International search

Contents

Chapter 1. International Research

Section 1.1. Determination of the competent ISA

1.1.1. Generality

1.1.2. Appointment of ISAs in the PCT System

1) Principle

2) ISA possible

1.1.3. Identification of possible ISA by the RO

1) Principle

2) Special case of IB / RO

1.1.4. Limitation according to language

1.1.5. Final selection by the applicant

Section 1.2. Representation by a representative

Section 1.3. Purpose of the research

Section 1.4. State of the art

Section 1.5. Limitation of search

1.5.1. Type of inventions not sought

1.5.2. Procedure

Section 1.6. Clarity problem

Section 1.7. Unity of invention

1.7.1. Additional taxes

1) Principle

2) Non-payment

1.7.2. Reserve

1) Principle

2) Review

3) Reserve Tax

Section 1.8. International Search Report and Written Opinion

1.8.1. Time limit

1.8.2. contents

1.8.3. Language

1.8.4. Written opinion

1.8.5. Transmission of the RRI

1) To the IB and to the applicant

2) Designated Offices

1.8.6. RRI reaction

Section 1.9. Communication of previous research

1.9.1. Principle

1.9.2. Indication of previous research

1.9.3. Copy and translation

1.9.4. Exception to the obligation to provide copies or translations

Chapter 2. Additional international search

Section 2.1. Purpose and application

Section 2.2. Skill

2.2.1. Statement of the ISFS

1) Principle

2) Possible SISA

2.2.2. Incompetence of ISA

2.2.3. Selection of the SISA by the applicant

Section 2.3. Time limit

Section 2.4. taxes

2.4.1. Additional search processing fee

1) Principle

2) Late payment

3) Refund

2.4.2. Additional search fee

1) Principle

2) Late payment

3) Refund

Section 2.5. Representation by a representative

Section 2.6. Request for additional research

2.6.1. Skill

2.6.2. Language of the search request

2.6.3. Content of the search request

2.6.4. Language of the international application

2.6.5. Form

2.6.6. Correction of irregularities

Section 2.7. Withdrawing an additional search request

2.7.1. Competent administrations

2.7.2. Time limit

2.7.3. Tax

2.7.4. Signature

2.7.5. Power

2.7.6. Effects

Section 2.8. Transmission to SISA

2.8.1. Principle

2.8.2. Translation of RRI's written opinion

Section 2.9. Additional search

2.9.1. Beginning

2.9.2. Basis of research

2.9.3. Limitation of search

2.9.4. Relevant prior art

Section 2.10. Unity of invention

2.10.1. Principle

2.10.2. SISA Opinion

2.10.3. reconsideration

2.10.4. Additional search is restricted

Section 2.11. Additional research report

2.11.1. Time limit

2.11.2. Language

2.11.3. contents

2.11.4. Copy of documents cited

2.11.5. Transmission of the search report

2.11.6. Consideration by IPEA

2.11.7. Publication

See the latest changes

Chapter 1. International Research

Section 1.1. Determination of the competent ISA

1.1.1. Generality

International search is performed by an ISA.

This administration can be (A16.1 PCT):

  • a national office,
  • an intergovernmental organization.

1.1.2. Appointment of ISAs in the PCT System

1) Principle

To be eligible for ISA designation, the office or organization must:

  • have been appointed by the PCT Assembly (A16.3.a PCT) and
  • to respect a number of material conditions (R36.1 PCT):
    • have or have access to the minimum documentation of the R34 PCT ;
    • have at least 100 full-time employees dedicated to research, who have:
      • technical expertise in the field of research and
      • language skills necessary to understand at least the languages in which the minimum documentation is written or translated;
    • have a quality management system.
2) ISA possible

The possible ISAs today are (applicant's guide):

  • Austria (AT);
  • Australia (AU);
  • Brazil (BR);
  • Canada (CA);
  • China (CN);
  • Egypt (EG);
  • EPO (EP);
  • Spain (ES);
  • Finland (FI);
  • Israel (IL);
  • India (IN);
  • Japan (JP);
  • Republic of Korea (KR);
  • Russia (UK);
  • Sweden (SE);
  • USA (US);
  • Nordic Patent Institute (XN).

