|← MPEP 1843||↑ MPEP 1800||MPEP 1845 →|
|PCT Article 18.|
The International Search Report
(1)The international search report shall be established within the prescribed time limit and in the prescribed form.
(2)The international search report shall, as soon as it has been established, be transmitted by the International Searching Authority to the applicant and the International Bureau.
(3)The international search report or the declaration referred to in Article 17(2)(a) shall be translated as provided in the Regulations. The translations shall be prepared by or under the responsibility of the International Bureau.
The results of the international search are recorded in the international search report (Form PCT/ISA/ 210), which, together with the written opinion of the International Searching Authority (Form PCT/ISA/ 237) for applications having an international filing date on or after January 1, 2004, is transmitted with Form PCT/ISA/220. The search report will be published by the International Bureau and, together with the written opinion of the International Searching Authority, will serve as a basis for examination of the international application by the designated Offices and the International Preliminary Examining Authority.
The search report is only for the purpose of identifying prior art and should not contain any expressions of opinion, reasoning, argument or explanation as to any cited prior art. However, in applications having an international filing date on or after January 1, 2004, such comments should be included in the written opinion of the International Searching Authority.
The printed international search report form (Form PCT/ISA/210) to be transmitted to the applicant and to the International Bureau contains two main sheets (“first sheet” and “second sheet”) to be used for all searches. These two main sheets are intended for recording the important features of the search such as the fields searched and for citing documents revealed by the search. The printed international search report form also contains five optional continuation sheets for use where necessary. They are the: “continuation of first sheet (1),” “continuation of first sheet (2),” “continuation of first sheet (3),” “continuation of second sheet” and “patent family annex,” respectively. The patent family annex sheet is not currently used by the United States International Searching Authority since patent family information is not readily available to the examiner. The “continuation of first sheet (1)” is to be used only when the international application includes a nucleotide and/or amino acid sequence and indicates the basis on which the international search was carried out, since the relevant listings or related tables may be filed or furnished at different times and in different forms. The “continuation of first sheet (2)” is used where an indication is made on the first sheet that claims were found unsearchable (item 2) and/or unity of invention is lacking (item 3). The relevant indications must then be made on that continuation sheet. The “continuation of first sheet (3)” is to contain the text of the abstract where an abstract or an amended abstract has been established by the International Searching Authority (item 5) and an indication to that effect is made on the first sheet. The “continuation of second sheet” is to be used where the space on the second sheet is insufficient for the citation of documents. The form also includes an “extra sheet” which may be used whenever additional space is required to complete information from the other sheets.
It is to be noted that only the “second sheet”, the “continuation of second sheet” (if any), the “continuation of first sheet (2)” (if any), and the “extra sheet” (if any), as well as any separate sheet with information on members of patent families, will be the subject of international publication, as the “first sheet,” “continuation of first sheet (1)” (if any), and the “continuation of first sheet (3)” (if any) contain only information which will already appear on the front page of the publication of the international application (PCT Rule 48.2(v)).
CONTENTS OF THE INTERNATIONAL SEARCH REPORT
The international search report (PCT Rule 43) contains, among other things, the citations of the documents considered to be relevant (PCT Rule 43.5 and Administrative Instructions Section 503), the classification of the subject matter of the invention (PCT Rule 43.3 and Administrative Instructions Section
504) and an indication of the fields searched (PCT Rule 43.6). Citations of particular relevance must be specially indicated (Administrative Instructions Section 505); citations of certain specific categories of documents are also indicated (Administrative Instructions Section 507); citations which are not relevant to all the claims must be cited in relation to the claim or claims to which they are relevant (Administrative Instructions Section 508); if only certain passages of the cited document are particularly relevant, they must be identified, for example, by indicating the page, the column or the lines, where the passage appears.
1844.01Preparing the International Search Report (Form PCT/ISA/ 210) [R-3]
I. TOTAL NUMBER OF SHEETS
The first sheet of the international search report indicates the total number of sheets in the report. The correct number is entered, not including sheets that have not been filled-in (blank sheets). The number of sheets only includes the number of sheets from Form PCT/ISA/210.
II. NUCLEOTIDE AND/OR AMINO ACID SEQUENCE LISTINGS AND RELATED TABLES
Where the application discloses any nucleotide and/ or amino acid sequence, box 1.b of the first sheet is checked and Box No. I (appearing on “continuation of first sheet (1)”) indicates the format (that is, whether in paper copy or computer readable form) and status (that is whether filed with the international application or later, for purposes of search) of the sequence listing, and any related tables.
