PCT INTERNATIONAL PATENT SEARCH PROCEDURE:

The main procedural steps that any PCT international patent application goes through before the PCT international patent searching Authority include:

(i) conducting the PCT international patent search,
(ii) preparing the PCT international patent search report, and
(iii) establishing a written opinion.

The purpose of the PCT international patent search is to discover relevant prior art. “Prior art” consists of everything which has been made available to the public anywhere in the world by means of written disclosure; it is “relevant” in respect of the PCT international patent application if it can help determine whether or not the claimed invention is new, whether or not it involves an inventive step (obvious), and whether the making available to the public occurred prior to the PCT international filing date. The PCT international patent search is made on the basis of the claims, with due regard to the description and the drawings contained in the PCT international patent application. The results of the PCT international patent search are set out in the PCT international patent search report.

The PCT international patent searching authority must endeavor to discover as much of the relevant prior art as its facilities permit, and it must in any case consult the so-called “minimum documentation.” Roughly stated, the latter comprises the published patent documents issued after 1919 by France, by Germany from 1920 to 1945 and by the Federal Republic of Germany since 1945, by Japan (for PCT international patent searching Authorities other than the Japan Patent Office, only those documents for which English abstracts are generally available), by the former Soviet Union and now by the Russian Federation (for PCT international patent searching Authorities other than the Russian Patent Office only those documents for which English abstracts are generally available), by Switzerland (except documents in Italian), by the United Kingdom, by the United States of America, by the African Intellectual Property Organization (OAPI), by the African Regional Industrial Property Organization (ARIPO), by the Eurasian Patent Office and by the European Patent Office; published PCT international (PCT) applications; and, from various dates, about 135 technical periodicals. However, where the PCT international patent searching Authority has more than the “minimum documentation” at its disposal, it is obliged also to consult that additional documentation to the extent permitted by its facilities.

FAQ – PCT international patent search procedure

Limitations ON PCT international patent search

May the PCT international patent searching Authority refuse to search certain patent subject matter?

The PCT international patent searching Authority is not required to perform an PCT international patent search on claims which relate to any of the following subject matter: (i) scientific and mathematical theories, (ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes, (iii) schemes, rules or methods of doing business, performing purely mental acts or playing games, (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods, (v) mere presentation of information, and (vi) computer programs to the extent that the Authority is not equipped to search prior art concerning such programs. However, certain PCT international patent searching Authorities do, in practice, search these fields to varying extents—for example, several PCT international patent searching Authorities search subject matter which is normally searched under the national (or regional) procedure. In addition, the PCT international patent searching Authority is not required to search the PCT international patent application, to the extent that a meaningful search cannot be carried out, in certain cases where a nucleotide and/or amino acid sequence listing and/or tables related thereto are not furnished in accordance with the prescribed standard and technical requirements or in a computer readable form. If the PCT international patent searching Authority is not required to search any of the claims, it may declare that it will not establish an PCT international patent search report. It should, nevertheless, be noted that the lack of an PCT international patent search report in such a case does not, in itself, have any influence on the validity of the PCT international patent application, the processing of which, including its communication to the designated Offices, continues.

May the PCT international patent searching Authority refuse to search PCT international patent applications which are unclear or have other defects?

If the PCT international patent searching Authority considers that the description, the claims or the drawings fail to comply with the prescribed requirements to such an extent that a meaningful search cannot be carried out, it may declare that it will not establish a search report (such a declaration may also be made in respect of some of the claims only). This may in particular occur where the description or the claims are unclear. The lack of an PCT international patent search report does not, of itself, have any influence on the validity of the PCT international patent application, the processing of which, including its communication to the designated Offices, continues. Where only some of the claims are found to be “unsearchable,” the PCT international patent searching Authority will not search them but will search the rest of the PCT international patent application.

UNITY OF INVENTION

What is the purpose of the requirement of “unity of invention”?

The search fee is intended to compensate the PCT international patent searching Authority for carrying out an PCT international patent search on the PCT international patent application, but only where the PCT international patent application meets the requirement of “unity of invention.” That means that the PCT international patent application must relate to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept.

What happens where the PCT international patent searching Authority considers that the PCT international patent application does not meet the requirement of unity of invention?

If the PCT international patent searching Authority finds that the PCT international patent application does not meet the requirement of unity of invention, it invites the applicant to pay additional fees, specifying the reasons for its finding and indicating the number of additional fees to be paid. Such additional fees are payable direct to the PCT international patent searching Authority within a time limit fixed by that Authority, which may not be shorter than 15 or, in certain cases, 30 days and not longer than 45 days from the date of the invitation.

When the PCT international patent searching Authority invites the applicant to pay additional fees, it may annex to the invitation the results of a partial PCT international patent search limited to the invention first mentioned in the claims (the relevant claims are identified in the invitation). The results of such a partial search will be included in the PCT international patent search report when it is established, together with the results of the search of any further invention for which the applicant pays additional fees within the time limit fixed in the invitation.

The PCT international patent searching Authority establishes the PCT international patent search report in any case on those parts of the PCT international patent application which relate to the “main invention,” that is, the invention—or group of inventions so linked as to form a single general inventive concept—first mentioned in the claims. Moreover, the PCT international patent searching Authority establishes the PCT international patent search report also on those parts of the PCT international patent application which relate to any invention—or any group of inventions so linked as to form a single general inventive concept—in respect of which the applicant has paid the additional fee within the time limit fixed in the invitation.

