Transmittal of Documents relating to Earlier Search or Classification

The technical requirements to enable the implementation of the transmittal of documents relating to earlier search or classification, following the adoption by the PCT Assembly, in October 2015, of amendments to PCT Rule 23bis that will enter into force on July 1, 2017 have been specified in PCT Circular C.PCT 1504, and are complemented by the examples and information provided here.  

Documents and data concerned

Prior to July 1, 2017, receiving Offices are required to forward to the ISA copies of search reports relating to earlier applications where the applicant has requested the ISA under PCT Rule 4.12 to take a search on that earlier application into account.  Under new PCT Rule 23bis, receiving Offices will be required to forward one or more of the following types of document or data, irrespective of whether the applicant has requested an earlier search to be taken into account:

  • a copy of any search results relating to earlier applications where the applicant has requested the ISA under PCT Rule 4.12 to take a search on that earlier application into account under PCT Rule 23bis.1; 
  • a copy of any search results related to an earlier application from which the international application claims priority under PCT Rule 23bis.2;  and,
  • a copy of the results of any earlier classification effected by that Office under PCT Rule 23bis.2.

Sample package files

Sample PCT-EDI package files are available as follows:

  • Annex F receiving Office record copy package ZIP, Annex F receiving Office record copy package
  • PCT-EDI batch file containing examples ZIP, PCT-EDI batch file containing examples

Summary process information notes

The following information has been taken from the PCT Circular C.PCT 1504:

Offices which transmit search copies directly to the ISA

Where the receiving Office transmits search copies electronically directly to the ISA, the standards by which the documents are sent will need to be agreed bilaterally.

It is not required that receiving Offices which transmit search copies directly to the ISA (including the case where the same Office acts as both receiving Office and ISA) send copies of the earlier search and classification documents to the International Bureau. 

Offices which transmit search copies using the eSearchCopy system

Where the receiving Office transmits search copies to the ISA via the International Bureau’s eSearchCopy system it will be necessary to send, in addition to those documents already being sent, the additional documents relating to an earlier search or classification of the priority application(s) under PCT Rule 23bis.2 to the International Bureau (via PCT-EDI or via ePCT).  Because the eSearchCopy system automatically forwards all documents relating to earlier search or classification that have been received from receiving Offices, receiving Offices should ensure not to transmit any documents relating to earlier search or classification to the International Bureau in cases where, under PCT Rule 23bis.2, such documents relating to earlier search or classification must not be sent to the ISA.

Transmission of documents using PCT‑EDI

The International Bureau has modified the “Minimal Specifications for the Transmittal of Documents to the International Bureau pdf”, version 4.5, to include the document type codes necessary:

  • “resr” – results of earlier search (no change)   
    for transmission of search reports transmitted under PCT Rule 23bis.1 (requested by the applicant under PCT Rule 4.12)
  • “resp” – results of earlier search of priority application
    for transmission of search reports transmitted under PCT Rule 23bis.2 – the document may be in PDF or WAD format
  • “oesp” – written opinion of earlier search priority application
    for transmission of written opinions transmitted under PCT Rule 23bis.2 – the document may be in PDF or WAD format
  • “aesp” – annex to earlier search of priority application
    for transmission of annexes, such as patent family or search strategy, to reports transmitted under PCT Rule 23bis.2 the document may be in PDF or WAD format;
  • “cesp” – classification of earlier search of priority application
    for transmission of page image‑based documents containing classification information for the priority application other than as part of a search report, new code “cesp” should be used – the document may be in PDF or WAD format;  and,
  • “xesp” – XML classification of earlier search of priority application
    for transmission of machine‑readable files containing classification codes other than as part of the search report, new code “xesp” should be used – the document should be in WAD format, containing files compliant with the search‑report XML DTD, with all elements empty except the mandatory bibliographic information and the classification elements.

Format of search reports

The above proposals have been based on the expectation that the majority of documents relating to earlier search or classification will, for now, only be made available in the form of page image‑based documents representing a search report or similar document.  Eventually, it is hoped that Offices will move towards transmission of XML‑based search results.  Any Office already able to transmit national search information in XML‑based format is invited to contact the International Bureau to discuss next steps in this area.

Availability of the earlier search and classification results

The International Bureau will transmit to participating ISAs these additional page-based documents as part of the regular eSearchCopy transmissions, indexed as document types “resr” (as at present), “resp”, “oesp”, “aesp”, and/or “cesp”  or “xesp”.  At least initially, the documents will be forwarded exactly as received, without any further processing to make the information consistent between receiving Offices.  The documents will also be made available in the browser‑based ePCT for Offices.

Request to receiving offices that use the eSearchCopy system

The International Bureau requests that, as far as possible, receiving Offices that use the eSearchCopy system ensure that the documents relating to earlier search or classification are uploaded to the International Bureau at the same time as the record copy in order to ensure that the information is immediately available to the ISA with the search copy, rather than being sent in a later transmission when it may be too late to be useful.