In addition, when any prior art document has been found that, alone without combination with any other document, denies novelty or inventive step of the claimed invention and the embodiments thereof, the examiner may conclude the prior art search with regard to the claim in question.
However, when the prior art search can be conducted for other embodiments without undue burden of search, it is desirable that the examiner further continues the prior art search.
(Note) In the examination of a certain patent application regarding chemical substances, the claim
of a chemical substance expressed by Markush form may be unduly broad and various embodiments may be included, so that prior art search for all of the subjects of search is extremely difficult without necessitating undue burden of search. In this case, the examiner may conclude the prior art search if it falls under either of the following items (i) and (ii) on the assumption that all prior art search within the scope which does not cause undue burden of search has been completed.
In this case, when a reason for refusal is to be notified, the examiner states in the notice of reason for refusal that the prior art search has been concluded without searching all of the subjects of search and indicates the range of prior art search that has been conducted in the section
"Record of the Results of Prior Art Documents Search."
(i) At least one prior art document denying its novelty, inventive step etc. has been found regarding at least one of the chemical substance groups expressed in the form of alternatives recited in claims including the chemical substances described as embodiments (a group of chemical substances expressed by specific alternatives corresponding to the embodiments).
(ii) Prior art search has been conducted for all chemical substance groups expressed in the form of specific alternatives corresponding to the above embodiments, and at least one prior art document denying novelty, inventive step etc. of the claimed invention has already been found by the prior art search of the chemical substance groups expressed by alternatives other than the above alternatives.
3.2 Record of search results of prior art documents
When notifying a notice of reasons for refusal after the first prior art search, the examiner should state the technical field(s) subjected to the prior art search in the section "Record of Results of Prior Art Document Search."
With regard to the technical field(s) for which the prior art search has been conducted, the examiner should indicate the code or the like of the international patent classification (IPC), etc. that indicates the range subjected to the prior art search.
In addition, where there is prior art that does not constitute the reasons for refusal but is considered to be useful, for example, as a prior art document that may serve as reference information for the applicant to file an amendment, the examiner may additionally record the information on this document.
4. Determination of Novelty, Inventive Step, etc.
The examiner, after the prior art search, renders determination concerning whether or not the prior art described in the prior art documents found in the search constitutes a reason for refusal against the claimed invention regarding novelty, inventive step, etc.
The dates of publication of prior art documents etc. are very important to constitute the reasons for refusal. The examiner must confirm the relationship between the date of publication of each of the prior art documents, etc. and the filing date (or the priority date) of the application concerned in the examination on novelty and inventive step.
Also, when considering application of the provision of secret prior art (Article 29bis), the examiner must confirm the relationship between the filing date of the application concerned and the filing date and publication date of the prior application and confirm whether or not the inventor and the applicant of the prior application are identical with those of the application concerned. When considering application of the provision of prior application (Article 39), the examiner must confirm the relationship between the filing date of the application concerned and the filing date of the prior application.
With regard to specific methodology of determination of novelty, inventive step, etc., see "Part III Chapter 2 Novelty and Inventive Step" to "Part III Chapter 4 Prior
Application."
When it is determined that the scope of search of the prior art search that was already conducted has become insufficient in view of an amendment made to the description, etc. or a written opinion submitted in response to a notice of reason for refusal, the examiner conducts further prior art search.
The examiner does not need to conduct further prior art search in response to submission of a written opinion, written amendment, etc. when the examination can be continued without conducting further prior art search.
(1) A case where, with regard to overseas-related applications (Note), highly relevant prior art documents are included in the search results or examination results by a foreign patent office
In this case, the examiner should take into account the prosecution history and examination results at the foreign patent office (specifying the cited invention, contents of the reason for refusal, final result of examination, recitations of the claim for which a patent was granted) and considers whether or not any content of the prior art documents constitutes a reason for refusal of the claimed invention in terms of novelty, inventive step, etc. In this case, the examiner should take notice of the differences between the
Japanese examination system and practice and those of the foreign country.
(Note) The term "overseas-related applications" refers to any application falling under either of the following items (i) and (ii).
(i) An application seeking grant of a patent for an invention for which the applicant also filed any patent application in any patent office or intergovernmental organization other than Japan Patent Office
(ii) An application related to an international application (domestic application serving as the basis of priority claim in an international application, international application that entered the national phase, etc.)
(2) A foreign language application, PCT application in foreign language, and official gazette thereof are subjected to the prior art search (for the foreign language application and PCT application in foreign language, see "Part VII Foreign Language Written Application" and "Part VIII International Patent Application" respectively).
It is highly probable that the description, claims, or drawings of the foreign language document of a foreign language application or a PCT application in foreign language (in this part, hereinafter referred to as "the foreign language document, etc.") coincide with the content of their translation. Accordingly, it is usually considered to be sufficient for the examiner to search only the portion translated into Japanese. However, if any doubt arises that some differences exist between the translated portion and the statement of the foreign language document, etc., it is necessary to expand the scope of search to the foreign language document, etc.
