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PCT International Search and Preliminary Examination Guidelines


Appendix to Chapter 12

A12.02  The International Searching and Preliminary Examining Authorities have divergent practices with regard to what extrinsic knowledge may be considered when determining whether a particular item of prior art sufficiently discloses the claimed invention to defeat novelty. Some Authorities follow the first guideline below, while other Authorities follow the second guideline below. Authorities that do not follow these guidelines may nevertheless rely on the prior art document in determining whether the claimed invention lacks inventive step.

A12.02[1]  The prior document must provide a sufficient disclosure on its effective date. By “effective date” is meant the publication date in the case of a previously published document. Authorities following this practice require the prior document, together with knowledge generally available on the effective date of the document, to provide a sufficient disclosure of every element or step of the claimed invention to a person skilled in the art.

A12.02[2].1  The prior document must provide a sufficient disclosure on the “relevant date” of the claim being searched or examined. See paragraph 11.03 for a definition of the relevant date for international search report purposes. See paragraphs 11.04 and 11.05 for a definition of the relevant date for written opinion and international preliminary examination purposes.

A12.02[2].2  Authorities following this practice consider knowledge that became available after the publication date of the prior document but before the relevant date of the claim being searched or examined to determine whether the prior document provided a sufficient disclosure of every element or step of the claimed invention to a person skilled in the art.