PCT International Search and Preliminary Examination Guidelines
PART IV THE INTERNATIONAL SEARCH
Chapter 15 The International Search
Access to the File held by the Authority Specified for Supplementary Search
15.88C Where the International Bureau has notified the Authority specified for supplementary search (by way of Form PCT/IB/385) that it has omitted information from international publication or public file access, that Authority must not provide access to that information, and where applicable, to Form PCT/SISA/512, Form PCT/IB/385 and any replaced sheet submitted with Form PCT/IB/385 to any person other than the applicant or a person authorized by him. The Authority specified for supplementary search may provide access to any replacement sheet(s) received from the International Bureau accompanying Form PCT/IB/385.
15.89 Unlike the case for the main international search, no opportunity is offered to pay additional fees in case it is found that the international application lacks unity of invention. Rather, the supplementary international search report is immediately established on those parts of the international application which relate to the main invention. Normally, this will mean the invention first mentioned in the claims. However, the examiner should also consider the following in determining whether there is unity of invention and, if so, what is considered to be the main invention:
(i) though not bound by the views of the International Searching Authority, due account should be taken of any opinion on unity of invention included in the documents indicated in items (vi) and (vii) of paragraph 15.79;
(ii) if the International Searching Authority has found a lack of unity of invention, the applicant may, under Rule 45bis.1(d) have specified a wish that the supplementary search be limited to one of those inventions (for example, because the first invention is clearly not novel and he does not wish to pursue it further) – if the examiner agrees with the assessment of unity of invention and the relevant claims are not excluded for any reason, the supplementary international search should focus on that invention;
(iii) where the invention first claimed would not be searched for any reason, the first searchable invention should be considered instead;
(iv) if other inventions are easily searched, it may be appropriate to include those inventions within the scope of the supplementary search report (see paragraph 10.64).
15.90 The examiner’s opinion on unity of invention and the consequent scope of the supplementary international search should be reported on the supplementary international search report in a similar way as for the main international search (see paragraphs 10.83 to 10.86).
15.91 The normal protest procedure (see paragraphs 10.66 to 10.70) does not apply to requests for supplementary international search. However, the applicant may, within one month of the date of notification of the supplementary international search report, request the Authority to review the examiner’s opinion on unity of invention. This request may be subject to a review fee. The results of the review are promptly notified to the applicant and copied to the International Bureau using Form PCT/SISA/503. The copy to the International Bureau should be accompanied by a copy of the applicant’s request for review in case this needs to be transmitted to designated Offices (see paragraph 15.92) using Form PCT/SISA/503. If the examiner’s opinion is found to be at least partly unjustified, the Authority should issue a corrected supplementary search report, stating the revised view on unity of invention and, where appropriate, including the search results for all claims which should have been included. If the opinion was entirely unjustified, the applicant should also have any review fee refunded. See paragraphs 10.87 and 10.88.
15.92 If the applicant so requests, the International Bureau will communicate the text of both the request for review and the decision thereon to the designated Offices together with the supplementary international search report.
15.93 The minimum extent scope of a supplementary search is set out in the agreement between the International Bureau and the Authority specified for supplementary search. This may be different from the PCT minimum documentation under Rule 34 since it is expected that the main international search should, subject to the language related exceptions in paragraph (e) of that Rule, cover that documentation effectively. Where the main international search report is not received before the start of the supplementary international search (see paragraph 15.82), the examiner may need to make assumptions about the scope which the main international search will have in order to decide the extent of the search which he should conduct. Any comments on this matter may be recorded on the supplementary international search report (see paragraph 15.96).
Establishment of the Supplementary International Search Report
15.94 The supplementary international search report (Form PCT/SISA/501) must be established, or declaration that no such report shall be established (Form PCT/SISA/502) must be made, within 28 months from the priority date and transmitted to the applicant and to the International Bureau using Form PCT/SISA/505.
15.95 The report or declaration is made in a language of publication: normally either the language of publication of the international application, or else the language of the translation provided for the purpose of the supplementary international search, though there may be cases where the first is not a language accepted by the Authority and the second is not a language of publication.
15.96 The contents of the supplementary international search report are essentially the same as for the main international search report, except for the following:
(i) an indication should be given on the cover sheet of whether the examiner was able to take into account the main international search report;
(ii) the examiner does not classify the international application or make any indication of its classification on the supplementary international search report;
(iii) it is not necessary to include the citation of any document cited in the main international search report, unless it is considered to have additional relevance when cited in conjunction with other documents not cited in the main international search report;
(iv) explanation may be included with regard to the citations considered to be relevant: this is to allow comments to be included to indicate what the relevant features of a document are in view of the fact that no additional written opinion is established and citations may frequently be in a language not easily understood by the applicant;
(v) explanation may be included with regard to the scope of the supplementary international search, for example to indicate any assumptions made relating to the appropriate scope of search where the main international search report was not established and transmitted to the Authority specified for supplementary search in time to be considered during the search, or in the case of complex applications where a fallback position has been searched.
15.97 The Authority must provide copies of cited documents to the applicant or any designated Office, subject to the payment of any relevant fees, on request at any time within seven years from the international filing date, as would be the case for the International Searching Authority under Article 20(3) and Rule 44.3. Form PCT/SISA/509 may be used for this purpose.