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PCT International Search and Preliminary Examination Guidelines


Chapter 2 Overview of the International Search Stage

The International Search Process

2.10  The role of the International Searching Authority is as follows, the details being considered in subsequent chapters referred to below:

(a) to determine classification of the case, particularly to determine whether examiners specializing in other fields need to be consulted to ensure a proper search is carried out; this classification may need to be reconsidered in the light of fuller consideration, but a definitive classification must be made by the time that the international application is published (see Chapter 7);

Article 17(3); Rule 40

(b) to consider whether the application meets the requirement of unity of invention and, if not, whether the applicant should be invited to pay further search fees relating to the extra inventions (see Chapter 10);

Rule 39

(c) to consider whether some or all of the subject matter relates to subject matter which the Authority is not required to search (see Chapter 9);

Rules 4.12, 16.3, 41

(d) to determine whether to use the results of any earlier search, referred to by the applicant in the request form relating to the application, to establish the international search report, and to consequently authorize any appropriate refund;

Rule 13ter

(e) to determine whether to invite the applicant to provide a sequence listing if the international application contains disclosure of nucleotide and/or amino acid sequences but does not include a sequence listing complying with the standard provided for in the Administrative Instructions and in an accepted language (see paragraphs 15.12 and 15.14A);

Articles 15, 17(2)

(f) to perform an international search to discover relevant prior art (see Chapter 11) taking into account that there may be subject matter such that the Authority is not obliged to search where the subject matter is such that the Authority is not obliged to do so (see Chapter 9), the description, claims or drawings fail to comply with the prescribed requirements to such an extent that no meaningful search could be carried out, (see Chapter 9 and paragraph 15.33) or else the claims relate to several different inventions and additional search fees, which the Authority has invited the applicant to pay, have not been paid (see Chapter 10);

Rules 37, 38

(g) to consider whether the abstract and title are appropriate and, in certain circumstances, to draft alternatives (see paragraphs 16.33 to 16.47);

Rule 43

(h) to establish a search report, indicating the results of the search and certain other information (see Chapter 16), or else make a declaration that a search was either not required or would not be meaningful (see Chapter 9);

Rule 43bis

(i) to establish a written opinion as to whether the international application appears to be novel, to involve an inventive step, to be industrially applicable and to comply with other requirements of the Treaty and Regulations insofar as they are checked by the International Searching Authority (see Chapter 17).

2.11  Some of the above matters, especially unity of invention, may be the subject of ongoing consideration, depending on the outcome of the search. Nevertheless it is important to consider matters at an early stage in view of the limited time available in which to obtain corrections or additional fees from the applicant.

2.12  In a few situations leading up to the establishment of the international search report, the International Searching Authority may specifically invite a response, such as where the international application is considered to lack unity of invention (see Chapter 10) in which case additional fees may be required to be paid for searching the other invention(s), either under protest together with a reasoned statement or without a protest. The International Searching Authority may, also, require a protest fee for the examination of the protest.  Another example is where the International Searching Authority is notified by the receiving Office that a missing part or a correct element or part is included or incorporated by reference into the international application after it has begun to draw up the international search report, in which case it may also invite the applicant to pay additional fees (see paragraphs 15.11A to 15.11C)