International Search

International Search

Determination of the Competent ISA

General Information

The international search is carried out by an ISA.

This administration may be (A16.1 PCT):

• A national office or an intergovernmental organization.

Appointment of ISAs in the PCT System

Principle

To be designated as an ISA, the office or organization must:

• Have been appointed by the PCT Assembly (A16.3.a PCT) and meet certain material conditions (R36.1 PCT):
  • Have or have access to the minimum documentation under R34 PCT;
  • Have at least 100 full-time employees dedicated to search, who possess:
    • Technical expertise in the field of search, and
    • The necessary linguistic skills to understand at least the languages in which the minimum documentation is drafted or translated;
  • Have a quality management system in place.

Possible ISAs

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 (RU); Sweden (SE); USA (US); Nordic Patent Institute (XN).

Identification of Possible ISAs by the RO

Principle

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

Special Case of the IB/RO

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

Limitation Based on Language

The RO may well determine the list of possible ISAs based on the type of application filed (e.g., the filing language or the translation language) (R35.2.a.ii PCT).

Final Selection by the Applicant

When the applicant has a choice between several ISAs, they indicate their choice in the request form (R4.1.b.iv PCT and R4.14bis PCT).

Representation by a Representative

Representation by a representative is never mandatory before the ISA.

However, if the applicant wishes, they may be represented by:

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

Additionally, the representative appointed before the RO may appoint a secondary representative to perform acts before the ISA (R90.1.d PCT).

Purpose of the Search

The search aims to identify relevant prior art (A15.2 PCT and A15.4 PCT) in relation to the claims of the application, taking into account the description and drawings (A15.3 PCT).

Prior art

The prior art includes anything that has been made available to the public (R33.1.a PCT):

• to the public;
• in any part of the world;
• by written disclosure.

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

Limitations of the search

Types of inventions not searched

An ISA is not required to carry out a search where the claims relate to any of the following subject matter (A17.2.a.i PCT together with 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 the products thereof; schemes, rules or methods for doing business, performing purely mental acts or playing games; methods of treatment of the human or animal body by surgery or therapy, and diagnostic methods; mere presentations of information; computer programs as such.

These limitations are set out in the ISA-IB agreement (A17.1 PCT).

Procedure

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

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

Clarity issue

If the ISA considers that the description, claims or drawings do not allow a meaningful search to be carried out (e.g., lack of clarity), it declares that it will not establish a search report (A17.2.a.ii PCT), possibly for certain claims only (A17.2.b PCT).

The EPO provides an informal procedure to request explanations from the applicant prior to establishing the search report (OJ 2011, 327).

Unity of invention

Additional official fees

Principle

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

• by providing its reasoning (R40.1.i PCT);
• by indicating the number of additional official fees to be paid (R40.1.ii PCT).

These official fees are paid directly to the ISA (R40.2.b PCT).

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

Non-payment

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

The national law of any contracting state may provide that the unsearched parts are considered withdrawn unless a special fee is paid (A17.3.b PCT).

Reservation

Principle

Any applicant may pay the additional official fees under protest, i.e., by submitting a reasoned statement seeking to demonstrate that the application meets the requirement of unity of invention (R40.2.c PCT) or that the number of official fees requested is excessive.

Reexamination

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

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

Protest fee

A protest fee, set by the ISA, may optionally be required by that authority (R40.2.e PCT), payable within 1 month from the invitation to pay the official fees (R40.1.iii PCT): if not paid, the ISA may consider that the protest was not filed and the ISA shall so declare (R40.2.e PCT).

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

International Search Report and Written Opinion

Time limit

The ISR must be established (the longer of the two time limits, A18.1 PCT together with R42.1 PCT):

• within a time limit of 3 months from the receipt of the search copy by the ISA; within a time limit of 9 months from the priority date.

Content

The ISR includes in particular:

• citations of the relevant documents (R43.5.a PCT):
  • the specific passages must be indicated (R43.5.e PCT);
  • the claims affected by the documents are indicated (R43.5.c PCT);
• the international classification of the application (R43.3.a PCT);
• the fields to which the search related (R43.6.a PCT);
• the databases used for the search (R43.6.c PCT).

The ISR indicates whether it approves or disapproves of the title and the abstract (R44.2 PCT).

