PCT International Search and Preliminary Examination Guidelines
PART IV THE INTERNATIONAL SEARCH
Chapter 15 The International Search
Supplementary International Search
15.76 Supplementary international search is an optional service offered in accordance with Rule 45bis by those International Searching Authorities which have decided to offer the service. It is intended as a supplement to the main international search, recognizing the fact that no search can be completely exhaustive, and is particularly relevant to the situation where the Authority conducting the supplementary international search has particular language specializations which may not be available in the International Searching Authority which conducts the main international search.
15.77 Many of the details of the service provided are decided by the Authority which is to carry out the supplementary international search. The scope of the service offered may be subject to limitations and conditions, for example, limitations as to subject matter, limitations as to the number of such searches to be carried out by the Authority, and limitations as to the number of claims which will be searched. The scope is defined in an annex to the agreement between the International Bureau and the International Authority. Details are published in the PCT Applicant’s Guide, Annex SISA.
Requesting Supplementary International Search
15.78 If the applicant wishes a supplementary international search to be carried out, he must submit a request to the International Bureau within 22 months from the priority date and pay the relevant fees within one month of submitting the request. It is expected that a request for supplementary international search will usually only be made after the applicant has seen and considered the main international search report, but this is not a requirement.
15.79 If the request is valid and all the fees and necessary additional items (translations and copies of sequence listings in electronic form) are provided, the International Bureau will, once it has received the international search report or after the expiration of 17 months from the priority date, whichever occurs first, transmit to the Authority specified for supplementary search a copy of each of the following:
(i) the supplementary search request;
(ii) the international application;
(iii) any sequence listing furnished with the request for supplementary international search;
(iv) any translation furnished by the applicant which is to be used as the basis of the supplementary international search;
and, at the same time or promptly after their later receipt by the International Bureau:
(v) the international search report and the written opinion established under Rule 43bis.1;
(vi) any invitation by the International Searching Authority to pay additional fees referred to in Article 17(3)(a); and
(vii) any protest by the applicant under Rule 40.2(c) and the decision thereon by the review body constituted in the framework of the International Searching Authority.
Receipt of the Request for Supplementary International Search by the Authority
15.80 On receipt of the request for supplementary international search, the Authority promptly sends an acknowledgement of receipt of the copy of the international application to the applicant and to the International Bureau using Form PCT/SISA/506.
15.81 If, whether prior to or following acknowledgement of receipt of the request for supplementary international search, the Authority finds that carrying out the search is excluded by a limitation or condition specified in the agreement between the Authority and the International Bureau , other than a limitation under Article 17(2) as applicable by virtue of Rule 45bis.5(c), the Authority considers the request not to have been submitted, in which case it notifies the applicant and the International Bureau accordingly using Form PCT/SISA/507 and refunds the supplementary search fee to the extent specified by the agreement, using Form PCT/SISA/508 to notify the repayment.
Start of Supplementary International Search
15.82 The Authority specified for supplementary search normally starts the supplementary international search promptly on receipt of the documents indicated in items (i) to (iv) of paragraph 15.79, above. However, the Authority may, at its option, delay the start of the search until it has also received the international search report and written opinion of the International Searching Authority, or until the expiration of 22 months from the priority date, whichever occurs first.
15.83 If the written opinion of the main International Searching Authority is not in either English or a language accepted by the Authority specified for supplementary search, the Authority may request the International Bureau to provide a translation into English, which is transmitted within two months of the date of receipt of the request.
