PCT International Search and Preliminary Examination Guidelines


Appendix to Chapter 4

Background Art

A4.05 The International Preliminary Examining Authorities have divergent practices concerning whether it is appropriate to invite the applicant to introduce references to the prior art into the international application. The guidelines below may be relied upon by the Authorities as appropriate.

A4.05[1] The insertion into the statement of prior art of references to documents identified subsequently, for example by the search report, may be appropriate, provided that the amendment would not go beyond the disclosure in the international application as filed. For instance, while the originally filed description of prior art may give the impression that the inventor has developed the invention from a certain point, the cited documents may show that certain stages in, or aspects of, these alleged developments were already known. The examiner may invite the inclusion of a reference to these documents and a brief summary of the relevant contents. Care should be taken that any such inclusion does not contravene Article 34(2)(b) (see paragraphs 20.10 to 20.19).

A4.05[2] Since the reader is presumed to have the general background and technical knowledge appropriate to the art, and it is not in any case permitted to make amendments which go beyond the disclosure as filed, the examiner should not invite the applicant to insert anything in the nature of a treatise or research report or explanatory matter which is obtainable from textbooks or is otherwise well known. Likewise, the examiner should not invite the applicant to provide a detailed description of the content of cited prior documents. It is sufficient that the reason for the inclusion of the reference is indicated, unless, in a particular case, a more detailed description is necessary for a full understanding of the claimed invention. Lists of several reference documents relating to the same feature or aspect of the prior art are not required; only the most appropriate ones need to be referred to. On the other hand, the examiner should not invite the applicant to delete any such unnecessary matter, except when it is very extensive.