Search report

The search report is the document in which an industrial property office lists the prior art that may be taken into consideration in assessing the novelty and inventive step of the claimed invention. In France, it is drawn up by INPI under Article L. 612-14 of the French Intellectual Property Code. Before the European Patent Office, the European search report is governed by Article 92 of the European Patent Convention, and in the international procedure, the international search report is provided for by the Patent Cooperation Treaty.

Drawing up the report

The search is directed to the claims, interpreted in the light of the description and drawings. The examiner consults patent databases and non-patent literature and cites the relevant documents, classifying them by relevance: documents which, taken alone, affect novelty or inventive step, those which affect inventive step only in combination with others, and those which merely define the technological background. The report indicates the claims to which each document relates. In France, the preliminary search report is accompanied by a written opinion on patentability and notified to the applicant, who may file observations and amend the claims. The final search report is drawn up in the light of those observations and published with the patent.

Scope of the report

The search report does not prejudge the validity of the patent. It is not a decision and binds neither the office during examination nor the court hearing an invalidity action, which freely assesses the prior art produced by the parties, including documents that the search did not reveal. It is nonetheless the first indicator of the strength of an application and the starting point of the prosecution strategy. The report is published with the application, eighteen months after the priority date, so that third parties become aware of it and may file observations.

The report in filing strategy and litigation

Where the French application serves as the basis for an international or European application, the preliminary search report informs the applicant before the priority period expires and allows the claims of the extension to be adjusted. In litigation, the defendant frequently relies on the documents cited in the report to support a counterclaim for invalidity, and the patentee replies that the office granted the patent in full knowledge of those documents. The search carried out by the office does not relieve the patentee of a further search before taking action, in particular in non-patent literature and in Asian languages, which the databases cover unevenly.

Key points

The search report lists the relevant prior art and classifies the documents according to their bearing on novelty and inventive step, without binding the office or the court. It is notified to the applicant with an opinion on patentability and published with the application. It should be used before the priority period expires to adjust the claims of extensions, the documents cited should be answered with reasoned observations and the office’s search should be supplemented before any litigation.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. When the question arises in a real case, the right moment is almost always before proceedings are issued.

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