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Examination systems
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4.14.
A search and examination of patents involves two distinct phases; the search, and then the substantive examination. The first stage involves searching for novelty. The second involves assessing whether there is a patentable invention including examining the claims to see if they may be amended. The quality of a patent granted after such search and examination depends on the range of the technical information available in the patent office from which the search for the prior art and the examination for novelty and inventive step is made and the degree to which the substantive examiner is specialised in his field. The role of an examiner is discussed in paragraphs 4.19 to 4.21.
Advantages and disadvantages of an examination system
The advantages of this type of system are that strong patents, with clearly set out claims, granted after search and examination by a well respected patent office, provide a high degree of certainty for patent holders. This can prevent the abusés identified in paragraph 4.10 above. It also assists the judicial process both at the interlocutory stage and at the full trial.
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4.15.
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4.16.
It is recognised that under such a system obtaining a patent can be an expensive and lengthy process. See paragraphs 4.22 to 4.46 of this chapter.
Types of examinations systems
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4.17.
There are various methods of providing for an examination system. These systems fall into the following categories:
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original grant of a patent after search and examination by the granting patent office (see paragraphs 4.18 to 4.46 below);
original grant of a patent after search and examination has been contracted out (see paragraphs 4.47 to 4.54 below);
original grant of a patent using the PCT (see paragraphs 4.55 to 4.58 below);
registration of a patent granted by another patent office (see chapter 5); and
issue or grant of a patent after registering a patent granted by another patent office (see chapter 5).
Original grant of a patent after search and examination by the granting patent office
4.18.
The most common type of examination system is where the patent office, on receipt of a patent application, conducts its own search and examination before granting the patent. It is the same patent office which conducts the search and examination and grants the patent. If viable, this system offers independence, and can be regarded as a source of
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