CHAPTER 7:  THE INTERNATIONAL SEARCH PROCEDURE:  PROCESSING OF THE INTERNATIONAL APPLICATION BY THE INTERNATIONAL SEARCHING AUTHORITY

 

GENERAL

Article 15
18
Rule 43
43bis.1

7.001.   What are the main procedural steps before the International Searching Authority?  The main procedural steps that any international application goes through before the International Searching Authority are the following:

(i)  conducting the international search,

(ii)  preparing the international search report, and

(iii)  establishing a written opinion.

Article 16
Rule 4.14bis
35

7.002.   Which International Searching Authority is competent?  Each receiving Office (except the International Bureau as receiving Office – see paragraph 5.008) specifies one or more International Searching Authorities as competent to carry out international searches on international applications filed with it.  For some receiving Offices, different International Searching Authorities are competent depending on the language in which the international application is filed or, where the international application is filed in a language accepted by the receiving Office but not by the International Searching Authority, translated.  Where several International Searching Authorities are specified as competent by the receiving Office, the applicant may choose between them (subject to any such language restriction).  Annex C indicates the International Searching Authority or Authorities specified as competent by each receiving Office, and the languages in which international applications filed with that Office are accepted for international search by those Authorities.  Where the international application is filed with the International Bureau as receiving Office, the competent International Searching Authority (or Authorities) is that (or are those) which would have been competent if the international application had been filed with a competent national (or regional) Office as receiving Office.  All of the languages accepted for search by each International Searching Authority are set out in Annex D.  Where two or more International Searching Authorities are competent to carry out the international search, the applicant must indicate the Authority of his choice in the request form (see paragraph 5.072) and should also indicate it in the fee calculation sheet (see paragraphs 5.093 and 5.187).  Finally, within the framework of the respective agreements relating to the functioning of certain Offices as International Searching Authorities, these Authorities may provide for limitations of their competence in respect of certain international applications.  The consolidated texts of
these Agreements are available on the WIPO website at the following address:  www.wipo.int/pct/en/access/isa_ipea_agreements.html.  For more detailed information, see Annex D.

Article 15(4)
Rule 33

7.003.   What is the purpose of the international search?  The purpose of the international search is to discover relevant prior art.  “Prior art” consists of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations);  it is “relevant” in respect of the international application if it can help determine whether or not the claimed invention is new, whether or not it involves an inventive step (in other words, whether it is or is not obvious), and whether the making available to the public occurred prior to the international filing date (for further details, see Rule 33).  The international search is made on the basis of the claims, with due regard to the description and the drawings (if any) contained in the international application.  The results of the international search are set out in the international search report (see paragraphs 7.023 to 7.026).

Article 15(4)
Rule 34.1

7.004.   What documents are searched by the International Searching Authority?  The International Searching Authority must endeavor to discover as much of the relevant prior art as its facilities permit, and it must in any case consult the so-called “minimum documentation.”  Roughly stated, the latter comprises the published patent documents issued after 1919 by France, by Germany from 1920 to 1945 and by the Federal Republic of Germany since 1945, by Japan (for International Searching Authorities other than the Japan Patent Office, only those documents for which English abstracts are generally available), by the People’s Republic of China (for International Searching Authorities other than the State Intellectual Property Office of the People’s Republic of China, only those documents for which English abstracts are generally available), by the Republic of Korea (for International Searching Authorities other than the Korean Intellectual Property Office, only those documents for which English abstracts are generally available), by the former Soviet Union and now by the Russian Federation (for International Searching Authorities other than the Federal Service on Intellectual Property, Patents and Trademarks (Russian Federation) only those documents for which English abstracts are generally available), by Switzerland (except documents in Italian), by the United Kingdom, by the United States of America, by the African Intellectual Property Organization (OAPI), by the African Regional Intellectual Property Organization (ARIPO), by the Eurasian Patent Office and by the European Patent Office;  published international (PCT) applications;  and, from various dates, about 135 technical periodicals.  It is emphasized, however, that, where the International Searching Authority has more than the “minimum documentation” at its disposal, it is obliged also to consult that additional documentation to the extent permitted by its facilities.


