PCT International Search and Preliminary Examination Guidelines
PART IV THE INTERNATIONAL SEARCH
Chapter 15 The International Search
15.10 There is no right to amend the application until after the international search has been established, consequently the international search must be carried out on the basis of the search copy of the application as transmitted to the International Searching Authority by the receiving Office, except that obvious mistakes may be corrected (see Chapter 8).
15.11 The application may contain later filed pages marked “INCORPORATED BY REFERENCE (Rule 20.6)”. These are pages containing missing parts or correct elements or parts which have been incorporated by reference from the priority document under Rules 4.18 and 20.6 by the receiving Office. Such pages should be considered as originally filed and should be so indicated on the forms. In case the examiner notices that the incorporated elements or parts were not completely contained in the priority document, then it may be noted in the written opinion of the International Searching Authority (in item 5 “Additional Comments” of Box I) that there are doubts as to whether the missing parts or correct elements or parts were actually completely contained in the priority document. In such a case the search report may further include additional documents (“L”) which would be relevant if a re-dating of the application would be made. The file of the application may also contain sheets stamped “NOT TO BE CONSIDERED (RULE 20.5(e))”, “NOT TO BE CONSIDERED (RULE 20.5bis(e))”, or “NOT TO BE CONSIDERED (RULE 20.7)”. This means that these sheets were not allowed by the receiving Office under the relevant provisions (for formal or substantive reasons) or that the applicant has withdrawn those parts in order to avoid re-dating of the application. Such sheets thus do not belong to the application documents and should be ignored for search and examination. The application may also contain sheets stamped “ERRONEOUSLY FILED (RULE 20.5bis)”. These are the sheets that were erroneously filed by the applicant and have been superseded by the sheets marked “INCORPORATED BY REFERENCE (Rule 20.6)”, but remain in the international application pursuant to Rule 20.5bis(d). These sheets usually need not be taken into account for search and examination (except in the case described in paragraph 15.11C, second sentence).
15.11A If the International Searching Authority receives from the receiving Office a notification of later filed pages (either marked “INCORPORATED BY REFERENCE (Rule 20.6)” as described above, or otherwise included in the international application following a change of the international filing date under Rule 20.5(c) or 20.5bis(c)) after it has begun to draw up the international search report, it may invite the applicant to pay additional fees (using Form PCT/ISA/208).
15.11B Where the International Searching Authority decides to issue such an invitation to pay additional fees under Rule 40bis.1, it indicates in the invitation the date of receipt of the notification from the receiving Office referred to in the paragraph above and the amount of the additional fees to be paid, and invites the applicant to pay the fees within one month from the date of the invitation.
15.11C If the additional fees have been paid within the prescribed time limit, or no such an invitation has been issued, the International Searching Authority draws up the international search report and written opinion on the basis of the international application including the later submitted pages (in the case of incorporation by reference of correct elements or parts, any erroneously filed elements or parts which remain in the application pursuant to Rule 20.5bis(d) need not be considered). Otherwise, it will draw up the international search report and written opinion without taking into account the later submitted pages containing the missing parts or correct elements or parts (in the case of incorporation by reference of correct elements or parts, the report and opinion will be established on the international application including the erroneously filed elements or parts). In this case, it will make a corresponding remark in the written opinion (see paragraph 17.16A).
15.11D In the case where the additional fees have been timely paid, in addition to establishing the international search report and written opinion as described in paragraph 15.11C, the International Searching Authority may decide to also complete a non-official international search report and a non-official written opinion based on the international application initially transmitted to it.
15.12 If the application contains disclosure of nucleotide and/or amino acid sequences having ten or more specifically defined nucleotides or four or more specifically defined amino acids but does not contain a sequence listing complying with the relevant standard (see paragraph 4.15) or the sequence listing furnished is not in an accepted language, the International Searching Authority may invite the applicant (with Form PCT/ISA/225) to furnish, within a fixed time limit, a sequence listing complying with the standard or, where applicable, a translation of the sequence listing in a language acceptable to it, for purposes of completion of the international search. The furnishing of a sequence listing or translation in response to an invitation by the International Searching Authority may be subject to the payment of a fee set by the International Searching Authority, which may not exceed 25% of the international filing fee (not taking into account any fee for each sheet of the international application in excess of 30 sheets). The International Searching Authority should not, however, require payment of any late furnishing fee if the absence of the sequence listing in a compliant form at the International Searching Authority was due to the receiving Office failing to forward an electronic sequence listing it had received for the purposes of Rule 13ter to the International Searching Authority, as required by Rule 23.1(c). If the applicant complies with the invitation, the International Searching Authority proceeds with the completion of the international search, the international search report or declaration of non-establishment of international search report, and the written opinion on the basis of the compliant sequence listing or translation provided. However, any sequence listing not contained in the international application as filed will not, subject to Article 34, form part of the international application, but will be used as a search tool. If the applicant does not comply with the invitation within the time limit or if the response to the invitation is defective, the International Searching Authority is required to search the international application only to the extent that a meaningful search can be carried out without the sequence listing (see paragraph 9.39).