Language

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

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

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

Written Opinion

The ISA also issues a written opinion concerning:

• novelty, inventive step, and industrial applicability (R43bis.1.a.i PCT);
• as well as the other conditions typically examined by the ISA (R43bis.1.a.ii PCT).

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

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

Transmission of the ISR

To the IB and the Applicant

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

Even though some ISAs transmit them free of charge to the applicant together with the ISR, copies of the cited documents may be obtained by requesting them from the ISA (A20.3 PCT together with R44.3 PCT): an official fee may be charged for this (R44.3.b PCT).

To the Designated Offices

If no international preliminary examination report is established, the IB issues on behalf of the ISA an « International Preliminary Report on Patentability (Chapter I of the PCT) ». This report is in fact a copy of the ISA’s written opinion (R44bis.1.a PCT).

This report is communicated to each designated office upon expiration of the 30-month time limit (R44bis.2.a PCT), unless an early national phase entry occurs and if the applicant or the designated office requests communication of the written opinion (R44bis.2.b PCT).

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

Response to the ISR

There is no provision allowing the applicant to respond to the ISR, but if the applicant sends comments to the IB, these comments will be transmitted to the designated offices (PCT Newsletter No. 10/2004) upon expiration of the 30-month time limit.

These comments must be marked as « informal » and must be drafted on a separate page from the amendments under A19 PCT.

These comments will be made available to the public like the written opinion (PCT Newsletter No. 7/2007).

Communication of Prior Art Searches

Principle

An ISA may refund part or all of the international search official fee when such search can be based, in whole or in part, on a prior search (R16.3 PCT and R41.1 PCT).

While not mandatory, this search may have been carried out (international search, of international or national type, R4.12 PCT):

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

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

Indication of the prior search

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

• the authority/office that carried out the search;
• the application for which that search was carried out;
• where applicable, a statement indicating that the application is identical or nearly identical (R4.1.c.vi PCT together with R4.12.ii PCT).

Copy and translation

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

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

• a copy of the earlier application (R12bis.1.b.i PCT);
• a translation into a language accepted by the ISA, where applicable:
  • of the application (R12bis.1.b.ii PCT);
  • of the search results (R12bis.1.b.iii PCT);
• a copy of the cited documents (R12bis.1.b.iv PCT).

Exception to the obligation to provide copies or translations

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

If the prior search was carried out by the RO, the copy of the application, the search, and the cited documents 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 an official fee.

If the request contains a statement that the international application is identical or nearly identical to the application that was the subject of the prior search, no copy/translation of the application is necessary (R12bis.1.e PCT).

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

Additional international search

Purpose and application

Applicants may request, in order to improve the results of the search carried out by the ISA (linguistic diversity, different databases, etc.), an additional search from another office.

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

Competence

Declaration of SISAs

Principle

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

For an ISA to be competent, it is sufficient that it indicates its willingness to act as SISA (R45bis.9.a PCT).

Any SISA may specify conditions or limitations (e.g., the EPO limits itself to 700 additional searches per year) (R45bis.9.a PCT).

Possible SISAs

Currently, the competent SISAs are (applicant’s guide):

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

Incompetence of the ISA

The ISA that carried out the international search cannot act as SISA for the same application (R45bis.9.b PCT).

Selection of the SISA(s) by the applicant

The request for an additional international search is deemed not to have been filed if the SISA is not competent (R45bis.1.e.ii PCT) or if the application falls within the SISA’s list of limitations (R45bis.5.g PCT, too many additional international searches have already been carried out by the SISA).

However, if the application relates to subject matter for which the authority is not required to carry out a search (e.g., intellectual methods), the application is considered valid even if no additional search is performed (R45bis.5.g PCT).

Time limit

The additional international search may be requested (R45bis.1.a PCT):

• from the filing of the application; before the expiration of a 22-month period from the priority date.

Otherwise, it is deemed not to have been filed (R45bis.1.e.i PCT).

There is no provision for extending the time limit (applicant’s guide §8.005).

Official fees

Additional search handling fee

Principle

This official fee is paid to the IB (R45bis.2.a PCT): it amounts to 200 Swiss francs (Schedule of Fees, item 2).

This official fee must be paid within a period of 1 month from receipt of the request (R45bis.2.c PCT).