NUCLEOTIDE AND/OR AMINO ACID SEQUENCE LISTINGS

Rule 5.2
13ter.1
Section 208
513(a)

7.005.   What special requirements apply during the international search to a nucleotide and/or amino acid sequence listing?  Where the International Searching Authority finds that an international application contains disclosure of one or more nucleotide and/or amino acid sequences and that the listing of such sequences  complying with the standard provided for in Annex C of the Administrative Instructions (see paragraph 5.099) has not already been furnished (either as part of the international application or separately for the purposes of international search – see paragraphs 5.100 and 5.102), that Authority may invite the applicant to furnish a listing complying with this standard.  The listing required by the International Searching Authority is for the purpose of carrying out the international search;  the application of the requirements of national law in relation to disclosure of inventions involving a sequence listing is a matter for the national phase of processing.

Rule 13ter.1(a)
13ter.1(b)
Section 208

7.006.   Can the International Searching Authority require a sequence listing to be provided in electronic form?  If the International Searching Authority finds that the applicant has not already furnished a sequence listing in electronic form complying with the standard provided for in Annex C of the Administrative Instructions, it may invite the applicant to furnish a listing to it in such a form.

Section 208
Annex C of the Administrative Instructions

7.007.   What electronic formats for sequence listings are acceptable?  Paragraph 40, Annex C of the Administrative Instructions requires that the entire printable copy of the sequence listing in electronic form must be contained within one electronic file on an electronic carrier that is acceptable to the competent International Searching Authority.  The file must be encoded as a text file using IBM Code Page 437, IBM Code Page 932 (both of which are de facto standards for personal computers), or a compatible code page to represent the sequence listing with no other codes included (IBM is a registered trademark of International Business Machines Corporation, United States of America).  A compatible code page, as would be required for, for example, Japanese, Chinese, Cyrillic, Arabic, Greek or Hebrew characters, is one that assigns the Roman alphabet and numerals to the same hexadecimal positions as do the specified code pages.

7.008.   Does the International Bureau recommend any software for the preparation of sequence listings in electronic format?  The electronic form of a sequence listing should preferably be created by dedicated software such as “PatentIn” (see paragraph 5.104).

Annex F, Appendix IV, 2.(f) of the Administrative Instructions

7.009.   The diskette or any other electronic carrier that is acceptable to the competent International Searching Authority must have a label permanently affixed thereto on which has been typed, or hand-printed in block capitals, the name of the applicant, the title of the invention, a reference number, the date on which the data were recorded, the computer operating system and the name of the competent Authority.  If the diskette or any other electronic carrier that is acceptable to the competent Authority is submitted after the date of filing of an application, the labels must also include the filing date of the application and the application number.

Rule 13ter.1(a)
13ter.1(b)
13ter.1(c)
13ter.1(d)

7.010.   What is the procedure for furnishing a sequence listing upon invitation?  An invitation from the International Searching Authority to furnish a sequence listing complying with the standard provided for in Annex C to the Administrative Instructions (see paragraphs 7.005 to 7.008), will specify a time limit for response to the invitation.  The furnishing of a sequence listing in response to the invitation may be subjected by the International Searching Authority to the payment of a late furnishing fee.  The amount of the late furnishing fee shall be determined by the International Searching Authority but shall not exceed 25% of the international filing fee referred to in item 1 of the Schedule of Fees (excluding any fee paid for each sheet of the international application in excess of 30).  Any sequence listing furnished by the applicant must be accompanied by a statement to the effect that the listing does not include matter which goes beyond the disclosure in the international application as filed.  If the applicant does not comply within that time limit, the search undertaken by the International Searching Authority may be restricted (see paragraph 7.013).

