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Search procedure

The examiner's work begins with the search procedure, where the aim is to identify existing technical documentation that will be relevant for assessing the patentability of the invention described in the patent application.

The search procedure is made up of the following steps:

1. Studying the application

First, the examiner studies the description, claims and drawings to:

  • understand the invention's technical contribution (its essence)
  • understand the scope of the claims
  • identify any lack of unity
  • in the case of a lack of unity, identify the different inventions (only the first will be searched initially and the applicant will have to pay additional search fees if they want the other inventions searched at a later stage)

Explanations
Claims are statements or assertions defining the invention. Though sometimes very long, they always consist of a single sentence. If a patent is granted, the claims define the scope of protection. For example, a claim specifying "a car with five wheels" would entitle the patent proprietor to the rights to any object that can be called a car with five wheels.
Lack of unity: when a patent application claims more than one invention, there is said to be a lack of unity. For example, if the first claim is directed to a mobile phone with an improved keyboard and the second to a mobile phone with an improved antenna, there are two inventions. The first invention is the improved keyboard, the second the improved antenna.

2. Classifying the application

The patent application is assigned a specific class within its technical field.

Explanations
Class: all patent applications are classified by area of technology, which makes them easier to retrieve in a search.

3. Defining the search strategy

The examiner has to decide on a strategy for the search, by:

  • selecting databases
  • selecting the classes in which to search and/or the keywords to be searched
  • contacting experts for further classes or advice (optional)

Usually various search strategies are possible, and examiners have to exercise their judgement and experience to select the one most appropriate.

Explanations
Databases contain technical documents, mainly patent publications but also articles from technical magazines, books, etc. Sometimes the databases only contain abstracts of these documents, but often they also include the full texts.
Selecting the classes: it may be necessary to search in more than one class in the databases. For example, documents relevant for a laser cutting device would be classified under B23K26/00dD, but similar devices might be found in the class relating to laser welding devices.

4. Implementing the search strategy

Once the strategy has been decided, a search result is extracted from the databases, consisting of a set of documents published before the date of filing of the patent application and showing the prior art.

The examiner may need to reformulate the subject of their search as they evaluate the results.

Reasons of economy dictate that examiners use their judgement to end the search when the probability of discovering further relevant prior art becomes very low in relation to the effort required.

Explanations
Prior art is technical information known before the patent application was filed at the patent office.

5. Evaluating in detail the documents found

The examiner looks at the documents and selects the relevant documents (e.g. 20 documents).

They then evaluate the relevant documents to extract the most relevant documents: those disclosing the same or a similar invention to the one claimed, or whose essence is similar or the same.

Explanations
Relevant documents are documents that appear at first sight to disclose technical information similar to the invention disclosed in the patent application.
Most relevant documents: the set is reduced, e.g. to four documents only.

6. Substantively examining the application

The examiner examines the application to check:

  • if the claims are clear (understandable, unambiguous, complete, etc.)
  • if the invention is novel compared with the most relevant documents
  • if so, whether it involves an inventive step (looking at the most relevant documents, would the invention have been obvious to a person skilled in the technical field?)
  • if it meets other relevant requirements of the European Patent Convention

Although the application procedure is officially divided into search and examination phases, much of the initial examination work actually takes place during the search phase.

Explanations
Novel: novelty is a requirement for the grant of a European patent. The invention claimed must be new, i.e. it must not be part of the state of the art.
Inventive step is a requirement for the grant of a European patent. If the invention involves an inventive step, it is not obvious to someone skilled in the relevant technical field.

7. Writing and issuing the extended European search report

The examiner then writes the search report. This involves:

  • listing the documents found and the relevant passages (possibly those referred to in the search opinion)
  • assessing the relevance of each document to the claims (on the basis of the statements made in the search opinion)
  • indicating the IPC class relevant to the application

The search report is published and sent to the applicant. For most applications it is accompanied by a search opinion. Together these two documents are known as the extended European search report.

Explanations
Search report: provides the applicant, the EPO's examiners and the public with information on the relevant state of the art. An example is included below.
IPC: International Patent Classification
Search opinion: outlines why the examiner believes that the application or invention does or does not meet the requirements of the EPC. The examiner may suggest amendments to overcome the objections.

Sample search report

Of the two documents found, the first describes the same invention as claimed in claim one. This is indicated by an X, meaning that it is very relevant. The other one is merely technical background. This is indicated by an A.

8. Concluding the procedure

The application is published, together with the search report if the search report is ready within 18 months of the date of filing of the application. Otherwise, the application is published without the search report (but with an indication of the IPC classification, which must be decided by the examiner) and the search report is published later.

After the search report has been published, the applicant has six months to decide whether they want to pursue the application. If they pay the examination fee, the examination procedure begins. If not, the application is deemed withdrawn.