1.1.3. Identification of possible ISA by the RO

1) Principle

Every RO (except the IB, R35.3.c PCT) indicates one or more ISAs competent to carry out searches for applications filed with that RO (A16.2 PCT together R35.1 PCT or R35.2 PCT).

2) Special case of IB / RO

For the IB / RO, the list of competent ISAs is the union of the relevant ISAs if the applicant had submitted the application in a competent national / regional RO (R35.3.a PCT).

1.1.4. Limitation according to language

The RO may very well set the list of possible ISAs according to the type of application filed (eg the language of filing or the language of translation) (R35.2.a.ii PCT).

1.1.5. Final selection by the applicant

When the applicant has the choice of several ISAs, he indicates his choice in the request form (R4.1.b.iv PCT and R4.14bis PCT).

Section 1.2. Representation by a representative

Representation by an attorney is never mandatory before the ISA.

Nevertheless, if the applicant so wishes, he may be represented by:

  • the same agent as for the filing or any authorized representative authorized to act before the RO (R90.1.a PCT);
  • by a representative authorized to act before the ISA (R90.1.c PCT).

In addition, the appointed RO representative may designate a secondary agent to perform the acts with the ISA (R90.1.d PCT).

Section 1.3. Purpose of the research

The purpose of the research is to highlight the relevant state of the art (A15.2 PCT and A15.4 PCT) against the claims of the application, taking into account the description and the drawings (A15.3 PCT).

Section 1.4. State of the art

The state of the art includes everything that has been made accessible (R33.1.a PCT):

  • to the public ;
  • anywhere in the world;
  • by a written disclosure.

Other disclosures or prior national rights may nevertheless be mentioned in the search report (eg oral disclosure) (R33.1.b PCT and R33.1.c PCT).

Section 1.5. Limitation of search

1.5.1. Type of inventions not sought

An ISA is not required to conduct a search when the claims concern one of the following objects (A17.2.ai PCT together the R39.1 PCT):

  • scientific and mathematical theories;
  • plant varieties, animal breeds, essentially biological processes for the production of plants or animals, other than microbiological processes and products obtained by these processes;
  • plans, principles or methods for doing business, performing purely intellectual acts or playing;
  • methods of treatment of the human or animal body by surgery or therapy, as well as methods of diagnosis;
  • simple presentations of information;
  • computer programs as such.

These limitations are indicated in the ISA-IB Agreement (A17.1 PCT).

1.5.2. Procedure

If ISA is not required to carry out the research, it declares that it will not compile an international search report (A17.2.a PCT) possibly for some claims only (A17.2.b PCT).

The applicant and the IB are informed of this point (R44.1 PCT).

Section 1.6. Clarity problem

If the ISA is of the opinion that the description, claims or drawings do not permit meaningful search (eg lack of clarity), it states that it will not prepare a search report (A17.2.a.ii PCT) possibly for some claims only (A17.2.b PCT).

The EPO provides for an informal procedure to first request explanations from the applicant before drawing up the search report (OY 2011, 327)

Section 1.7. Unity of invention

1.7.1. Additional taxes

1) Principle

In case of unity of invention problem, the ISA invites the applicant to pay additional fees (A17.3.a PCT) under 1 month from the invitation (R40.1.ii PCT):

These taxes are paid directly to ISA (R40.2.b PCT).

Each ISA is free to set the amount of the additional fees (R40.2.a PCT).

2) Non-payment

In case of non-payment of the additional fees requested, the ISA does not carry out research on the claims not covered by the taxes (A17.3.a PCT).

The national law of any Contracting State may provide that the unsuccessful parties shall be considered withdrawn unless a particular charge is paid (A17.3.b PCT).

1.7.2. Reserve

1) Principle

Any applicant may pay the additional fees subject to reservations, that is to say, together with a reasoned statement tending to show that the application fulfills the requirement of unity of invention (R40.2.c PCT) or the number of fees requested is excessive.

2) Review

In this case, an ISA review body examines this reservation (R40.2.c PCT): this body is composed of at least one other person than the examiner who made the initial decision (R40.2.d PCT).

If the reservation is justified, the additional fee is refunded in whole or in part (R40.2.c PCT).

3) Reserve Tax

A reserve fee, set by the ISA, may be required by this Administration (R40.2.e PCT), to be paid under 1 month from the invitation to pay taxes (R40.1.iii PCT): failing this, the ISA may consider that the reservation has not been submitted and the ISA declares it (R40.2.e PCT).

