Search Report
? Observation where unity of invention lacking
Remark of
Protest Protest
Basis
Applicant Applicant’s
Reaction Reaction
12
International Search Report
? Classification and Fields searched
? Minimum documentation Searched
? Documentation Searched Other Minimum Documentation
? Electronic Database Consulted
Not same
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International Search Report
? Documentation
¾ Citation category, citation of the document, identification of relevant claim numbers
? Citation of the Documentation
¾ WIPO Standard ST.14
? Patent Family
¾ Sign &
Patent Family
14
International Search Report
? Category Code
¾
X
¾
Y
¾
A
¾
E
¾
O
¾
P
¾
L
(WIPO Standards ST.14 http://www.wipo.int/standards/en/pdf/03-14-01.pdf)
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International Search Report
? Relevant to claim numbers
¾ Relationship Between Documentation and Claims
• Each citation should include a reference to the claims to which it relates.
• It is also possible for the same document to represent a different category with the respect to
different claims.
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International Search Report
? Patent Family
Cited document document Publication Publication date Patent Family
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Agenda
? International Search Report (ISR)
? Written Opinion of the International Searching Authority (WOISA)
International Searching Authority (ISA)
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Written Opinion of the International Searching Authority
? Front Page
¾ Basic information
• The international application number
• Name of the applicant
• The international filing date
• The claimed priority date
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Written Opinion of the International Searching Authority
? Basis of the Written Opinion
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Written Opinion of the International Searching Authority
? Priority
We need to consider consider whether whether
or not priority priority claim is valid.
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Written Opinion of the International Searching Authority
? Non-Establishment of Opinion
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Written Opinion of the International Searching Authority
? Lack of Unity of Invention
Result
Basis
Applicant Applicant’s
Reaction Reaction
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Written Opinion of the International Searching Authority
? Reasoned Statement and Citations
N IS IA
Claim 1-7 No No Yes
Claim 9-13 Yes No Yes
Claim 14-20 Yes Yes Yes
Claim
8 has not been searched
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Written Opinion of the International Searching Authority
citations citations
explanations explanations
25
Written Opinion of the International Searching Authority
? Certain Defects in the International Application
¾ In the case where defects exist in the form or contents of the international application.
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Written Opinion of the international Searching Authority
? Certain Observations on the International Application
¾ the clarity of the claims, the description, and the drawing.
¾ The question whether the claims are fully supported by the description.
Thank you!