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PCT Newsletter 05/2009: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Declaration of non-establishment of international search report:  possible actions in the case of other related PCT applications filed later

Q:  I have filed several PCT applications relating to similar inventions, in respect of which I have chosen the same International Searching Authority (ISA) to carry out the search. I have just received from the ISA, in respect of the first of these applications filed, a declaration that no international search report (ISR) will be established for the application due to the fact that it concerns a subject which the ISA will not search. Is it possible to obtain a refund of the search fee for that application? Also, since I fear that I will not be able to get an ISR in respect of the other related applications, is it possible to amend the claims in such a way that the subject matter claimed will change, or failing that, to change the ISA that I initially selected to carry out the international search for one which will search the subject matter concerned?

A:  A declaration under PCT Article 17(2)(a) that no ISR will be established can be made if the ISA considers that a meaningful search cannot be carried out because the international application relates to a subject matter which, under the PCT Regulations, the ISA is not required to search and, in the particular case, decides not to search (see PCT Article 17(2)(a)). ISAs often search only subject matter encompassed by the national/regional patent granting procedure under the provisions of their applicable national/regional law. A list of the subject matters which the ISA can decide not to search is provided in PCT Rule 39.1;  information relating to the subject matters which will not be searched by a particular ISA can be found on the relevant page of the PCT Applicant’s Guide, Annex D; however, for full details, it is preferable to contact the ISA concerned directly. It is recommended that before filing the international application, applicants inform themselves as to which subject matters will not be searched by the ISA they intend to choose.

As far as a refund of the search fee is concerned, the non-establishment of an ISR would not be a reason for an ISA to refund any search fees. The only cases for which a refund of the search fee is provided for are listed under PCT Rule 16.2. For information relating to the applicable conditions for refund for each ISA, refer to the relevant part of Annex D of the PCT Applicant’s Guide.

The lack of ISR from the chosen ISA due to the fact that it does not search a particular subject matter does not prevent you from requesting a supplementary international search by one of the ISAs specified for that purpose. Note, however, that where the ISA has made a declaration that no ISR will be established, and that declaration is available to the Authority specified for supplementary international search before it starts its search, it may decide not to establish the supplementary international search report (see PCT Rule 45bis.5(e)). For further information on requesting a supplementary international search, see PCT Newsletter No. 12/2008, cover page and page 14.

It will not be possible to resolve this issue by amending the claims under PCT Article 19 as it is not possible to file such amendments if no ISR has been established. Also, although you would be entitled to amend the claims under PCT Article 34(2)(b) if you file a demand for international preliminary examination, the International Preliminary Examining Authority is only required to examine the claims which have been searched (see PCT Rule 66.1(e)). You will be given the opportunity to amend the application before each designated or elected Office under PCT Article 28(1) or 41(1), although any amendments must not go beyond what was originally disclosed in the international application.

As far as the other PCT applications are concerned, you cannot amend the claims under PCT Article 19 prior to the receipt of the ISR, and if the ISA issues a declaration that no ISR will be established, you will not be able to file such amendments in respect of those applications either. Also, although the PCT does not specifically provide for a change of choice of ISA, paragraph 115 of the PCT Receiving Office Guidelines states that, provided that more than one ISA is competent to carry out the international search, the applicant may make a change to the choice of Authority where the search copy has not yet been transmitted to the ISA.

Note that the lack of an ISR does not, in itself, have any influence on the validity of the international application, the processing of which, including its publication and communication to the designated Offices, continues. For further information on the consequences of the non-establishment of an ISR, see the “Practical Advice” in PCT Newsletter No. 10/2007.