Withdrawal of the Request for Supplementary International Search
Rules 45bis.3(d), 90bis.3bis, 90bis.6(b-bis); Section 520
15.84 The applicant may withdraw the request for supplementary international search at any time before the transmittal to the applicant of the supplementary international search report or the declaration that no such report will be established. Withdrawal shall be effective on receipt, within this time limit, of a notice addressed by the applicant, at his option, to the Authority specified for supplementary search or to the International Bureau, provided that, where the notice does not reach the Authority specified for supplementary search in sufficient time to prevent the transmittal of the report or declaration, the communication of that report or declaration under Article 20(1), as applicable by virtue of Rule 45bis.8(b), shall nevertheless be effected. In this case, processing of the supplementary international search should stop. There is no general obligation for the Authority to refund the supplementary search fee at this stage (the fee will be refunded by the International Bureau if the withdrawal occurs before any documents are sent to the Authority), but Authorities may offer full or partial refunds according to internal practice. Such policy may be set out in the section of the Agreement with the International Bureau under Article 16(3)(b) dealing with refunds. If the notice of withdrawal is received directly from the applicant, rather than from the International Bureau, the Authority should mark the notice with the date on which it was received and promptly transmit a copy to the International Bureau.
Basis of the Supplementary International Search
15.85 Although the applicant will often have had an opportunity to file amended claims under Article 19 (and sometimes under Article 34 in case a demand has been filed) by the time that the supplementary search is carried out, the supplementary search is performed on the basis of the international application as filed (or a translation thereof) so that it is easier for a truly complementary search to be performed and for the results to be considered together by the applicant or a designated Office.
15.86 If the application contains disclosure of nucleotide and/or amino acid sequences having ten or more specifically defined nucleotides or four or more specifically defined amino acids but does not contain a sequence listing complying with the relevant standard (see paragraph 4.15) or the sequence listing furnished is not in an accepted language, the Authority may invite the applicant (with Form PCT/SISA/504) to furnish, within a fixed time limit, a sequence listing complying with the standard or a translation of the sequence listing in a language acceptable to it, as the case may be, for purposes of completion of the supplementary international search. If the applicant complies with the invitation, the Authority proceeds with the completion of the supplementary international search on the basis of the compliant sequence listing or translation provided. Any sequence listing not contained in the international application as filed will not, subject to Article 34, form part of the international application, but will only be used as a search tool. If the applicant does not comply with the invitation within the time limit or if the response to the invitation does not comply with the standard, the Authority is not required to carry out the supplementary international search to the extent that such non-compliance has the result that a meaningful search cannot be carried out (see paragraph 15.87 (i)).
Claims Excluded from Supplementary International Search
15.87 In addition to limitation of the supplementary international search due to a lack of unity of invention (see paragraph 15.89, below), the supplementary search may exclude:
(i) any claims which would not be the subject of international search by the Authority carrying out the supplementary search, whether for reasons of clarity, subject matter or failure to provide, after a warning and opportunity to comply, a sequence listing in an appropriate form and language (see paragraphs 9.39, 15.12 and 15.33);
(ii) where the international search report or a declaration under Article 17(2)(a) has been established before the start of the supplementary search, any claims which were not the subject of the international search;
Rules 45bis.5(h), 45bis.9(a), (c)
(iii) certain claims, in accordance with a limitation or condition specified in the agreement between the Authority and the International Bureau under Article 16(3)(b) (in particular limitations to the effect that supplementary international searches will not extend to any claim beyond a certain number of claims.”
15.88 If exclusions referred to in paragraph 15.87 (i) or (ii) mean that no supplementary international search report will be established, the Authority so declares and promptly notifies the applicant and the International Bureau using Form PCT/SISA/502. On the other hand, if some claims are excluded, but a supplementary search report is nevertheless established, the limitations are indicated in Box No. II of the supplementary international search report (Form PCT/SISA/501).
Expressions, Etc., Not to Be Used
15.88A If the Authority specified for supplementary search notes matter not to be used as defined in Rule 9.1, such as matter contrary to public order (“ordre public”) or morality or disparaging statements which ought to be omitted from the international application as published, it suggests to the applicant, with Form PCT/SISA/511, that the applicant voluntarily correct the international application and notifies the receiving Office, the International Searching Authority and the International Bureau accordingly. Note that any such correction must not introduce new matter. If the applicant does not make the requested corrections within the indicated time limit, the examiner proceeds with supplementary international search covering subject matter to which the claims might reasonably be expected to be directed after correction. Any correction aimed at complying with Rule 9.1 must be transmitted by the Authority specified for supplementary search to the receiving Office, the International Searching Authority and the International Bureau.