PCT International Search and Preliminary Examination Guidelines


Chapter 15 The International Search

Evaluating the Prior Art

15.63  The examiner makes a determination of whether the claimed invention meets the standards for novelty and inventive step as set out in Chapters 12 and 13.

Matters of Doubt Regarding Relevant Prior Art

15.64  Since the final decision with respect to novelty is not the responsibility of the International Searching Authority but of the designated Offices, the International Searching Authorities should not discard documents merely because of doubt as regards, for example, the exact date of publication or public availability, or the exact contents of an oral disclosure, exhibition, etc., to which such documents may refer. The International Searching Authority should try to remove any doubt that may exist and should cite the documents concerned in the international search report unless the date of publication or of public availability of the document concerned is clearly the same as, or later than, the filing date of the international application. Additional documents providing evidence in matters of doubt may be cited. Where the date of the reference is not clearly established, the examiner should cite the document as a category “L” document (see paragraph 16.75) and indicate in the search report that the exact date of publication has not been established.

15.65 Any indication in a document of the date of its publication should be accepted by the International Searching Authority as correct unless evidence to the contrary shows a different publication date. If the indicated date of publication is insufficiently precise (for example, because a year or year and month only are given) to establish whether publication was before the filing date of the international application, the International Searching Authority should endeavor to establish the exact date with sufficient precision for that purpose. A date of receipt stamped on the document, or a reference in another document, which must then be cited, may be of assistance in this respect.

Excluded Subject Matter

15.66 Special attention should be paid to the evaluation of prior art documents when assessing subject matter which may be excluded from the international search. If, in the Office acting as International Searching Authority, such subject matter is considered matter excluded under Article 17(2)(a)(i), the category symbol (see paragraphs 16.65 to 16.75) is assigned based on the subject matter which might reasonably be expected to be claimed by amendment. Where other claims appearing in the international application are directed to non-excluded subject matter, the assessment of subject matter which might reasonably be expected to be claimed by amendment should be made taking into account the subject matter of the non-excluded claims. If, on the other hand, in the Office acting as International Searching Authority, such subject matter is non-excluded, the category symbol is assigned based on the claims appearing in the international application.

Selection of Citations and Identifying Most Relevant Portions

Rule 43.5(c); Section 505

15.67 After completion of the international search, the examiner should select, from the documents retrieved, the ones to be cited in the international search report. These should always include the most relevant documents, which will be specially characterized in the report. Less relevant documents should only be cited when they concern aspects or details of the claimed invention not found in the documents already selected for citation. In cases of doubt or borderline cases in relation to novelty or inventive step, the examiner should readily make citations in order to give the applicant, the designated Offices and the International Preliminary Examining Authority the opportunity to consider the matter more fully.

15.68 If the International Bureau transmits a third party observation to the International Searching Authority in time to be taken into account in drawing up the international search report, any prior art referred to in the observation should also be considered for inclusion as if it had been found by the examiner as part of the search, provided that either a copy of the prior art is included or it is otherwise immediately available to the examiner. The examiner need only refer to the prior art listed in the observation if it is considered relevant for inclusion in the international search report.

Rule 43.5(b) – (e); Section 507(g)

15.69 To avoid increasing costs unnecessarily, the examiner should not cite more documents than are necessary, and therefore when there are several documents of equal relevance, the international search report should not normally cite more than one of them. When more than one member of the same patent family is present in a search file, the examiner, in selecting from these documents for citation, should pay regard to language convenience, and preferably cite (or at least note) documents in the language of the international application. Also, due regard should be paid to the possible need of the designated Offices to translate cited documents. Therefore, the examiner should, whenever possible, identify precisely the part or passage of a cited document which is relevant by, for example, indicating also the page and paragraph or lines where the relevant passage appears. Where the cited document is a patent document in a language other than English and another member of the same patent family is available in English, the examiner should preferably also indicate the corresponding part or passage of the English member of the patent family.

15.70 As a general rule, the examiner will select for citation only documents which are present in the search files of the International Searching Authority or to which access is readily available in some other manner; in that way no doubt will exist about the contents of the documents cited, since the examiner will generally have consulted each document cited.

Section 507(g), (h)

15.71 However, under certain circumstances a document whose contents have not been verified may be cited, provided there is justification for the assumption that there is identity of contents with another document which the examiner has inspected and cited. Both documents should then be mentioned in the international search report. For example, instead of the document published before the international filing date in an inconvenient language and selected for citation, the examiner may have inspected a corresponding document (for example, another member of the same patent family, or a translation of an article) in a more convenient language and possibly published after the international filing date (see also paragraph 16.75). Also the examiner may assume that, in the absence of explicit indications to the contrary, the contents of an abstract of a document are contained in that original document. Also the examiner should assume that the contents of a report of an oral disclosure are in agreement with that disclosure.

15.72 Before citing documents in a language with which the examiner is not familiar, the examiner should be satisfied that the document is relevant (for example, through translation by a colleague, through a corresponding document or abstract in a familiar language, through a drawing, or chemical formula in the document).