A 90% reduction of the additional search handling fee is possible (Schedule of Fees, item 5.a) if the applicant is a national or resident of a country whose per capita national income is less than US$ 3,000.

All applicants (even if they are not part of the PCT system) must meet this criterion to benefit from the reduction (Schedule of Fees, item 5).

Late payment

In case of late payment, the IB invites the applicant to pay within a period of 1 month from the invitation:

• the handling fee as indicated above (R45bis.4.b PCT);
• a late payment fee of 50% of the handling fee (R45bis.4.c PCT).

Otherwise, the request for an additional search is deemed not to have been filed (R45bis.4.d PCT).

Refund

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

• if the international application is withdrawn or considered withdrawn,
• if the request for additional search is withdrawn or deemed not to have been filed.

However, these conditions must be met before the SISA receives its copy to perform the search.

Additional search official fee

Principle

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

This official fee is due within a period of 1 month from receipt of the request for additional search (R45bis.3.c PCT together with R45bis.2.c PCT).

Late payment

In case of late payment, the IB invites the applicant to pay within a period of 1 month from the invitation:

• the search official fee as indicated above (R45bis.4.b PCT);
• a late payment official fee of 50% of the processing official fee (and not the search official fee, R45bis.4.c PCT).

If not, the request for additional search is deemed not to have been filed (R45bis.4.d PCT).

Refund

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

• if the international application is withdrawn or considered withdrawn,
• if the request for additional search is withdrawn or deemed not to have been filed.

However, these conditions must be met before the SISA receives its copy to perform the search.

Furthermore, the SISA may decide to refund the search official fee if, before it has begun its search, the request for search is deemed not to have been filed due to a limitation of the SISA (other than subject matter excluded from search for that SISA/ISA, e.g., mathematical methods) (R45bis.3.e PCT).

Representation by a representative

Representation by a representative is never mandatory before the SISA.

However, if the applicant so wishes, they may be represented by:

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

In addition, the representative appointed before the RO may appoint a secondary representative to perform acts before the SISA (R90.1.d PCT).

Request for additional search

Competence

The request for additional search must be filed with the IB (R45bis.1.b PCT).

Language of the search request

The request must be filed in French or English (R92.2.d PCT).

Contents of the supplementary search request

The supplementary search request must indicate:

• the name and address of the applicant and the representative (if any) (R45bis.1.b.i PCT);
• the title of the invention (R45bis.1.b.i PCT);
• the date of the international filing (R45bis.1.b.i PCT);
• the international application number (R45bis.1.b.i PCT);
• the selected ISA (R45bis.1.b.ii PCT);
• whether the translation already submitted to the RO (for the search under R12.3 PCT or publication under R12.4 PCT) serves as the basis for the search (R45bis.1.b.iii PCT).

Language of the international application

If the language of filing or the language of the translation already submitted to the RO (for the search under R12.3 PCT or publication under R12.4 PCT) is accepted by the ISA, no translation is required (R45bis.1.b.iii PCT and R45bis.1.c.i PCT).

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

Form

Use of form PCT/IB/375 is recommended but not mandatory (Applicant’s Guide, §8.006).

A separate request for each supplementary search must be filed (Applicant’s Guide, §8.007).

Correction of irregularities

If irregularities exist, the IB will invite the applicant to correct them within 1 month from the date of the invitation (R45bis.4.a PCT).

If not corrected, the request will be considered not to have been filed (R45bis.4.d PCT).

Withdrawal of a supplementary search request

Competent authorities

The applicant may withdraw the request by submitting a declaration (R90bis.3bis.b PCT):

• to the IB; to the ISA.

If the IB receives the declaration, it will transmit it to the ISA (R90bis.3bis.b PCT) as soon as possible. The reverse is also true (Administrative Instructions 520).

Time limit

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

If the ISA does not receive the declaration in time to prevent transmission of the SSRR, it will be transmitted (R90bis.3bis.b PCT).

Official fee

Withdrawal does not incur any official fees (Applicant’s Guide §11.056).

Signature

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

This signature may be replaced by the signature of:

• the representative (R90.3.a PCT);
• the common representative designated by the other applicants (R90.3.c PCT).

However, the applicant deemed to be the common representative may not sign this statement (R90.3.c PCT together with R90bis.5 PCT): in this case, all the applicants must sign.