Rule 13ter.1(e)

7.011.   Does a sequence listing furnished to the International Searching Authority form part of the international application?  Any sequence listing, furnished separately to the International Searching Authority, is used only for the purposes of the international search and does not form part of the international application.  Nevertheless, once the international application has been published, any such sequence listing will be made available for public inspection by the International Bureau on PATENTSCOPE (www.wipo.int/patentscope/search/en/structuredSearch.jsf).

Rule 13ter.2

7.012.   Will a sequence listing furnished to the International Searching Authority also meet any requirements of the International Preliminary Examining Authority or, in the national phase, of a designated Office?  The same requirements in relation to sequence listings for the purposes of international search apply during international preliminary examination (see paragraph 10.063).  The International Preliminary Examining Authority may, for example, invite the applicant to furnish to it a sequence listing in electronic form complying with the standard provided for in Annex C of the Administrative Instructions for the purposes of international preliminary examination.  Concerning designated Offices, no designated Office may require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in the Annex C of the Administrative Instructions.  If a designated Office finds that a sequence listing does not comply with the standard provided for in the Administrative Instructions and/or are not in a electronic form provided for in the Administrative Instructions, it may invite the applicant to furnish a listing complying with those requirements (see National Chapters).


LIMITATIONS ON INTERNATIONAL SEARCH

Article 17(2)(a)(i) and (b)
Rule 13ter.1(d)
39.1

7.013.   May the International Searching Authority refuse to search certain subject matter?  The International Searching Authority is not required to perform an international search on claims which relate to any of the following subject matter:  (i) scientific and mathematical theories, (ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes, (iii) schemes, rules or methods of doing business, performing purely mental acts or playing games, (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods, (v) mere presentation of information, and (vi) computer programs to the extent that the Authority is not equipped to search prior art concerning such programs.  However, certain International Searching Authorities do, in practice, search these fields to varying extents – for example, several International Searching Authorities search subject matter which is normally searched under the national (or regional) procedure (for details, see Annex D).  In addition, the International Searching Authority is not required to search the international application, to the extent that a meaningful search cannot be carried out, in certain cases where a nucleotide and/or amino acid sequence listing is not furnished in accordance with the prescribed standard or in an electronic form (see paragraphs 7.005 to 7.012).  If the International Searching Authority is not required to search any of the claims, it may declare that it will not establish an international search report.  It should, nevertheless, be noted that the lack of an international search report in such a case does not, in itself, have any influence on the validity of the international application, the processing of which, including its communication to the designated Offices, continues.  In respect of the possibility for the International Searching Authority to limit its competence, see paragraph 7.002.

Article 17(2)(a)(ii)
and (b)
Rule 6.4(a)

7.014.   May the International Searching Authority refuse to search international applications which are unclear or have other defects?  If the International Searching Authority considers that the description, the claims or the drawings fail to comply with the prescribed requirements to such an extent that a meaningful search cannot be carried out, it may declare that it will not establish a search report (such a declaration may also be made in respect of some of the claims only).  This may in particular occur where the description or the claims are unclear.  The lack of an international search report does not, of itself, have any influence on the validity of the international application, the processing of which, including its communication to the designated Offices, continues.  Where only some of the claims are found to be “unsearchable,” the International Searching Authority will not search them but will search the rest of the international application.  The same may apply in the case of multiple dependent claims which do not comply with the manner of drafting provided for in the second and third sentences of Rule 6.4(a) (see paragraph 5.113).


UNITY OF INVENTION

Article 17(3)(a)
Rule 13

7.015.   What is the purpose of the requirement of “unity of invention”?  The search fee (see paragraph 5.184(ii) and Annex D) is intended to compensate the International Searching Authority for carrying out an international search on the international application, but only where the international application meets the requirement of “unity of invention.” That means that the international application must relate to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept.  The requirement of unity of invention is explained in detail in paragraphs 5.114 to 5.123.