If the reservation is justified, the protest fee is refunded in full (R40.2.e PCT).

Section 1.8. International Search Report and Written Opinion

1.8.1. Time limit

The RRI must be established (max of the two deadlines, A18.1 PCT together R42.1 PCT):

  • in a delay of 3 months from receipt of the research copy by ISA;
  • in a delay of 9 months from the priority date.

1.8.2. contents

The RRI contains in particular:

The RRI indicates whether or not it approves the title and abstract (R44.2 PCT).

1.8.3. Language

The language of the RRI is (R43.4 PCT):

  • if a translation of the application has been provided to the ISA (under R12.3 PCT) because, for example, this administration did not accept the language of publication, and if the ISA so decides, in that language;
  • if a translation of the application has been provided for the publication (under R12.4 PCT), but that ISA does not accept that language, in a language that is a language of publication (at the option of ISA);
  • the language in which the application is to be published.

In addition, the RRI is translated into English (A18.3 pct together R45.1 PCT) by the IB.

1.8.4. Written opinion

The ISA also issues a written opinion regarding:

The language requirements are the same as for the RRI (R43bis.1.b PCT together R43.4 PCT).

In the case of an international examination, this written opinion is considered the first written opinion of the IPEA and the applicant is invited to reply (R43bis.1.c PCT) unless the IPEA has indicated that this procedure does not apply to it (R66.1bis.b PCTfor example, this procedure does not apply to the EPO if it was not ISA).

1.8.5. Transmission of the RRI

1) To the IB and to the applicant

The RRI and the written opinion are forwarded to the IB and the applicant on the same day (A18.2 PCT together R44.1 PCT).

Even if some ISAs transmit them to the applicant at no cost at the same time as the ISR, copies of the cited documents can be sent to the ISA (A20.3 PCT together R44.3 PCT): a fee may be charged for this (R44.3.b PCT).

2) Designated Offices

If no preliminary examination report is established, the IB prepares on behalf of the ISA an "International Preliminary Report on Patentability (Chapter I of the PCT)". This report is actually a copy of the written opinion of the ISA (R44bis.1.a PCT).

This report shall be communicated to each designated Office upon expiry of the 30 months (R44bis.2.a PCT) except in the event of an anticipated national phase and if the applicant or the designated Office requests a written opinion (R44bis.2.b PCT).

Designated Offices may request that this report be sent to them in English when the report is not in an official language (R44bis.3.a PCT) or, in case of early entry into the national phase, that the written opinion be communicated to them in English (R44bis.3.d PCT).

1.8.6. RRI reaction

There is no provision for the applicant to respond to the IPP, but if the applicant sends comments to the IB, these comments will be forwarded to the designated Offices (PCT Newsletter n ° 10/2004) on the expiry of the 30 months.

These comments should be marked as "informal" and should be written on a separate page of the changes to theA19 PCT.

These comments will be available to the public as the written opinion (PCT Newsletter n ° 7/2007).

Section 1.9. Communication of previous research

1.9.1. Principle

An ISA may reimburse part or all of the international search fee where such research may be based, in whole or in part, on an earlier search (R16.3 PCT and R41.1 PCT).

Without this being compulsory, this research may have been carried out (international search, international or national, R4.12 PCT):

  • by this ISA,
  • by another ISA,
  • by a national office.

For example, for the EPO, reimbursement is possible only if the EPO itself has carried out the search (A9 RRT together "Decision of the President of the European Patent Office dated 21 December 2018 concerning the refund of the international search fee by the EPO as International Searching Authority” , OJ 2019, A5).

1.9.2. Indication of previous research

The request must indicate that the applicant wishes that an earlier search be taken into account by specifying (R4.1.b.ii PCT together R4.12.i PCT):

  • the administration / office conducting the search;
  • the request for which this search was made.
  • possibly a statement that the request is identical or almost identical (R4.1.c.vi PCT together R4.12.ii PCT).

1.9.3. Copy and translation

The applicant must provide the RO, together with the international application, with a copy of the results of the previous search (R12bis.1.a PCT).