III. RESTRICTION OF THE SUBJECT OF THE INTERNATIONAL SEARCH
The report indicates whether the search was restricted or not for any of the reasons indicated below. If any such restrictions are applied, the claims in respect of which a search has not been carried out are identified and the reasons for this are indicated. The four categories where such restrictions may arise are:
(A)claims drawn to subject matter not required to be searched by the International Searching Authority (see MPEP § 1843.02);
(B)claims in respect of which a meaningful search cannot be carried out (see MPEP § 1843.03);
(C)multiple dependent claims which do not comply with PCT Rule 6.4(a) (see MPEP § 1843.03);
(D)lack of unity of invention (see MPEP § 1850).
Where claims are not searched for any of the reasons identified in (A)-(C) above, box 2 of the first sheet of the international search report is checked. In addition, Box No. II of the international search report (on “continuation of first sheet (2)”) is completed, giving the details.
Where lack of unity has been found (see MPEP § 1850), box 3 of the first sheet of the international search report is checked. In addition, Box No. III of the international search report (on “continuation of first sheet (2)”) is completed, irrespective of whether an invitation to pay additional search fees has issued. The search report indicates the separate inventions claimed in the application, whether additional search fees were requested and paid, and which claims were searched. It also indicates whether any additional search fees were accompanied by a protest.
IV. TITLE, ABSTRACT, AND FIGURE FOR PUBLICATION
The international application must contain an abstract and a title. The examiner considers the abstract (together with the title of the invention and the figure of the drawings to be published with the abstract) in relation to the requirements of the Regulations under the PCT. The examiner indicates approval or amendment of the text of the abstract, the title of the invention, and the selection of the figure that is to accompany the abstract in items 4 to 6 of the first sheet of the international search report.
PCT Rule 4.
The Request (Contents)
4.3.Title of the Invention
The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.
PCT Rule 37.
Missing or Defective Title
37.1.Lack of Title
If the international application does not contain a title and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
37.2.Establishment of Title
If the international application does not contain a title and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish a title, or if the said Authority finds that the title does not comply with Rule 4.3, it shall itself establish a title. Such title shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation.
The title must be short and precise (preferably from two to seven words in English or when translated into English). Furthermore, the title should clearly and concisely state the technical designation of the invention. In this regard the following should be taken into account:
(A)personal names or trade names or similar terms of non-technical nature which do not serve to identify the invention should not be used;
(B)the abbreviation “etc.,” being vague, should not be used and should be replaced by an indication of what it is intended to cover;
(C)titles such as “Method,” “Apparatus,” “Chemical Compounds” alone or similar vague titles do not clearly state the technical designation of the invention and should not be used.
In general, the examiner is required to draft a new title if the applicant failed to provide a title or if the title is deficient because it does not comply with the requirements of PCT Rule 4.3. The examiner is not required to gain the applicant’s approval of the new title established by the examiner.
B.Abstract and Figure for Publication
PCT Rule 8.
8.1.Contents and Form of the Abstract
(a)The abstract shall consist of the following:
(i)a summary of the disclosure as contained in the description, the claims, and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention;
(ii)where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention.
(b)The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).
(c)The abstract shall not contain statements on the alleged merits or value of the claimed invention or on its speculative application.
(d)Each main technical feature mentioned in the abstract and illustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.
(a)If the applicant fails to make the indication referred to in Rule 3.3(a)(iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accompany the abstract when the latter is published by the International Bureau. In such case, the abstract shall be accompanied by the figure or figures so indicated by the International Searching Authority. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant.
(b)If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule 3.3(a)(iii).
PCT Rule 38.
Missing or Defective Abstract
38.1.Lack of Abstract
If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
38.2.Establishment of Abstract
(a)If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract. Such abstract shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation.
(b)The applicant may, within one month from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority. Where that Authority amends the abstract established by it, it shall notify the amendment to the International Bureau.
In general, the examiner will have to establish a new abstract if the applicant did not provide an abstract or if the abstract does not comply with PCT Rule 8. In determining the definitive contents of the abstract, or establishing the text of the abstract anew where it is missing, the examiner should take into consideration the fact that the abstract is merely for use as technical information and, in particular, must not be used for the purpose of interpreting the scope of the protection sought. The abstract constitutes an efficient instrument for the purpose of assisting the scientist, engineer, or researcher in searching in the particular technical field and should in particular make it possible to assess whether there is need for consulting the international application itself. WIPO guidelines for the preparation of abstracts are found in WIPO Standard ST.12/A, which is available from WIPO’s web site (www.wipo.int/scit/en/standards/ standards.htm).
In considering the adequacy of the applicant’s abstract and figure, because of practical difficulties experienced by the International Bureau with publication, examiners should have particular regard to the following:
(A)It is important that the abstract be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English). Within this constraint the abstract must provide a summary of the technical information about the disclosure as contained in the description, claims, and drawings. It should be drafted so as to serve as an efficient scanning tool for searching purposes in the art.