May the applicant protest against payment of the additional fees? Yes, any applicant may pay the additional fee under protest, that is, accompanied by a reasoned statement to the effect that the PCT international patent application complies with the requirement of unity of invention or that the number of the required additional fees is excessive. Any such protest is examined by a three-member board or other special organ of the PCT international patent searching Authority or by any competent higher authority, and a decision is taken on it. To the extent that the applicant’s protest is found to be justified, the additional fee is totally or partly reimbursed. At the request of the applicant, the texts of both the protest and the decision on it are notified to the designated Offices together with the PCT international patent search report.

What happens if the applicant does not pay the additional fees as invited?

Where, within the prescribed time limit, the applicant does not pay all the additional fees indicated by the PCT international patent searching Authority, but pays only some of them, or does not pay any additional fee at all, certain parts of the PCT international patent application are not searched by that Authority. The lack of an PCT international patent search report in respect of those parts of the PCT international patent application does not, of itself, have any influence on the validity of the PCT international patent application, the processing of which, including its communication to the designated Offices, continues in respect of all claims. Nevertheless, the national law of any designated State may provide that such unsearched parts of the PCT international patent application will be considered withdrawn as far as that State is concerned unless a special fee is paid by the applicant to its national Office.

PCT International Patent Search Report

When must the PCT international patent search report be established?

The PCT international patent search report must be established within three months from the receipt of the search copy by the PCT international patent searching Authority or nine months from the priority date, whichever time limit expires later.

What are the contents of the PCT international patent search report?

The PCT international patent search report contains, among other things, the citation of the documents considered relevant, the classification of the subject matter of the invention and an indication of the fields searched as well as any electronic data base searched, including, where practicable, the search terms used. Citations of particular relevance must be indicated specially. Citations which are not relevant to all the claims must be indicated in relation to the claim or claims to which they are relevant. If only certain passages of the document cited are relevant or particularly relevant, they must be identified, for example by an indication of the page on which, or the column or lines in which, the passage appears.

How do the applicant and the PCT International Patent Bureau receive the PCT international patent search report? The PCT international patent searching Authority transmits on the same day one copy of the PCT international patent search report and the written opinion established by it to the applicant and to the PCT International Patent Bureau. The latter publishes the PCT international patent search report with the pamphlet and sends a copy to the designated Offices.

How can the applicant obtain copies of the documents cited in the PCT international patent search report?

The applicant can obtain copies of the documents cited in the PCT international patent search report by requesting them from the PCT international patent searching Authority. Certain PCT international patent searching Authorities, however, transmit such copies automatically without extra charge to the applicant, together with the PCT international patent search report.

WRITTEN OPINION OF THE PCT INTERNATIONAL PATENT SEARCHING AUTHORITY

For every PCT international patent application filed on or after 1 January 2004, the PCT international patent searching Authority will establish, at the same time that it establishes the PCT international patent search report, a preliminary and nonbinding written opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable, very similar in scope to the written opinion established by the PCT international Preliminary Examining Authority during PCT international preliminary patent examination. The relevant date for determining prior art for the purposes of establishing the written opinion is the PCT international filing date or, where priority of an earlier application is claimed, the priority date—this date is different from that used in establishing the PCT international patent search report but is consistent with the date used in PCT international preliminary patent examination. The written opinion of the PCT international patent searching Authority is established in the language in which the PCT international patent search report is established, and is communicated to the applicant and to the PCT International Patent Bureau together with the PCT international patent search report. The PCT international patent searching Authority must, as a rule, establish the PCT international patent search report and the written opinion within three months from the receipt of the search copy sent to it by the receiving Office or within nine months from the priority date, whichever expires later.

Even though no special provisions are included in the Regulations providing for the applicant to comment on the written opinion of the PCT international patent searching Authority, in accordance with the decision of the PCT Assembly, applicants may submit comments on an informal basis to the PCT International Patent Bureau. The purpose of such informal comments is to give the applicant an opportunity to rebut the written opinion of the PCT international patent searching Authority in the event that PCT international preliminary patent examination is not requested. Any formal response to the written opinion of the PCT international patent searching Authority must be submitted directly to the PCT international Preliminary Examining Authority.

If no PCT international preliminary patent examination report has been or will be established, the written opinion of the PCT international patent searching Authority will form the basis for the issuance by the PCT International Patent Bureau, on behalf of the PCT international patent searching Authority, of the PCT international preliminary report on patentability (IPRP) (Chapter I of the PCT) which will be communicated to all designated Offices, together with any informal comments submitted by the applicant. The PCT international preliminary report on patentability (Chapter I of the PCT) is made available for public inspection after the expiration of 30 months from the priority date.

If a demand for PCT international preliminary patent examination is filed in respect of an PCT international patent application, the written opinion which has been established by the PCT international patent searching Authority will, in general, be used by the PCT international Preliminary Examining Authority as its own first written opinion, unless the PCT international Preliminary Examining Authority notifies the PCT International Patent Bureau to the contrary.

The PCT Patent System offers many advantages, however, the procedural requirements and application formalities frequently change and strategic considerations can vary widely depending on individual circumstances. For legal advice on a PCT international patent, consult a registered patent attorney qualified to assist you in international patent filing matters.