15.14 Where the language in which the international application is filed is not accepted by the International Searching Authority that is to carry out the international search, the applicant should have supplied to the receiving Office a translation of the international application into a suitable language, while no such translation is required of the request form. The receiving Office sends this translation as part of the search copy and the international search will be carried out on the basis of this translation.
Rules 12.3, 13ter.1; AI Annex C
15.14A If the international application contains a sequence listing part of the description, only a translation of the language-dependent free text of the sequence listing may be required for the purposes of international search. Nevertheless, any such translation has to be provided in the form of a complete sequence listing containing all of the language-dependent free text in the required language. Note that the receiving Office may permit the language-dependent free text to be filed in more than one language according to the standard provided for in Annex C of the Administrative Instructions. If this is the case, as long as any one of the languages is accepted by the International Searching Authority, no translation of the sequence listing will be required. Where the language-dependent free text is not in a language accepted by the International Searching Authority but the receiving Office has not invited the applicant to furnish a translation under Rule 12.3, the International Searching Authority may invite the applicant to furnish a translation of the sequence listing into a language acceptable to it under Rule 13ter.1 (using Form PCT/ISA/225) and a late furnishing fee may be charged for this purpose (see paragraph 15.12).
15.15 The applicant may request the International Searching Authority to take into account the results of an earlier search carried out by that or another International Searching Authority or by another national (regional) Office. In this case, either a copy of the results of the earlier search (in whatever form they are presented by the Authority or Office concerned) will be sent by the receiving Office with the search copy, or in the alternative the International Searching Authority will be requested to retrieve a copy for itself where either it prepared the results of the earlier search itself, or else has access to them in a form and manner acceptable to it, for example from a digital library.
15.16 The Authority may additionally invite the applicant (optionally using Form PCT/ISA/238) to furnish the following items within a time limit reasonable under the circumstances, where they have not been transmitted by the receiving Office and are not already available to it from its own records or from a digital library which it is prepared to use for the purpose (and, if necessary, where the applicant has informed the Authority that the document is so available):
(i) a copy of the earlier application concerned;
(ii) where the earlier application is in a language which is not accepted by the International Searching Authority, a translation of the earlier application into a language which is accepted by that Authority;
iii) where the results of the earlier search are in a language which is not accepted by the International Searching Authority, a translation of those results into a language which is accepted by that Authority;
(iv) a copy of any document cited in the results of the earlier search.
However, no copy or translation of the earlier application may be required if the applicant indicates in the request that the earlier application is “the same, or substantially the same” as the international application. By this, it is meant that the inventions described and claimed are the same and any changes, beyond accurate translation where relevant, relate solely to formatting and correction of minor errors, inclusion or removal of matter not specific to the invention, but which is required in some States (such as details of public funding used in the development of the invention).
15.17 Where the earlier search which the applicant requests to be taken into account was carried out by the same International Authority, or by the same Office which is acting as an International Searching Authority, that Authority must, to the extent possible, take the results into account in establishing the international search report and written opinion.
15.17A Where the earlier search was carried out by another International Searching Authority, or by an Office other than that which is acting as the International Searching Authority, the Authority may take the results into account. “Taking the results into account” in this context means finding a real benefit in those results to the extent that the earlier search may be considered to stand in place of at least a part of the international search. In any case, the examiner should consider the fields of search and cited documents in order to determine their relevance and whether they offer assistance in determining appropriate databases, classifications or terms of art in order to improve the quality of the international search.
15.17B Where the international application claims the priority of one or more earlier applications in respect of which an earlier search has been carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, even where the applicant has not requested the International Searching Authority to take such results into account, that Authority must, to the extent possible, take those results into account in establishing the international search report and written opinion (Rule 41.2(a)).
15.17C Where the international application claims the priority of one or more earlier applications filed with the same Office as that which is acting as the receiving Office and that Office has carried out an earlier search in respect of such an earlier application, or has classified such earlier application and, pursuant to Rule 23bis.2(a) or (c), that receiving Office has transmitted to the International Searching Authority a copy of any earlier search or classification results, or where a copy of such results or classification is already available to the International Searching Authority, in a form and manner acceptable to it, that Authority may take those results into account in establishing the international search report and written opinion (Rule 41.2(b)).