If the claims on which the search is to be based were filed after the date of filing or under Rule 58, they do not form part of the application documents "as originally filed". Also, for Euro-PCT applications (see B‑III, 3.3.1), it may happen that amended claims form the basis for the supplementary European search. In either case, before starting the search, the search division checks whether or not these claims introduce subject-matter that extends beyond the content of the application "as originally filed" (see also A‑III, 15). For Euro-PCT applications, this is the PCT application as originally filed.[Art. 123(2); Rule 58; ]
If the claims contravene the requirements of Art. 123(2), the search division will face one of the following situations:
A similar problem may also occur when a divisional application is filed and the amended claims do not satisfy the requirements of Art. 76(1): the same criteria as described in steps (a) to (c) above is then to be applied.
In any case, the search opinion will include an objection under Art. 123(2) or Art. 76(1) indicating the reasons for limiting the scope of the search.
Date retrieved: 17 May 2021