PCT International Search and Preliminary Examination Guidelines

PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY

Appendix to Chapter 9

Excluded Subject Matter Regarding Schemes, Rules or Methods of Doing Business, Performing Purely Mental Acts or Playing Games

A9.07  The International Searching and Preliminary Examining Authorities have divergent practices with regard to the exclusion as to schemes, rules or methods of doing business, performing purely mental acts or playing games. Either of the alternative guidelines below may be relied upon by an International Authority as appropriate.

A9.07[1]  The key question as to whether the invention falls within the exclusion is whether the claimed invention, when viewed as a whole, is of abstract character, or thereby does not provide a practical application having a useful, concrete and tangible result. For example, a theory or method of doing business or related to business function claimed in isolation without any practical application could be excluded from search and examination while a computer-implemented method or apparatus for performing a business-related function with a practical application would require search and preliminary examination. In addition, a game as an abstract entity defined by its rules could be excluded. However, a novel apparatus for playing a game would require international search and examination.

A9.07[2]  These are items essentially of an abstract or intellectual character. In particular, a scheme for learning a language, a method for solving cross-word puzzles, a game (as an abstract entity defined by its rules) or a scheme for organizing a commercial operation would be excluded from both search and examination. However, if the claimed subject matter specifies an apparatus or technical process for carrying out at least part of the scheme, that scheme and the apparatus or process have to be searched and examined as a whole. In the particular case of a claim specifying computers, computer networks or other conventional programmable apparatus, or a program therefor, for carrying out at least some steps of a scheme, it is to be examined as a “computer-related invention” (see paragraph 9.15).