A search report is a research document prepared by a patent office in response to a patent application, in order to determine whether the invention claimed in the application is patentable. The search uses any information available in any form that could be relevant to the patent application’s claim of originality. If the patent requested in the application has been described in the prior work of another, it is not patentable.
A patent examiner performs a search of the invention as set out in the application, and the final results are contained in a search report issued to the applicant and filed in the patent office. The patent examiner searches documents worldwide. In patent searches, patent specifications are categorized by the subject matter of the invention. Patent specifications that have appeared in any technical journals or on the internet are compared against those in the application. The search looks for evidence that the technical features of the applicant’s invention are already known.
There are three search result categories within a search report. The first category lists documents that contain the central feature of the applicant’s invention. The second lists documents that contains technical information similar to that in the application but is not being used for inventive purposes. The third lists documents about what has been done in other areas of the applicant’s invention but do not match the claims of the applicant for what her invention does.
Generally, all related patent claims are searched before the patent office sends a report to the applicant. Searched claims containing two or more inventions are limited to the inclusion of the first claim for purposes of the report. Sometimes an applicant’s claim for what her invention will do is not clear in relation to other claims, or there are so many similar claims they cannot all be reported. In these instances, the searched claims are not included in the search report, but the patent office provides an explanatory letter to the applicant.
The search report enables the applicant to decide whether her invention is unique enough in comparison to the searched documents to be patentable. An applicant can withdraw her application if she chooses. She must do this before preparations to publish the report are complete. If a timely notice to withdraw the application is not filed, it will be published along with the report. Publication occurs around 18 months after the filing of the application.
If after reviewing the report the applicant wishes to proceed with her application, she must request a “substantive review” of her application. This entails a more rigorous and detailed examination of the patent application and its supporting documents. A request for substantive review must be made within six months of the publication of the patent application.
