For a Full-term patent to be granted, the novelty and non-obviousness of the invention must be established. There are two ways of achieving this; by means of a Search Report, or the provision of Evidence of Novelty.
Search Report
A Search Report has to be requested by the applicant to determine the novelty and non-obviousness of the invention of the patent application. An applicant must request it within twenty-one months of the application's filing date or the priority date, if priority was claimed. Otherwise, the application will be refused. The Controller, upon receipt of this request accompanied by the prescribed fee, will have a Search Report on the invention prepared.
A Search Report 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 Search Report will be issued to the applicant.
Unless the patent application is withdrawn within two months of issue of the Report to the applicant, the Report is then published by the Controller; i.e. this means that anyone can view the Search Report. Withdrawal of the application might arise where the applicant, in the light of the Search Report, concluded that there was no point in taking the patent application further. If the patent application is not withdrawn the patent agent acting for the applicant will be required either to make amendments to the application based on the Search Report or provide a statement that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.
Evidence of Novelty
There is an alternative to requesting the preparation by the Controller of a Search Report. An applicant who has also applied for a patent for the same invention to the United Kingdom, German or European Patent Offices, or who has applied under the Patent Co-operation Treaty, 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 Search Report 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 to the Controller as evidence of Novelty and must be produced by the applicant within two months of the publication of the search report or grant of the patent, accompanied by the prescribed fee.
Evidence of Novelty will be published unless the application is withdrawn.
If the application is not withdrawn the patent agent acting for the applicant will be required either to amend the application in the light of the Search Report or the 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 procedures relating to the search report/evidence of novelty do not apply to applications for short-term patents)