簡介專利申請案檢索報告 / 專利工程師 林孟萱
Brief Introduction for its search report which is published together with the application / Patent Engineer Meng-Xuan Lin
The purpose for search report
The search report which is published together with the application is to record the process of substantial examination. The examiner will consider whether its patent applicant is relevant by looking at relevant claims. The degree of relevance and its patent types would be marked with its associated representatives. Under general circumstances, such report and “observation of the examination” or “Approved Examination Report” would be sent to the patent applicant at once.
When there is no search report?
When it comes to patent application requesting to review all or partial items as follows, the Patent Authority may, in the course of examining an invention patent application, notify its patent applicant with a “observation of the examination” to make a supplement or amendment to the specification and/or drawings within a specified time limit, otherwise such application would go directly to its examination process without any follow up search report.
發明為非利用自然法則之技術思想之創作者。（專利法第21條）The term “invention” is used herein refers to any creation of technical concepts by utilizing the rules of nature (Patent Act Article 21).
為專利法規定不予發明專利者。（專利法第24條各款）Items shall not be granted an invention patent according to its Patent Act. (Patent Act Article 21 listed items).
專利說明書發明說明未明確且充分揭露發明技術特徵內容，導致無法瞭解發明內容者。(專利法第26條第1項) If the description of invention did not contain a sufficiently clear information and have not disclosed its contents completely, in result not to understand its contents fully (Patent Act Article 26, Paragraph 1).
為非可供產業上利用之發明者。(專利法第22條) An invention which is not industrially applicable (Patent Act Article 22).
與另一發明或新型專利申請案為相同之發明。(專利法第31條) if such patent application is identical for another Invention patents or Utility model patents (Patent Act Article 31).
不符發明單一性規定者。(專利法第33條) Not consistent with its exclusiveness requirement (Patent Act Article 33).
實質上非為兩個以上之發明而為分割申請，該分割案以不符分割之實體要件處分不准分割時。(專利法第33條) In the case of a patent application which substantially involves two or more inventions, such division does not satisfy the division requirement and decided not to divide its patent application into two or more separate divisional applications (Patent Act Article 33).
申請專利所為說明書、申請專利範圍或圖式之修正內容，超出申請時原說明書或圖式所揭露之範圍者。（專利法第43條第2項）For its patent application especially when interpreting the scope of claims, the description and drawings, when such application exceed the scope of contents as disclosed in the original specification and drawings submitted along with the patent application (Patent Act Article 43, Paragraph 2).
In addition, such search report is the product of substantive examination; therefore if its utility model did not go through its official substantive examination, there won’t be any search report on its patent applications.
Relevant Codes and its meaning
Relevant codes would usually
“X” indicates that a single document is particularly relevant for reasons of novelty.
“Y” indicates document particularly relevant if combined with another “Y” document.
“A” used for a document representing “state of the art not prejudicial to the novelty or inventive step of the claimed invention
“D” represents document cited in the application.
“E” represents when there is potentially conflicting patent documents, for which documents bearing a filing or propriety date earlier than the filing date of the application searched but published later than that date and the content of which would constitute prior art relevant to novelty.
“O” represents non-written disclosure such or oral revealed、public use、sell or exhibit display of literature.
“P” represents documents published on dates falling between the date of filing of the application being examined and the date of priority claimed, or the earliest priority if there is more than one.
“L” represents documents cited for other reasons. For example if you breached its Patent Law Article 31 when two or more applications are filed for the same invention only the application filed first may be granted an invention patent.
According to the search report which is published together with the application, we can know whether patent examiners have any opinions toward its patent application. This is especially important when filing a statement of defense; you need to provide all the evidences or to make a supplement or amendment to the specification and/or drawings within a specified time limit to counter examiner’s queries in terms of their concerns that lacks novelty, progressive or any other claiming that its examiner think should be excluded from its specification in order to fulfill its patent application requirement of novelty、progressive、loss of novelty function or first application principle.
Step by Step interpretation of Patent Law
Patent Examination Guidelines
Intellectual Property Office Patent Q&A