No separate WO-ISA is established for a SIS. Instead, only a free-text sheet is used, and this will contain the same information as the separate sheet that is part of the WO-ISA in the form of "explanations". Upon entry into the European phase, the applicant is obliged to respond to these explanations, as set out in Rule 161(1) EPC. A positive conclusion must be reasoned in the same way as in a WO-ISA/IPER.[Rule 45bis.7(e); GL/ISPE 15.96(iv); (v); ]
Formally, the explanations under Rule 45bis.7(e) are part of the SISR (Form PCT/SISA/501) and are contained in an annex called the "Scope Annex".
Although the Scope Annex will concentrate on the documents cited in the SISR, in some circumstances it might be appropriate to raise objections based on documents cited in the ISR.
An example would be that of a document cited in the ISR which could be used as a Y document for inventive step for some dependent claims in the Scope Annex. In this case it might be necessary to cite the document again in the SISR as a Y document for those claims if this was not already indicated in the main ISR (see also GL/PCT-EPO B‑XII, 6), and to provide argumentation in the Scope Annex.
It may also occur that although the EPO as SISA finds further pertinent prior art, objections may also be raised based on X and/or Y documents cited in the ISR. In such a case, the examiner may choose to base objections only on the documents cited in the ISR if considered expedient. Should the objections correspond to those raised in the WO-ISA from the main ISA, a mere reference to the WO-ISA objections will suffice.
There may also be cases where the ISR contains documents pertinent for novelty and/or inventive step and the EPO as SISA cannot find any further relevant documents (only possibly A documents). In such a case the following two possibilities will arise:
In both these cases the A documents found by the EPO as SISA will be cited in the SISR.
Generally, an explicit re-evaluation of the objections raised in the WO-ISA will be avoided. The examiner will thus refrain from negatively commenting on any reasoning given in the WO-ISA, bearing in mind that national law differs amongst the PCT contracting states.
Date retrieved: 30 December 2018