PCT International Search and Preliminary Examination Guidelines


Chapter 15 The International Search

Cases Where No Meaningful Search Is Possible

Article 17(2)(a); Rules 39, 43bis.1, 66.2(a)(v)

15.33  The examiner, in general, excludes from the international search subject matter for which no searches are to be carried out, or for which no meaningful search can be made; this may result, for example, from the fact that certain subject matter may be excluded from the search under Rule 39, or from exceptional situations where no search at all is possible for a particular claim(s) (see paragraph 15.12 and Chapter 9). The examiner indicates in either Box No. II of Form PCT/ISA/210 (International Search Report) or Form PCT/ISA/203 (Declaration of Non-Establishment of International Search Report), as appropriate, the reasons for which no international search is established in respect of the relevant claims. In Box No. III of Form PCT/ISA/237 (Written Opinion of the International Searching Authority; see paragraphs 17.09, 17.33 and 17.34), it will then usually be sufficient to indicate that no international search report has been established for the relevant claims as the reason for not establishing an opinion on novelty, inventive step and industrial applicability and refer to the international search report or declaration for further details.

Obvious Mistakes and Expressions, Etc., Not to be Used (Rule 9)

Rules 9.1, 9.2, 91.1, 33.3(b); Sections 217, 511(a)(v)

15.34  If the examiner notices any obvious mistake in the international application, the International Searching Authority may invite (optionally using Form PCT/ISA/216, see paragraph 8.13) the applicant to request the rectification of the error.

15.35  Similarly, if the International Searching Authority notes matter not to be used as defined in Rule 9.1, such as matter contrary to public order (“ordre public”) or morality or disparaging statements which ought to be omitted from the international application as published, it suggests to the applicant, with Form PCT/ISA/218, that the applicant voluntarily correct the international application and notifies the receiving Office and the International Bureau accordingly.1 Note that any such correction must not introduce new matter. If the applicant does not make the requested corrections within the indicated time limit, the examiner proceeds with international search and examination covering subject matter to which the claims might reasonably be expected to be directed after correction. However, it should be recognized that if the applicant does not make the requested corrections, the International Bureau may omit the noted matter from the publication of the international application, in accordance with Article 21(6).

15.36  Any decision on a rectification under Rule 91.1 (Form PCT/ISA/217) or any correction aimed at complying with Rule 9.1 must be transmitted to the International Bureau; corrections aimed at complying with Rule 9.1 must also be transmitted to the receiving Office.

  1. Where applicable, the International Bureau informs any competent Authority specified for supplementary search.