Section 17

Search

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17.-(1) The comptroller shall refer an application for a patent to an examiner for a search if, and only if -

  • (a) the comptroller has referred the application to an examiner for a preliminary examination under section 15A(1)
  • (b) the application has not been withdrawn or treated as withdrawn;
  • (c) before the end of the prescribed period [Rule 22: 12 months from filing / priority (2 months from filing if priority claimed)] -
    • (i) the applicant makes a request to the Patent Office in the prescribed form for a search [Rule 27: use form 9A]; and
    • (ii) the fee prescribed for the search ("the search fee") is paid;
  • (d) the application includes -
    • (i) a description of the invention for which a patent is sought; and
    • (ii) one or more claims; and
  • (e) the description and each of the claims comply with the requirements of rules as to language.

[Rule 22 applies - periods extendable by Rule 108];

(2) [repealed]

(3) [repealed]

(4) Subject to subsections (5) and (6) below, on a search requested under this section, the examiner shall make such investigation as in his opinion is reasonably practicable and necessary for him to identify the documents which he thinks will be needed to decide, on a substantive examination under section 18 below, whether the invention for which a patent is sought is new and involves an inventive step.

(5) On any such search the examiner shall determine whether or not the search would serve any useful purpose on the application as for the time being constituted and -

  • (a) if he determines that it would serve such a purpose in relation to the whole or part of the application, he shall proceed to conduct the search so far as it would serve such a purpose and shall report on the results of the search to the comptroller; and
  • (b) if he determines that the search would not serve such a purpose in relation to the whole or part of the application, he shall report accordingly to the comptroller;

and in either event the applicant shall be informed of the examiner's report.

(6) If it appears to the examiner, either before or on conducting a search under this section, that an application relates to two or more inventions, but that they are not so linked as to form a single inventive concept, he shall initially only conduct a search in relation to the first invention specified in the claims of the application, but may proceed to conduct a search in relation to another invention so specified if the applicant pays the search fee in respect of the application so far as it relates to that other invention. [Rule 27]

(7) After a search has been requested under this section for an application the comptroller may at any time refer the application to an examiner for a supplementary search, and subsections (4) and (5) above shall apply in relation to a supplementary search as they apply in relation to any other search under this section.

(8) A reference for a supplementary search in consequence of -

  • (a) an amendment of the application made by the applicant under section 18(3) or 19(1) below, or
  • (b) a correction of the application, or of a document filed in connection with the application, under section 117 below,

shall be made only on payment of the prescribed fee [Rule 27: accompanied by form 9A], unless the comptroller directs otherwise.

Notes:
Rule 27: applicant notified if only one of two or more inventions are searched; any additional searches required are to be requested 3 months before the end of the compliance period (Rule 30).

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