PA 12/2008: International applications in respect of which a supplementary international search may be requested; how to request such a search.

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  I have filed an international application claiming the priority of an earlier application filed on 11 June 2007.  Will it be possible for me to take advantage of the new supplementary international search service that will start up on 1 January 2009, or is it only available for international applications filed on or after that date?  If I am eligible to request a supplementary search, please could you tell me how to do this?

A:  The new supplementary international search service will be available not only to international applications filed on or after 1 January 2009, but also to existing international applications where the time limit for requesting supplementary international search (SIS) has not yet expired (PCT Rule 45bis.1(a)). The time limit for requesting SIS is 19 months from the priority date (or international filing date, if the application does not claim the priority of an earlier-filed application).  Therefore, this new service will be available for any international application with a priority date on or after 1 June 2007.

It is expected that requests for SIS will normally be made after the applicant has received and assessed the main international search report, but this does not necessarily have to be the case (and will, unfortunately, sometimes not be possible where the main international search report is issued late).  You should request SIS using Form PCT/IB/375, which should be filed with the IB and not sent directly to any of the Authorities specified for SIS.  Form PCT/IB/375 is now available, in editable PDF format, on the PCT Resources page at:

http://www.wipo.int/pct/en/forms/2009/ed_ib375.pdf

When completing the supplementary search request form, you should select the International Searching Authority (ISA) which is to carry out the SIS, noting that this must be one of the three ISAs which are offering the SIS service from 1 January 2009, and that it cannot be the ISA which has carried out the “main search” under PCT Article 16(1).  It is possible to have more than one SIS carried out on the same application (PCT Rule 45bis.1(a)), however, if you want to do this, a separate supplementary search request should be submitted for each SIS requested.

The fees for SIS, the supplementary search fee and the supplementary search handling fee, should be paid to the IB, in Swiss francs, within one month from the date on which the supplementary search request is received by the IB.

This request may need to be accompanied by:

- a translation of the international application into a language accepted by the Authority if the international application is not in such a language and the receiving Office has not yet forwarded a translation under PCT Rule 12.3 or 12.4; and/or

- a copy of any sequence listing in an acceptable electronic form if such a listing was not originally provided in the international application.

In accordance with PCT Rule 92.2(d), you must file the supplementary search request in English or French.

If your supplementary search request is received by the IB after the expiration of the applicable time limit, it will be considered not to have been submitted and there are no provisions for extending this time limit.

For further information, see:

- the item entitled: “New PCT Service: Supplementary International Search” in this issue

- Form PCT/IB/375 and in particular the Notes to that form, available at:  http://www.wipo.int/pct/en/forms/2009/ed_ib375.pdf

References: r_45bis_pct;

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