New PCT Service: Supplementary International Search
On 1 January 2009, PCT Rule 45bis will come into effect and the new PCT supplementary international search (SIS) service will be available to all applicants. This is an optional service, developed at the request of applicants, that allows additional searches to be performed during the international phase, in addition to the search prepared by the applicant’s “usual” International Searching Authority (ISA). Three Authorities (the Federal Service for Intellectual Property, Patents and Trademarks (
Why is the new service being introduced?
It has always been recognized that no search can be guaranteed to find all of the relevant prior art. The main international search is intended to be of a high quality and to cover not only the PCT minimum documentation but also the additional range of documentation which would be searched by the ISA in its role as a national Office. Furthermore, Offices are working on technical systems to assist examiners in conducting an effective, broad search, as well as on quality management systems to encourage good practice. Nevertheless, there remain cases where highly relevant citations are only found during the national phase, once considerable additional expenditure has been incurred.
One of the major problems in finding relevant prior art is that the range of languages in which original technical disclosures are made is constantly increasing; no single Office is capable of searching even the whole of the PCT minimum documentation in its original language, let alone the large volume of other patent and non-patent literature containing original disclosures. Machine translation goes some way towards addressing this problem, but is still a long way from being a substitute for consideration of disclosures by an examiner who understands the original language.
The SIS service will thus allow applicants to reduce the risk of being faced with new citations during the national phase. It is not expected that SIS will be requested routinely, but rather as a strategic decision by the applicant, taken after consideration of the results of the main international search, the commercial importance of the particular application and the amount of prior art in the particular technical field which is known to be published in a language in which the main ISA is not skilled.
Moreover, it is up to the individual Authorities offering SIS to define the scope of the service which they are offering, and for the applicant to decide which (if any) of those services meets the needs of the particular application. Some Authorities may offer a search which is focused on documentation in languages in which they specialize, while others may offer a full search, covering their entire documentation as they would do if they were conducting a “normal” (main) international search. Each Authority also sets its own fees for the service and it is up to the applicant to decide whether SIS is desirable in any particular case. The applicant is permitted to request more than one SIS on the same international application, if this is desired.
Which Authority can I use to carry out the supplementary international search?
In principle, subject to any limitations which may be set out by the Authority concerned, an ISA which has announced that it will act as an Authority specified for supplementary search will be able to act in such a capacity for any international application, irrespective of the receiving Office with which the application has been filed (as distinct from the international searching and preliminary examining authorities, which, under PCT Rules 35 and 59.1, depend on the receiving Office with which the application was filed).
What does a supplementary international search cover?
As regards the scope of documentation searched, each participating Authority defines the scope of its service. The services available from January 2009 are summarized in the table, below.
The SIS will be carried out on the application as filed (amendments under PCT Article 19 and/or 34 will not be considered) and will only cover one invention or group of inventions having unity of invention – there is no option for paying additional fees for the searching of multiple inventions. However, if the main ISA has identified a lack of unity before SIS is requested, the latter can be requested to concentrate on an invention which is not necessarily the first one claimed (PCT Rule 45bis.1(d)).
If not established in English, the resulting supplementary international search report will be translated into English by the International Bureau (IB).
How much will it cost?
Requests for SIS must be submitted directly to the IB and not to individual Authorities. There is a supplementary search handling fee of 200 Swiss francs to cover the costs of the IB and a supplementary search fee set by each Authority offering the service. These fees must be paid to the IB in Swiss francs within one month of filing the request for SIS. Applicants from certain States may be eligible for a 90% reduction in the supplementary search handling fee (please refer to the PCT Schedule of Fees, as in force from 1 January 2009, at: http://www.wipo.int/pct/en/texts/pdf/pct_regs2009.pdf).
Although there is no opportunity to pay for searches of additional inventions, it is permitted to request a review of any finding of lack of unity. The Authority may require a fee for this, which in this case is payable directly to the Authority in (one of) its accepted currency(ies).
Limitations of the service
The Authority may, subject to any special provisions, refuse to issue a supplementary search report for some or all of the claims in the following circumstances (in which case there is no refund of the fees):
– if the main ISA declares that no international search report will be established; or
– if the Authority would not carry out a main international search in the same case, for reasons of subject matter, clarity or failure to provide a sequence listing in the appropriate form.
The Authority may, according to PCT Rule 45bis.9, set out any limitations and conditions of the service in its agreement with the IB, for example, it may limit itself to a maximum number of searches per year, or may only offer the service for certain technical fields. If no search is performed because of such a special limitation, the supplementary search fee will be refunded.
Summary of services offered from 1 January 2009
The requirements, fees and scope of the services offered from 1 January 2009 are as follows:
| International Searching Authority specified for supplementary search | Required language of international application or translation | Fees (as at 1 January 2009) |
Scope of search |
|---|---|---|---|
| Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation) (RU) | Russian or English | Supplementary search handling fee: CHF 200 Supplementary search fee: CHF equiv. of USD 350 |
To be confirmed: For any international application:
At least the Russian language documentation held by the Authority in its collection and certain patent documentation in other languages published by the former Soviet Union or members of the Commonwealth of Independent States. |
| Supplementary search handling fee: CHF 200 Supplementary search fee: CHF equiv. of USD 500 |
To be confirmed: If the main ISA has issued a declaration that no International Search Report will be established due to the inventions relating to methods of treatment of the human or animal body:
At least the PCT minimum documentation, as well as the documentation specified in the above service. |
||
| Swedish Patent and Registration Office (SE) | Swedish, English, Danish or Norwegian | Supplementary search handling fee: CHF 200 Supplementary search fee: CHF 2,726 |
At least the PCT minimum documentation, as well as documents in Swedish, Danish, Finnish and Norwegian held by the Authority. |
| Nordic Patent Institute (XN) | Danish, English, Norwegian, Icelandic or Swedish | Supplementary search handling fee: CHF 200 Supplementary search fee: CHF 2,726 |
At least the PCT minimum documentation, as well as documents in Danish, Icelandic, Norwegian, and Swedish held by the Authority. |
More detailed information is published in the PCT Applicant’s Guide, Annex SISA (RU, SE and XN).
Note that the applicant may withdraw a request for SIS at any time prior to the issuance of either the supplementary international search report or the declaration by the Authority that no report will be established. As long as the IB has not yet transmitted the request for SIS to the Authority in question, both the handling fee and the supplementary search fee will be refunded to the applicant.
Further information
Further explanations of the SIS system are published in the “Practical Advice” in this issue, which discusses, in particular, the applicability of the new system and explains how to request SIS. For further information, see also:
– PCT Rule 45bis at: http://www.wipo.int/pct/en/texts/pdf/pct_regs2009.pdf
– PCT Applicant’s Guide, Annex SISA (RU, SE and XN), which contains information on the fees payable for the benefit of those Offices, as well as the scope of an SIS by those Offices, and new Chapter VIIbis (which has not yet been finalized but will be available shortly) at: http://www.wipo.int/pct/guide/en/index.html
– a new, detailed, PowerPoint presentation available at: http://www.wipo.int/pct/en/texts/ppt/sis.ppt
The Nordic Patent Institute and the Swedish Patent and Registration Office have published information on their roles as supplementary international searching authorities on their websites at, respectively:
http://www.npi.int/PCT/Supplementary-International-Search/
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