Power of Attorney

A power of attorney is always required in this case by the competent authority (R90.4.e PCT): no waiver by the authority is possible.

Effects

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

The ISR will not be transmitted to the designated Offices if this statement is received within the time limits (R90bis.3bis.a PCT).

Transmission to the ISA

Principle

The IB transmits to the ISA a copy of the documents required for the search (R45bis.4.e PCT):

• the request for additional search;
• the international application;
• any sequence listing;
• any translation provided by the applicant that is to serve as the basis for the additional international search.

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

• when the conditions relating to the content of the request for additional search and official fees are met,
• not before the establishment of the ISR (without exceeding a time limit of 17 months from the priority date).

Translation of the Written Opinion of the ISR

If the written opinion is neither in English nor in a language accepted by the ISA, the ISA may request the IB to translate the written opinion into English within a time limit of 2 months (R45bis.4.f PCT).

Additional Search

Commencement

The ISA may, if it so wishes, defer the commencement of the search until it has received the ISR, but without exceeding 22 months from the priority date (R45bis.5.a PCT).

If it does not defer, it commences the additional search upon receipt of the other essential documents.

Basis of the Search

The additional search is carried out on the basis of the international application as filed or as translated for the purposes of the international search: amendments under A19 PCT (amendment after ISR) or A34 PCT (amendment after international examination) are not taken into account (R45bis.5.b PCT).

The ISR must be taken into account if available (R45bis.5.b PCT).

Limitation of the Search

The SISA is not required to carry out a search for subject matter for which that authority would not perform a search if it were the ISA (R45bis.5.c PCT).

Furthermore, issues of clarity or unity of invention may limit the search as they would for the ISA (R45bis.5.c PCT).

The SISA may also limit its search by excluding claims that were not searched by the ISA (R45bis.5.d PCT, for example, due to subject matter excluded by the ISA).

However, the SISA may not exclude subject matter not searched by the ISA on grounds of lack of unity of invention (R45bis.1.d PCT).

The limitation of the search may also occur due to the SISA-IB agreement (e.g., only the first *n* claims are searched) (R45bis.5.h PCT).

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

Relevant Prior Art

This prior art is the same as that previously considered by the ISA (R45bis.5.c PCT).

Unity of Invention

Principle

The SISA may determine that the application does not satisfy the requirement of unity of invention (regardless of the ISA’s position on this matter).

In such a case, only one invention is searched by the SISA: there is no possibility of paying additional official fees for the search to cover other inventions (R45bis.6.a PCT).

SISA’s Opinion

If the SISA considers that there is no unity, the SISA shall inform the applicant and provide its reasoning (R45bis.6.a.ii PCT).

Reconsideration

This opinion may be reconsidered by the SISA upon request by the applicant (R45bis.6.a.iii PCT), which may be subject to a reconsideration official fee set by the SISA (R45bis.6.c PCT).

The time limit for requesting reconsideration is 1 month from the date of the notification informing the applicant of this possibility (R45bis.6.c PCT).

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

If the SISA’s opinion was unjustified, the reconsideration official fee is refunded (unless the opinion was only partially unjustified, R45bis.6.d.iii PCT).

Supplementary Search is Restricted

Following the ISA’s opinion that there was no unity of invention, the applicant may indicate in the request for supplementary search that they wish the supplementary search to cover an invention other than the main invention (R45bis.1.d PCT).

Nevertheless, even if restricted, the SISA may determine that the invention to be searched lacks unity.

Supplementary Search Report

Time Limit

The SISA must issue the SISR within a time limit of 28 months from the priority date (R45bis.7.a PCT).

Language

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

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

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

Furthermore, if necessary, the SISR is translated into English (R45bis.8.b PCT together with R45.1 PCT).

Content

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

Copy of cited documents

What is stated above for the ISA regarding the communication of cited documents applies (R45bis.7.c PCT).

Transmission of the search report

The SISA transmits to the IB and the applicant a copy of the SISR (R45bis.8.a PCT), on the same day.

This SISR is also transmitted to the designated Offices unless they have waived this (R45bis.8.b PCT).

Consideration by the IPEA

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

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

Publication

The SISR is simply made public by the IB if the international application is published (Applicant’s Guide §8.053).