(B)Phrases should not be used which can be implied, such as “This disclosure concerns,” “The invention defined by this disclosure,” and “This invention relates to.”
(C)Only one figure should normally be selected unless this would lead to inadequate disclosure. The inclusion of more than two figures should not be considered except in extreme circumstances where necessary information cannot be otherwise conveyed. Where none of the figures is considered useful for the understanding of the invention (even where the applicant has suggested a figure), no figure should be selected.
(D)Abstracts may be incomprehensible if the numerals of the selected figure(s) do not correspond with those in the abstract. Thus, this should be avoided.
(E)An absence of reference numbers on the figures must be accepted as the examiner has no mechanism to initiate their addition.
(F)Each main technical feature mentioned in the abstract and illustrated by a drawing should be followed by a reference sign, placed between parentheses.
If the examiner establishes a new abstract, the applicant can only comment on the new abstract after it has been established in the international search report. The applicant is allowed one month from the date of mailing of the international search report to respond to the examiner’s abstract in the report. If the applicant does comment, the examiner takes the applicant’s comments into consideration. It is not necessary for the examiner to reply to the applicant’s comments even if adverse. If the examiner decides to amend the abstract established in the international search report, the International Bureau and the applicant are notified using Form PCT/ISA/205. See PCT
Rule 38.2(b) and Administrative Instructions Section 515.
When indicating the figure to be published, the applicant’s suggestion is found in Box IX of the request Form (PCT/RO/101). Where none of the figures is considered useful for the understanding of the abstract, this is indicated at the appropriate box (item 6 of the first sheet of Form PCT/ISA/210). When no drawings accompany the application, none of the boxes are checked. It is not recommended to select more than one figure; however, if it is necessary to do so then the wording of the form should be changed to reflect the change from single case to plural case. For example, “figure” is changed to “figures”, “is” to “are” and No. “to Nos.”.
V. CLASSIFICATION OF SUBJECT MATTER
The International Searching Authority assigns obligatory International Patent Classification (IPC) symbols in accordance with the rules as set forth in the Guide to the IPC and in the IPC itself (using the edition of the IPC in force at the time), whereby the technical subject of the invention of the application is identified. The International Searching Authority then records the International Patent Classification in Box A of the second sheet of the international search report. The IPC Guide can be accessed via the Patent Examiner’s Toolkit under Classification Tools or via WIPO’s web site (www.wipo.int).
VI. RECORDING THE SEARCH
The examiner records the search history in Box B of the second sheet of the international search report. In recording the search history of the international search, the examiner lists the classification identification of the fields searched. Examiners are also encouraged to record the search history in sufficient detail to allow examiners of national stage applications to fully interpret and rely upon the international search. This includes recording the details of any patent and non- patent literature searches as well as searches conducted on the Internet.
Where the international search report is entirely or partly based on a previous search made for an application relating to a similar subject, the previous application number and the relevant search history consulted for this previous search is, where appropriate, identified as having been consulted for the international application in question, except in those instances where the details of an earlier search cannot be ascertained, or whenever it is impractical to record the full details of the earlier search. In the later case, a summary of the earlier search should be included. Where the previous application has been published, this information is recorded in the international search report.
VII. DOCUMENTS CONSIDERED TO BE RELEVANT
The completion of Box C of the second sheet of the international search report can be considered as having three components. These are: (A) the citation category; (B) the citation of the document together with identification of the relevant passages where appropriate; and (C) the identification of relevant claim numbers. The citation of multiple documents showing the same inventive elements should be kept to a minimum. Further, when citing a document, the examiner should clearly indicate which portions of the document are most relevant.
Documents which are cited are given a category indication by way of an alphabetic character, details of which are given in Administrative Instructions Sections 505 and 507 and below. The categories for citations are also explained under the “documents considered to be relevant” section of the report. A category should always be indicated for each document cited. Where needed, combinations of different categories are possible.
1.Particularly Relevant Documents
Where a document cited in the international search report is particularly relevant, it is indicated by the letters “X” or “Y”. Category “X” is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or where a document is such that when considered in light of common general knowledge, a claimed invention cannot be considered to involve an inventive step. Category
“Y” is applicable where a document is such that a claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other documents of the same category, such combination being obvious to a person skilled in the art.
2.Documents Defining the State of the Art and Not Prejudicing Novelty or Inventive Step
Where a document cited in the international search report represents state of the art and is not prejudicial to the novelty or inventive step of the claimed invention, it is indicated by the letter “A”.
