World Intellectual Property Organization

PCT Receiving Office Guidelines

Chapter VI: Article 14 Check and Other Formal Requirements

Reference to Earlier Search

116A. Reference to Earlier Search. Where the applicant wishes the International Searching Authority to base the international search report wholly or in part on the results of an earlier international search, international-type search or national search carried out either by the same International Searching Authority, by another International Searching Authority or by a national (regional) Office, the corresponding indications must be made in Box No. VII of the request (Rule 4.12).

116B. Where the applicant has requested the International Searching Authority to take into consideration the results of an earlier search, the receiving Office checks in general whether the applicant has either submitted the results of the earlier search together with the international application or else requested either the receiving Office or the International Searching Authority to retrieve them. This check by the receiving Office is however not necessary where the earlier search referred to was conducted by the Office acting as International Searching Authority since, under Rule 12bis.1(d), the submission of the results of the earlier search result is not required in such cases. If the applicant nevertheless checked any boxes in Box No. VII, other than the one requesting the ISA to take into account the results of an earlier search(es), the receiving Office should correct such indications ex officio. The receiving Office also checks whether the document(s) correspond to the indications made in Box No. VII of the request and whether the data indicated in Box No. VII is complete and appears to be correct. Furthermore, where the applicant has requested the receiving Office, under Rule 12bis.1(c), to prepare and transmit the results of the earlier search to the International Searching Authority, the receiving Office checks whether the earlier search referred to has been completed and, where applicable, whether the fee referred to in Rule 12bis.1(c) has been paid.

116C. Where the indications in Box No. VII and the results of the earlier search(es) submitted comply with the requirements mentioned in paragraph 116B, the receiving Office, as applicable, transmits, or prepares and transmits, the results of the earlier search(es) together with the search copy to the International Searching Authority (see Section 337). Where the applicant has furnished any other document in connection with the request under Rule 12bis.1(a) together with the international application, the receiving Office either informs the applicant that such documents should be submitted directly to the International Searching Authority or, at its choice, transmits those documents to the International Searching Authority.

116D. Incomplete or Incorrect Indications or Missing or Inconsistent Earlier Search Results. Where the receiving Office has found that the indications made in Box No. VII are incomplete, do not correspond to the earlier search results submitted or seem otherwise incorrect, the receiving Office may proceed as outlined in paragraphs 161 to 165 (“Ex Officio Corrections”) or refer the applicant to Rule 91.1. The sending of the search copy to the International Searching Authority should, however, not be delayed by any such ongoing proceedings. Where any such incomplete or incorrect indications in Box No. VII cannot be resolved as an ex officio correction and/or under Rule 91.1, or where the applicant has failed to submit the results of the earlier search(es) together with the international application under Rule 12bis.1(a) or where the receiving Office could not prepare and transmit a copy of the results of the earlier search(es) under Rule 12bis.1(c), the receiving Office should inform the applicant (Form PCT/RO/132) that his request for the International Searching Authority to take into account the results of an earlier search could not be acted upon and/or be forwarded to the International Searching Authority. A copy of this notification should be sent to the International Bureau and the International Searching Authority. Where the indications in Box No. VII do not seem to correspond to the earlier search results submitted by the applicant under Rule 12bis.1(a), and even if such inconsistencies could not be resolved, the receiving Office should nevertheless transmit the earlier search results to the International Searching Authority.

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