The ISA may require the applicant to submit to it, within a reasonable time:

1.9.4. Exception to the obligation to provide copies or translations

If the search was done by the ISA, no copy or translation is required (R12bis.1.d PCT).

If the previous search was carried out by the RO, the copy of the request, the search and the documents cited may be replaced by a request to the RO to transmit them to the ISA (R12bis.1.c PCT). This request must be made in the request and may be subject to the payment of a fee.

If the request contains a declaration that the international application is identical or almost identical to the application object of the previous search, no copy / translation of the application is necessary (R12bis.1.e PCT).

If the copy or translation is accessible to ISA in an accepted form (eg digital library), and if the applicant indicates it in the request (R4.1.b.ii PCT), no copy / translation is required (R12bis.1.f PCT).

Chapter 2. Additional international search

Section 2.1. Purpose and application

Applicants may request, in order to improve the results of ISA research (linguistic diversity, different databases, etc.), additional research to another office.

It is possible to request several additional international searches (R45bis.1.a PCT).

Section 2.2. Skill

2.2.1. Statement of the ISFS

1) Principle

This additional search can only be requested from an ISA competent for this type of research (R45bis.1.a PCT and R45bis.9 PCT).

For an ISA to be competent, it is sufficient for it to indicate that it is willing to be SISA (R45bis.9.a PCT).

Any SISA may indicate conditions or limitations (eg the EPO is limited to 700 additional searches per year) (R45bis.9.a PCT).

2) Possible SISA

Today, the relevant ISFS are (applicant's guide):

  • Austria (AT);
  • EPO (EP);
  • Finland (FI);
  • Russia (UK);
  • Sweden (SE);
  • Nordic Patent Institute (XN).

2.2.2. Incompetence of ISA

The ISA that performed the international search can not be SISA for the same request (R45bis.9.b PCT).

2.2.3. Selection of the SISA by the applicant

The request for supplementary international search is deemed not to have been submitted if the SISA is not competent (R45bis.1.e.ii PCT) or if the application falls within the list of HIFIS limitations (R45bis.5.g PCT, too much additional international research has already been done by HIFIS).

Nevertheless, if the request is for which the administration is not required to carry out a search (eg intellectual methods), this request is considered valid, even if no further search is carried out (R45bis.5.g PCT).

Section 2.3. Time limit

The supplementary international application may be requested (R45bis.1.a PCT):

  • upon filing the application;
  • before the expiry of a 19 months from the priority date.

Otherwise, it is deemed not to have been presented (R45bis.1.ei PCT).

There is no provision to extend the time limit (Guide for the applicant §8.005).

Section 2.4. taxes

2.4.1. Additional search processing fee

1) Principle

This tax is paid to the IB (R45bis.2.a PCT): it is 200 Swiss francs (Fee Schedulepoint 2).

This tax must be paid within 1 month from the receipt of the application (R45bis.2.c PCT).

A 90% reduction of the additional search processing fee is possible (Fee Schedulepoint 5.a) if the applicant is a national or domiciled in a country whose national income per capita is less than US $ 3,000.

All applicants (even if they are not part of the PCT system) must satisfy this criterion in order to benefit from the reduction (Fee Schedulepoint 5).

2) Late payment

In the event of late payment, the IB invites the depositor to pay it within 1 month from the invitation:

Otherwise, the request for supplementary search is deemed not to have been submitted (R45bis.4.d PCT).

3) Refund

This tax is refunded by the IB (R45bis.2.d PCT):

  • if the international application is withdrawn, considered withdrawn,
  • if the supplementary search request is withdrawn or deemed not to have been submitted.

However, these conditions must be met before HIFIS receives a copy for the search.

2.4.2. Additional search fee

1) Principle

Any SISA may require the payment of an additional search fee (R45bis.3.a PCT): this fee is set by SISA but collected by the IB for the benefit of SISA (R45bis.3.b PCT).

This tax is due within a 1 month from the receipt of the supplementary search request (R45bis.3.c PCT together R45bis.2.c PCT).

2) Late payment

In the event of late payment, the IB invites the depositor to pay it within 1 month from the invitation:

Otherwise, the request for supplementary search is deemed not to have been submitted (R45bis.4.d PCT).

3) Refund

This tax is refunded by the IB (R45bis.3.d PCT):

  • if the international application is withdrawn, considered withdrawn,
  • if the supplementary search request is withdrawn or deemed not to have been submitted.

