Requesting a Search Report and Opinion or submission of Evidence of Novelty

The Patents Act 1992 requires that the subject matter of an invention must be patentable.  To be patentable, the law requires that the invention must be new, involve an inventive step and be capable of industrial application. The terms “inventive step” and “capable of industrial application” may be deemed to be synonymous with the terms “non-obvious” and “useful” respectively.

Because an invention can only be patented when it fulfils the criteria for patentability, determining that an invention is patentable is a key element of the patent granting process.

If you have filed a full-term patent application and in order to establish the patentability of your invention, you will be expected (within a period of 21 months from the filing/priority date of the application), to:

(a) request a search report and written opinion  or

(b) file a statement that you intend to furnish evidence of novelty.

The search report and written opinion

A Search Report and Written Opinion (SRWO) has to be requested by an applicant to determine the novelty and non-obviousness of the invention of the patent application. If the request is not made within twenty-one months of the filing date or the priority date, if priority was claimed, the application will be refused.

On receipt of the request accompanied by the prescribed fee (€200 per application) a SRWO on the invention will be prepared.  The SRWO will list published documents considered relevant in assessing whether the claimed invention is new and not an obvious development or adaptation of what is already known. A copy of the SRWO will be issued to you or your patent attorney. Unless the patent application is withdrawn within two months of issue of the report to the applicant, the report is then published; this means that anyone can view the SRWO.

Withdrawal of the application might arise where, in the light of the SRWO, you conclude that there was no point in taking the patent application further. If the patent application is not withdrawn, you (or your patent attorney) will be required either to make amendments to the application based on the search report or provide a statement that no amendment is considered necessary. Failure to comply with these requirements may lead to the refusal of the application.

The search report can include documents published anywhere in the world. Any form of published disclosure can be cited against the application, for example, other patent specifications, internet articles and technical journals.  The relevance of each document listed in the Search Report is indicated in the “Category” column.

A document identified as category ‘X’ will, in general, have the main technical features of your invention (as set out in those claims identified in the middle column).

Sometimes an invention can be considered non-inventive by combining the technical information provided by a number of documents. Such documents are identified in the left hand column as category ‘Y’.

A document identified as category ‘A’ indicates what has been done previously in the technical area of your invention. An ‘A’ category document does not disclose your claimed invention.

The written opinion accompanying the search report can assist in refining your patent strategy.  It provides an opinion on the patentability of your application having regard to the novelty, inventive step and industrial applicability requirements. It can help you decide whether your invention has the potential to be commercially successful and if it is worth continuing with the patent application.  The opinion will also provide an indication of the kind of amendments which might need to be made in order to focus on the patentable elements of the invention.

Evidence of Novelty.

There is an alternative to requesting the preparation of a SRWO.  If you have also applied for a patent for the same invention to the United Kingdom, German or European Patent Offices, or applied under the Patent Co-operation Treaty, you can submit a statement to that effect. The statement must be submitted within the twenty-one months of the application's filing date or the priority date, claimed.  In this situation, a copy of the SRWO prepared in respect of the foreign application, or a copy of the published specification of the patent granted by either the UK or German or the European Patent Office may be submitted as Evidence of Novelty and must be produced by you or your patent attorney within two months of the publication of the foreign SRWO or the grant of the patent, accompanied by the prescribed fee (€86).

The Evidence of Novelty will be published unless the application is withdrawn.  If the application is not withdrawn, you or your patent attorney will be required either to amend the application in the light of the foreign Search Report and Written Opinion or the foreign granted patent specification (whichever applies in the particular case) or to furnish a statement that no amendment is considered necessary. Failure to comply with this requirement may lead to the refusal of the application.

The patent application will proceed to be substantively examined in light of the search report and opinion and /or the evidence of novelty and any amendments which the applicant (or the patent agent acting for the applicant) elects to submit.

(The procedures relating to the search report/evidence of novelty do not apply to applications for short-term patents).

Fees

The fee when submitting the request for a search report and opinion is €200 per application.

The fee payable on submission of evidence of novelty is €86 per application, if paid within 2 months of the publication of the evidence.  Any later submission of the evidence of novelty documents is subject to additional extension fees of €12 per month.