3.Documents Which Refer to a Non-Written Disclosure
Where a document cited in the international search report refers to a non-written disclosure referred to in PCT Rule 33.1(b), the letter “O” is entered. Examples of such disclosures include conference proceedings. The document category “O” is always accompanied by a symbol indicating the relevance of the document, for example: “O,X”, “O,Y”, or “O,A”.
Documents published on dates falling between the date of filing of the application being searched and the date of priority claimed, or the earliest priority if there is more than one (see PCT Article 2(xi)(b)), are denoted by the letter “P”. The letter “P” is also given to a document published on the very day of the earliest date of priority of the patent application under consideration. The document category “P” is always accompanied by a symbol indicating the relevance of the document, for example: “P,X”, “P,Y”, or “P,A”.
5.Documents Relating to the Theory or Principle Underlying the Invention
Where any document cited in the search report is a document that may be useful for a better understanding of the principle or theory underlying the invention, or is cited to show that the reasoning or the facts underlying the invention are incorrect, it is indicated by the letter “T”.
6.Potentially Conflicting Patent Documents
Any patent document bearing a filing or priority date earlier than the filing date of the application searched (not the priority date) but published on or later than that date and the content of which would constitute prior art relevant to novelty (PCT Article 33(2)) is indicated by the letter “E” (see Administrative Instructions Section 507(b) and PCT Rule 33.1(c)).
7.Documents Cited in the Application
When the search report cites documents already mentioned in the description of the patent application for which the search is carried out, such documents may be identified on the search report by the wording “cited in the application” under the cited document.
8.Documents Cited for Other Reasons
Where in the search report any document is cited for reasons other than those referred to in the foregoing paragraphs (in particular as evidence), for example:
(A)a document which may throw doubt on a priority claim (Article 4(C)(4) of the Paris Convention), or
(B)a document cited to establish the publication date of another citation,
the document is indicated by the letter “L”. Brief reasons for citing the document should be given. Documents of this type need not be indicated as relevant to any particular claims. However, where the evidence that they provide relates only to certain claims (for example the “L” document cited in the search report may invalidate the priority in respect of certain claims and not others), then the citation of the document should refer to those claims.
B.Relationship Between Documents and Claims
Each citation should include a reference to the claims to which it relates (see Administrative Instructions Section 508). If necessary, various relevant parts of the document cited should each be related to the claims in like manner (with the exception of “L” documents and “A” documents). It is also possible for the same document to represent a different category with respect to different claims. For example:
WO1990/001867 A (WIDEGREN LARS (SE)) 8 March 1990 (08-03-1990), figures 1 and 2
The above example means that Figures 1 and 2 of the cited document disclose subject matter which prejudices the novelty or inventive step of claim 1, which prejudices the inventive step of claims 2-5 when combined with another document cited in the search report, and which represents non-prejudicial state of the art for the subject matter of claims 6-10.
C.Citation of the Documents
Identification of any document should be made according to WIPO Standard ST.14 (see Administrative Instructions Section 503). For “A” citations it is not necessary to indicate the relevant claims unless there is good reason to do so; for example where there is a clear lack of unity a priori (see MPEP § 1850) and the citation is relevant only to a particular claim or group of claims or when the claims meet the criteria of novelty, inventive step, and industrial applicability under PCT Article 33(2) to (4) and the “A” category citations represent the most relevant prior art. The box on the second sheet of Form PCT/ISA/ 210 entitled “Further documents listed are in the continuation of Box C” is checked if a continuation sheet is used to list additional documents that will not fit in the space provided in Box C.
VIII. FINALIZATION OF THE SEARCH REPORT
The identification of the International Searching Authority which established the international search report and the date of actual completion, that is, the date on which the report was drawn up are indicated at the bottom of the second sheet of the international search report. This information is generated automatically by the OACS software when preparing the international search report. The international search report will be accompanied by a transmittal letter (Form PCT/ISA/220) indicating the date the search report was mailed to the applicant. The mailing date is important for the computation of the time limit for filing amendments to the claims under PCT Article 19. See MPEP § 1853.
Pursuant to PCT Rule 43.8, the international search report must indicate the name of the officer of the International Searching Authority responsible for the report, i.e., the “authorized officer.” An “authorized officer” is the person who actually performed the search work and prepared the search report, or another person who was responsible for supervising the search. See Administrative Instructions Section 514. Thus, an examiner need not have signatory authority in order to be named as an authorized officer on the search report. However, the “file copy” of the search report must be signed by an examiner having at least partial signatory authority.
The international search report should be mailed within 3 months of receipt of the search copy or within 9 months from the priority date, whichever is later.
|← MPEP 1843||↑ MPEP 1800||MPEP 1845 →|