However, these conditions must be met before HIFIS receives a copy for the search.

In addition, HIFIS may decide to reimburse the search fee if, before it has begun its search, the search request is deemed not to have been submitted due to a limitation of the HIFIS (other than excluded objects). research for this SISA / ISA eg mathematical methods) (R45bis.3.e PCT).

Section 2.5. Representation by a representative

Representation by an agent is never mandatory in front of SISA.

Nevertheless, if the applicant so wishes, he may be represented by:

  • the same agent as for the filing or any authorized representative authorized to act before the RO (R90.1.a PCT);
  • by a representative authorized to act before SISA (R90.1.c PCT).

In addition, the designated RO representative may designate a secondary agent to perform the acts with HIFIS (R90.1.d PCT).

Section 2.6. Request for additional research

2.6.1. Skill

The request for additional research must be submitted to the IB (R45bis.1.b PCT).

2.6.2. Language of the search request

The application must be submitted in French or in English (R92.2.d PCT).

2.6.3. Content of the search request

The supplementary search request must indicate:

2.6.4. Language of the international application

If the language of the deposit or the language of the translation already given to the RO (for the search R12.3 PCT or the publication R12.4 PCT) is accepted by HIFIS, no translation is required (R45bis.1.b.iii PCT and R45bis.1.ci PCT).

Otherwise, a translation must be submitted (R45bis.1.ci PCT).

2.6.5. Form

The use of form PCT / IB / 375 is recommended without being mandatory (Guide for the applicant, §8.006).

A separate search request request must be submitted (Guide for the applicant, §8.007).

2.6.6. Correction of irregularities

If there are any irregularities, the IB invites the applicant to correct them within a 1 month from the invitation (R45bis.4.a PCT).

Otherwise, the application is deemed not to have been submitted (R45bis.4.d PCT).

Section 2.7. Withdrawing an additional search request

2.7.1. Competent administrations

The applicant may withdraw his application by sending a declaration (R90bis.3bis.b PCT):

  • at the IB;
  • at SISA.

If the IB receives the declaration, it sends it to SISA (R90bis.3bis.b PCT) as soon as possible. The converse is also true (Administrative Instructions 520).

2.7.2. Time limit

This declaration must be received by the HIFIS before the date of transmission to the applicant and the IB (R45bis.8.a PCT) of the RRIS (R90bis.3bis.a PCT).

If the HIFIS does not receive the return in time to prevent the RRIS being forwarded, it will be (R90bis.3bis.b PCT).

2.7.3. Tax

Withdrawal entails no costs (Guide for the applicant §11.056).

2.7.4. Signature

The withdrawal declaration must be signed by all applicants (R90bis.5 PCT).

This signature may be replaced by the signature:

Nevertheless, the applicant considered as a common representative can not sign this declaration (R90.3.c PCT together R90bis.5 PCT): in this case, all applicants must sign.

2.7.5. Power

Power is always required in this case by the competent authority (R90.4.e PCT): no renunciation of the administration is possible.

2.7.6. Effects

Taxes paid may be refunded under certain conditions (see above).

The RRIS will not be forwarded to the designated Offices if this declaration is received by the deadline (R90bis.3bis.a PCT).

Section 2.8. Transmission to SISA

2.8.1. Principle

The IB transmits to SISA a copy of the documents needed for the research (R45bis.4.e PCT):

  • the additional search request;
  • international demand;
  • any sequence listing;
  • any translation which has been submitted by the applicant and which is to serve as a basis for the supplementary international search.

This transmission occurs (R45bis.4.e PCT):

  • when the conditions relating to the content of the supplementary search request and taxes are fulfilled,
  • not before the establishment of the RRI (without exceeding a 17 months as of the priority date).

2.8.2. Translation of RRI's written opinion

If the written opinion is not in English or a language accepted by HIFIS, HIFIS may request the IB to translate the written opinion into English within a reasonable time. 2 months (R45bis.4.f PCT).

Section 2.9. Additional search

2.9.1. Beginning

HIFIS may, if it wishes, postpone the commencement of the research until it has received the RRI, but without exceeding 22 months from the priority (R45bis.5.a PCT).

