In certain cases it may be appropriate to send an invitation according to both Rule 63 (see B‑VIII, 3.1) and Rule 62a(1) (see B‑VIII, 4.1). This may be necessary, for example, in cases where clarifying which claim or claims to search under Rule 62a will not necessarily help to clarify what subject-matter to search because the application contains several independent claims in the same category, none or only some of which can be subject to a meaningful search in respect of their entire scope. In such cases invitations under both Rule 62a(1) and Rule 63(1) will be sent in a single communication. This single communication gives rise to the same two-month time limit for reply under both rules. In such cases, applicants wishing to respond to both invitations should do so simultaneously.
In response to this invitation under Rule 62a(1) and Rule 63(1), the applicant must not indicate independent claims (in response to the invitation under Rule 62a(1)) and subject-matter (in response to the invitation under Rule 63(1)) which are inconsistent with each other. If the applicant provides inconsistent indications, the search division may, depending on the circumstances, either (i) elect to search the claims indicated by the applicant according to Rule 62a(1), where necessary limiting the subject-matter searched in respect of those claims according to Rule 63(2) mutatis mutandis or (ii) elect to search the subject-matter indicated by the applicant according to Rule 63(1) and as defined in the first independent claim of a particular category which is consistent with that subject-matter according to Rule 62a(1), last sentence, mutatis mutandis.
Although sent in the same communication, the invitations under Rule 62a(1) and Rule 63(1) are still legally separate. Consequently, the applicant may also reply to only one of the invitations and not to the other. If he replies only to the Rule 62a(1) invitation, option (i) of the previous paragraph applies. If he replies only to the Rule 63(1) invitation, option (ii) of the previous paragraph applies.
Date retrieved: 30 December 2018