Article 17(3)(a)
Rule 13
40.1
40.2(a)
and (b)
40.2(e)

7.016.   What happens where the International Searching Authority considers that the international application does not meet the requirement of unity of invention?  If the International Searching Authority finds that the international application does not meet the requirement of unity of invention, it invites the applicant to pay additional fees, specifying the reasons for its finding and indicating the number of additional fees to be paid.  The invitation will also invite the applicant to pay, where applicable, and will indicate the amount of, the protest fee as referred to in Rule 40.2(e).  Such additional fees are payable directly to the International Searching Authority within one month from the date of the invitation.  Annex D indicates the amount of the additional search fee per additional invention charged by each International Searching Authority.

7.017.   When the International Searching Authority invites the applicant to pay additional fees, it may annex to the invitation the results of a partial international search limited to the invention first mentioned in the claims (the relevant claims are identified in the invitation).  The results of such a partial search will be included in the international search report when it is established, together with the results of the search of any further invention for which the applicant pays additional fees within the time limit fixed in the invitation.

Article 17(3)(a)
Rule 13

7.018.   The International Searching Authority establishes the international search report in any case on those parts of the international application which relate to the “main invention,” that is, the invention – or group of inventions so linked as to form a single general inventive concept – first mentioned in the claims.  Moreover, the International Searching Authority establishes the international search report also on those parts of the international application which relate to any invention – or any group of inventions so linked as to form a single general inventive concept – in respect of which the applicant has paid the additional fee within the time limit fixed in the invitation.

Rule 40.2(c)
and (d)

7.019.   May the applicant protest against payment of the additional fees?  Yes, any applicant may pay the additional fee under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the number of the required additional fees is excessive.  Any such protest is examined by a review body constituted in the framework of the International Searching Authority, and a decision is taken on it.  To the extent that the applicant’s protest is found to be justified, the additional fee is totally or partly reimbursed.  At the request of the applicant, the texts of both the protest and the decision on it are notified to the designated Offices together with the international search report.

Rule 40.1
40.2(e)

7.020.   Where the applicant pays additional fees under protest, the International Searching Authority may also require the applicant to pay a fee for the examination of the protest (“protest fee”).  Details of the protest fee, if any, charged by the International Searching Authorities appear in Annex D.  Where the applicant has not, within one month from the date of the invitation to pay additional fees, paid any required protest fee, the protest shall be considered not to have been made and the International Searching Authority shall so declare.

Article 17(3)(b)

7.021.   What happens if the applicant does not pay the additional fees as invited?  Where, within the prescribed time limit, the applicant does not pay all the additional fees indicated by the International Searching Authority, but pays only some of them, or does not pay any additional fee at all, certain parts of the international application are not searched by that Authority.  The lack of an international search report in respect of those parts of the international application does not, of itself, have any influence on the validity of the international application, the processing of which, including its communication to the designated Offices, continues in respect of all claims.  Nevertheless, the national law of any designated State may provide that such unsearched parts of the international application will be considered withdrawn as far as that State is concerned unless a special fee is paid by the applicant to its national Office.  There are only a few Offices which apply such provisions.  Details of special fees are given in the respective National Chapters.


TITLE AND ABSTRACT

Rule 37
38
44.2

7.022.   What happens if the International Searching Authority finds that the title of the invention or the abstract is missing or defective?  In such cases, and in certain circumstances, it is the International Searching Authority which eventually establishes an appropriate title or abstract.  For details, see Rules 37, 38 and 44.2, and paragraph 5.173.


INTERNATIONAL SEARCH REPORT

Article 18(1)
Rule 42

7.023.   When must the international search report be established?  The international search report must be established within three months from the receipt of the search copy by the International Searching Authority (see paragraph 6.059) or nine months from the priority date, whichever time limit expires later.

Rule 43

7.024.   What are the contents of the international search report?  The international search report contains, among other things, the citation of the documents considered relevant, the classification of the subject matter of the invention (according to the International Patent Classification) and an indication of the fields searched (those fields being identified by a reference to their classification) as well as any electronic data base searched (including, where practicable, the search terms used).   Citations of particular relevance must be indicated specially.  Citations which are not relevant to all the claims must be indicated in relation to the claim or claims to which they are relevant.  If only certain passages of the document cited are relevant or particularly relevant, they must be identified, for example by an indication of the page on which, or the column or lines in which, the passage appears.  It is important to note that an international search report must not contain any expression of opinion, reasoning, argument or explanation of any kind whatsoever.  For full details, see Rule 43.