If it does not differ, it starts the additional search upon receipt of the other essential parts.

2.9.2. Basis of research

The supplementary search is carried out on the basis of the international application as filed or as translated for the purposes of the international search: the modifications A19 PCT (modification after RRI) or A34 PCT (modification after international examination) are not taken into account (R45bis.5.b PCT).

The RRI must be taken into account if it is available (R45bis.5.b PCT).

2.9.3. Limitation of search

HIFIS is not required to search for objects for which this Authority would not search if it were ISA (R45bis.5.c PCT).

In addition, problems of clarity or unity of invention may limit the search as for the ISA (R45bis.5.c PCT).

HIFIS may also limit its search by excluding claims that have not been researched by the ISA (R45bis.5.d PCT, for example, by virtue of objects by the ISA).

However, the SISA can not exclude an object not sought by the ISA for questions of unity of invention (R45bis.1.d PCT)

The limitation of the search can also occur because of the SISA-IB agreement (eg only the first n claims are sought) (R45bis.5.h PCT).

In any case, the limitations on supplementary search must be contained in the SISA-IB agreement (R45bis.9.a PCT).

2.9.4. Relevant prior art

This state of the art is the same as before for the ISA (R45bis.5.c PCT).

Section 2.10. Unity of invention

2.10.1. Principle

HIFIS may find that the request does not meet the requirement of unity of invention (regardless of the ISA position on this topic).

In this case, only one invention is sought by the HIFIS: there is no possibility to pay additional fees for the research relates to other inventions (R45bis.6.a PCT).

2.10.2. SISA Opinion

If the HIFIS considers that there is no unit, the HIFIS informs the applicant and specifies its motivations (R45bis.6.a.ii PCT).

2.10.3. reconsideration

This opinion may be reviewed by SISA at the request of the applicant (R45bis.6.a.iii PCT), which may be subject to a review fee set by HIFIS (R45bis.6.c PCT).

The deadline for requesting reconsideration is 1 month the notification informing the applicant of that possibility (R45bis.6.c PCT).

This review is done by SISA, but must involve at least one other person than the examiner who made the initial decision (R45bis.6.d PCT).

If the opinion of the HIFIS was unjustified, the reconsideration fee is refunded (unless the opinion was only partly unjustified, R45bis.6.d.iii PCT).

2.10.4. Additional search is restricted

Following the ISA's opinion that there was no unity of invention, the applicant may indicate in his supplementary search request that he wishes to make the additional search for an invention other than the main invention (R45bis.1.d PCT).

Nevertheless, even restricted, the HIFIS may consider that the invention to be researched is not unitary.

Section 2.11. Additional research report

2.11.1. Time limit

HIFIS must complete the RRIS within 28 months from the priority date (R45bis.7.a PCT).

2.11.2. Language

The language of the RRIS is (R45bis.7.b PCT) in a language of publication (and not the language of publication of the application).

The languages of publication are (R48.3.a PCT):

  • German,
  • English,
  • Arab,
  • Chinese,
  • Korean,
  • Spanish,
  • French,
  • Japanese,
  • Portuguese or
  • Russian.

In addition, if necessary, the RRIS is translated into English (R45bis.8.b PCT together R45.1 PCT)

2.11.3. contents

The content of the RRIS is similar to the RRI (R45bis.7.c PCT), but is not accompanied by a written opinion.

2.11.4. Copy of documents cited

What is stated above for the ISA and concerning the communication of the cited documents is applicable (R45bis.7.c PCT).

2.11.5. Transmission of the search report

HIFIS provides the IB and the applicant with a copy of the RRIS (R45bis.8.a PCT), the same day.

This RRIS is also forwarded to designated Offices unless they have waived (R45bis.8.b PCT).

2.11.6. Consideration by IPEA

If the IPEA is not also HIFIS, the IB transmits the RRIS (possibly an English translation if needed) to the IPEA (Administrative Instructions 420.b).

This RRIS is not necessarily taken into account by IPEA (R45bis.8.c PCT).

2.11.7. Publication

The RRIS is simply made public by the IB if the international application is published (Guide for the applicant §8.053).

One Comment:

  1. To complete the list of possible ISAs:
    Chile CL (22/10/2014)
    Singapore SG (01/10/2016)
    Ukraine UA (05/02/2016).

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