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Raising new prior art

3.5 Where the applicant requests an examination or a search and examination of the application, Rule 2A(1) requires that the Examiner take into account all the relevant prior art that has been discovered in a search, or that the Examiner is “aware of”.

3.6 Generally, when a request for an examination relying on a search report is received, the Examiner will conduct the examination based on the search report. The general principle is the claims to be examined should have been covered by the original search.

3.7 Where a claim relates to an invention in respect of which no search has been completed, Rule 46(1)(e) provides that an Examiner may decide not to carry out the examination in respect of that claim and advise the Registrar accordingly. In most cases this will be where in the search report no search has been carried out for a particular claim.

3.8 If an additional feature is introduced into a claim by amendment there may be instances where the original search may not have covered that embodiment. For example the search may have been limited to particular embodiments but as a result of the cited prior art, the claims have been amended to cover different embodiments that would not have been covered by the initial search. However, this should be an unusual circumstance – in most cases the claims will be limited to preferred embodiments provided in the specification and in other cases these should have been covered by a search of the broader claim. Additional searching may be performed in such situations, but extensive searching should be avoided.

3.9 During the course of the examination, the Examiner may raise new prior art that has not been identified in the search report or discovered in the search but that the Examiner has become “aware of”. Thus, for example, if a search report from a foreign family equivalent identifies highly relevant prior art that impacts on the patentability of the patent, then the Examiner may raise this new prior art. However, in the case of an examination based on a foreign search report, extensive additional or original searching should be avoided. Moreover, a new document should not be raised if it essentially repeats the matter provided by an existing citation. To raise a new, but equivalent document would result in additional costs for the applicant.

3.10 Where new prior art is raised, this should be highlighted in the Examiner’s report, and a copy of the document may be provided (subject to copyright restrictions). The full bibliographic details and relevant portions of the document must be provided in the opinion.