PCT AG-IP 5.073 May the International Searching Authority request the applicant to furnish any other documents in connection with an earlier search than those transmitted by the receiving Office?

Rule 4.1(b)(ii)
4.12
12bis
16.3
23bis
41.1

5.073.   Can the International Searching Authority be requested to take into account the results of an earlier search? If the applicant wishes the International Searching Authority, in carrying out the international search, to take into account the results of an earlier international, international-type or national search (Rule 4.12) and has complied with all the requirements under Rule 12bis.1, the Authority must, to the extent possible, take into account the results of the earlier search if it was carried out by the same Office as that which is acting as the International Searching Authority (Rule 41.1(i)). However, if the earlier search was carried out by another International Searching Authority or national (or regional) Office, the International Searching Authority may choose whether it takes into account the results of the earlier search (Rule 41.1(ii)). To the extent that the International Searching Authority takes such earlier search results into account, the International Searching Authority must reduce the search fee to the extent and under the conditions provided for in the agreement under Article 16(3)(b) (Rule 16.3). International Searching Authorities are free to decide the extent and conditions for such search fee reductions. For the full texts of the agreements under Article 16(3)(b) see www.wipo.int/pct/en/access/isa_ipea_agreements.html (see also paragraph 5.198).

The request form, Continuation of Box No. VII (item 1), includes an option for the applicant to request that the results of an earlier search be taken into consideration by the International Searching Authority and a similar option is included in the PCT-SAFE software and ePCT. The applicant only needs to check the corresponding box in Continuation of Box No. VII (item 1) and identify the earlier application (whether national, regional or international) in respect of which the earlier search was carried by including the filing date, the filing number and the country of filing.

In general, if the applicant has made a request for the results of an earlier search to be taken into account, he should – together with the international application and at the time of filing – provide the receiving Office with a copy of the results of the earlier search. However, the applicant will not need to furnish a copy of the earlier search results in the following cases:

– where the earlier search was carried out by the same Authority or Office as that which will act as the International Searching Authority;

– where the earlier search was not carried out by the International Searching Authority indicated in Box No. VII of the request form but by the same Office as that which is acting as the receiving Office; in this case, the applicant can request the receiving Office to prepare and transmit the earlier search results directly to the International Searching Authority by marking the check-box provided in Continuation of Box No. VII (item 1) of the request form.  This request may be subject to the payment of a fee;

– where, although the earlier search was not carried out by the receiving Office or the International Searching Authority, a copy of the earlier search results is available to that Office or Authority in a form and manner acceptable to it, for example, from a digital library and the applicant indicated this fact as provided for in Continuation of Box No. VII (item 1) of the request form.

If the applicant wants the results of more than one search to be taken into account, the above-mentioned indications must be specified for each and every earlier search. In addition, where the applicant requests the International Searching Authority to take into account the results of more than one earlier search, the sheet of the request form containing the Continuation of Box No. VII, Use of Earlier Search and Classification Results, should be duplicated as many times as necessary and marked “continuation sheet of item 1 of Continuation of Box No. VII” to allow the applicant to comply with the requirements and provide the required information for each earlier application.

5.073A. May the International Searching Authority request the applicant to furnish any other documents in connection with an earlier search than those transmitted by the receiving Office?   Unless the applicant has done so already, the International Authority may invite the applicant (Form PCT/ISA/238) to furnish to it a copy of the earlier application, a translation (where required) of that earlier application into a language accepted by the International Searching Authority, a translation (where required) of the results of the earlier search into a language accepted by the International Searching Authority and/or a copy of any document cited in the results of the earlier search. However, the International Searching Authority may not require the applicant to furnish any or some of those documents in the following cases:

– where the earlier search was carried out by the same Authority or Office as that which will act as the International Searching Authority;

– where the applicant marks the check-box provided in Continuation of Box No. VII (item 1) of the request form stating that the international application is the same or substantially the same as the earlier application in respect of which the earlier search was carried out, except that it is filed in a different language, the International Searching Authority may not require a copy of the earlier application or a translation thereof;

Source: http://www.wipo.int/pct/en/appguide/text.jsp?page=ip05.html

Date retrieved: 24 November 2017

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