Article 18(2)
Rule 44.1

7.025.   How do the applicant and the International Bureau receive the international search report?  The International Searching Authority transmits, on the same day, one copy of the international search report (or, where none is established, a declaration to that effect – see paragraphs 7.013 and 7.014) and the written opinion established by it to the applicant and to the International Bureau.  The latter publishes the international search report with the published international application (see paragraph 9.015) and sends a copy to the designated Offices.

Article 20(3)
Rule 44.3

7.026.   How can the applicant obtain copies of the documents cited in the international search report?  The applicant can obtain copies of the documents cited in the international search report by requesting them from the International Searching Authority.  Certain International Searching Authorities, however, transmit such copies automatically without extra charge to the applicant, together with the international search report.  Annex D indicates those International Searching Authorities and indicates for the other Authorities the fees charged for furnishing copies on request.


WRITTEN OPINION OF THE INTERNATIONAL SEARCHING AUTHORITY

Rule 43bis.1(a)

7.027.    What is the written opinion of the International Searching Authority?  The International Searching Authority will establish, at the same time that it establishes the international search report or the declaration referred to in Article 17(2)(a), a preliminary and nonbinding written opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable, very similar in scope to the written opinion established by the International Preliminary Examining Authority during international preliminary examination.

Rule 44.1

7.028.   The relevant date for determining prior art for the purposes of establishing the written opinion is the international filing date or, where priority of an earlier application is claimed, the priority date – this date is different from that used in establishing the international search report but is consistent with the date used in international preliminary examination.  The written opinion of the International Searching Authority is established in the language in which the international search report is established, and is communicated to the applicant and to the International Bureau together with the international search report or the declaration referred to in
Article 17(2)(a) (see paragraph 7.025).  The written opinion, unless it is not yet available to the International Bureau, is also made publicly available on PATENTSCOPE on the same day that the international application is published.

Article 18(1)
Rule 42

7.029.   When must the written opinion be established?  The International Searching Authority must, as a rule, establish the international search report and the written opinion within three months from the receipt of the search copy sent to it by the receiving Office or within nine months from the priority date, whichever time limit expires later.

7.030.   May the applicant respond to the written opinion of the International Searching Authority?  Even though no special provisions are included in the Regulations providing for the applicant to comment on the written opinion of the International Searching Authority, in accordance with the decision of the PCT Assembly, applicants may submit comments on an informal basis to the International Bureau.  The purpose of such informal comments is to give the applicant an opportunity to rebut the written opinion of the International Searching Authority in the event that international preliminary examination is not requested.  Any such informal comments on the written opinion, unless that they are not yet available to the International Bureau, are made publicly available on PATENTSCOPE on the same day that the international application is published.  Any formal response to the written opinion of the International Searching Authority must be submitted directly to the International Preliminary Examining Authority under Article 34 as part of the procedure under Chapter II.

Rule 44bis

7.031.   What is the relationship between the written opinion of the International Searching Authority and the international preliminary report on patentability (IPRP) (Chapter I)?  If no international preliminary examination report has been or will be established, the written opinion of the International Searching Authority will form the basis for the issuance by the International Bureau, on behalf of the International Searching Authority, of the international preliminary report on patentability (IPRP) (Chapter I) which will be communicated to all designated Offices, together with any informal comments submitted by the applicant.  The international preliminary report on patentability (Chapter I) is made available on PATENTSCOPE for public inspection after the expiration of 30 months from the priority date.

Rule 43bis.1(c)
66.1bis

7.032.   If a demand for international preliminary examination is filed in respect of an international application, the written opinion which has been established by the International Searching Authority will, in general, be used by the International Preliminary Examining Authority as its own first written opinion, unless the International Preliminary Examining Authority notifies the International Bureau to the contrary.