PCT International Search and Preliminary Examination Guidelines


Chapter 11 Prior Art

Documents Not Within the Prior Art Which May Nevertheless Be Relevant

Later Published Patent Applications (for Purposes of the International Search Report)

Rule 33.1(c)

11.07  Furthermore, the international search report includes published patent applications or patents whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application searched, and which would constitute relevant prior art for the purposes of Article 15(2) had they been published prior to the international filing date.

Later Published Patent Applications (for Purposes of International Preliminary Examination)

Rule 64.3

11.08  These earlier filed but later published patent applications or patents are not considered part of the prior art for the purpose of international preliminary examination as to novelty and inventive step. Nevertheless, the written opinion of the International Searching Authority and the preliminary examination report must draw attention to such published applications or patents in the manner provided for in Rule 70.10 (see paragraph 17.45) since they may be relevant to the determination of novelty and inventive step by designated or elected Offices.

11.09  Rule 70.10 provides that any published application or any patent referred to in the international preliminary examination report by virtue of Rule 64.3 is mentioned as such and is accompanied by an indication of its date of publication, of its filing date, and its claimed priority date (if any). In respect of the priority date of any such document, the report may indicate that, in the opinion of the International Preliminary Examining Authority, such date has not been validly claimed.

Copending Applications, Including Those Filed on the Same Date

11.10  The PCT does not deal explicitly with the case of co-pending international applications of the same date. However, it is an accepted principle in most patent granting systems that two patents shall not be granted to the same applicant for one invention. It is permissible to allow an applicant to proceed with two international applications having the same description where the claims are quite distinct in scope and directed to different subject matter. However, in the rare case in which there are two or more international applications from the same applicant designating the same State or States and the claims of those applications have the same priority date and relate to the same invention (even though they may not necessarily claim that invention in identical terms), each conflicting application should (as long as it has already been published) be cited in the international search report and identified with a ā€œLā€ category symbol as raising possible double patenting issues. A notification, to the applicant alone, is given in the case where his international application designates a State in which he proceeds with a national application having the same priority date and relating to the same invention as the said international application, if the examiner is aware of this situation. However, no such notification should be given where two applications (international or otherwise) of the same priority date and relating to the same invention are received from two different applicants.

Documents Relevant to Understanding the Invention

Section 507(e)

11.11  Certain other situations may occur in which a document published on or after the international filing date is relevant; examples are a later document containing the principle or theory underlying the invention, which may be useful for a better understanding of the invention, or a later document showing that the reasoning or the facts underlying the invention are incorrect. The international search is not extended for this purpose, but documents of this nature known to the search examiner may be selected for citation in the international search report. Such documents are cited in the international search report and their relevance explained in the written opinion.