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PCT ARTICLE 17
Procedure before the International Searching Authority
(1) Procedure before the International Searching Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
(2)
(a) If the International Searching Authority considers:
(i) that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or
(ii) that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out, the said Authority shall so declare and shall notify the applicant and the International Bureau that no international search report will be established.
(b) If any of the situations referred to in subparagraph (a) is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established as provided in Article 18.
(3)
(a) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International Searching Authority shall establish the international search report on those parts of the international application which relate to the invention first mentioned in the claims (main invention) and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to inventions in respect of which the said fees were paid.
(b) The national law of any designated State may provide that, where the national Office of the State finds the invitation, referred to in subparagraph (a), of the International Searching Authority justified and where the applicant has not paid all additional fees, those parts of the international application which consequently have not been searched shall, as far as effects in the State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.
PCT RULE 33
Relevant Prior Art for the International Search
PCT RULE 33.1.
Relevant Prior Art for the International Search
(a) For the purposes of Article 15(2), relevant prior art shall consist of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date.
(b) When any written disclosure refers to an oral disclosure, use, exhibition, or other means whereby the contents of the written disclosure were made available to the public, and such making available to the public occurred on a date prior to the international filing date, the international search report shall separately mention that fact and the date on which it occurred if the making available to the public of the written disclosure occurred on a date which is the same as, or later than, the international filing date.
(c) Any published application or any patent whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application searched, and which would constitute relevant prior art for the purposes of Article 15(2) had it been published prior to the international filing date, shall be specially mentioned in the international search report.
PCT RULE 33.2.
Fields to Be Covered by the International Search
(a) The international search shall cover all those technical fields, and shall be carried out on the basis of all those search files, which may contain material pertinent to the invention.
(b) Consequently, not only shall the art in which the invention is classifiable be searched but also analogous arts regardless of where classified.
(c) The question what arts are, in any given case, to be regarded as analogous shall be considered in the light of what appears to be the necessary essential function or use of the invention and not only the specific functions expressly indicated in the international application.
(d) The international search shall embrace all subject matter that is generally recognized as equivalent to the subject matter of the claimed invention for all or certain of its features, even though, in its specifics, the invention as described in the international application is different.
PCT RULE 33.3.
Orientation of the International Search
(a) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed.
(b) In so far as possible and reasonable, the international search shall cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.
PCT RULE 39
Subject Matter under Article 17(2)(a)(i)
PCT RULE 39.1.
Definition
No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:
(i) scientific and mathematical theories,
(ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
(iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,
(iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
(v) mere presentations of information,
(vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.
PCT Article 15 describes the objective of the international search, i.e., to uncover relevant prior art, and also describes the international-type search. It should be noted generally that an international-type search is performed on all U.S. national applications filed after June 1, 1978.
There are several benefits to applicants who use the PCT. One of the three most commonly mentioned benefits is the international search (and consequently the international search report). The others are the time delay gained before having to enter the national phase and the monetary savings since filing and translation fees are also deferred or indeed, may not be necessary depending upon the search results. The international search gives applicants the benefit of knowing the status of the prior art with respect to their invention before time for entry into the national stage. This affords applicants the time to make economic decisions whether to perfect their national stage filings.
The objective of the international search is to discover relevant prior art ( PCT Article 15(2)). "Prior art" consists of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations); it is relevant in respect of the international application if it is capable of being of assistance in determining that the claimed invention is or is not new and that the claimed invention does or does not involve an inventive step (i.e., that it is or is not obvious), and if the making available to the public occurred prior to the international filing date. For further details, see PCT Rule 33. The international search is made on the basis of the claims, with due regard to the description and the drawings (if any) contained in the international application ( PCT Article 15(3)). Categories of relevant prior art as described in PCT Rule 33.1 are indicated in the search report under the section "Documents Considered To Be Relevant." The various letter designations are defined on the search report form (see PCT/ISA/210).
It is pointed out, for example, that:
(A) A category X reference defeats novelty or defeats inventive step when the reference is considered alone;
(B) A category Y reference is said to defeat or refute inventive step when combined with one or more other such references - the combination being obvious to a person skilled in the art;
(C) A category A reference is one showing the general state of the art but would not be considered to be of particular relevance;
(D) A category E reference is an earlier document which is published on or after the international filing date;
(E) A category P reference is a document published prior to the international filing date but later than the claimed priority date (commonly called an intervening reference).
These are the most commonly used categories of references.
The examiner should not view these categories strictly in the sense that they have a direct comparison to U.S. application of prior art references, for example, a category X reference defeats novelty and in that sense, it is closely analogous to U.S. consideration of 35 U.S.C. 102 prior art. However, a category X reference can also defeat inventive step which is analogous to U.S. consideration of 35 U.S.C. 103 prior art.
The International Searching Authority must endeavor to discover as much of the relevant prior art as its facilities permit ( PCT Article 15(4)), and, in any case, must consult the so-called "minimum documentation" ( PCT Rule 34).
The USPTO has declared that it will search and examine, in international applications, all subject matter searched and examined in U.S. national applications. However under PCT Rule 39, no International Searching Authority is required to perform an international search where the international application relates to any of the following subject matters:
(A) Scientific and mathematical theories;
(B) Plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes;
(C) Schemes, rules or methods of doing business, performing purely mental acts or playing games;
(D) Methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods;
(E) Mere presentation of information; and
(F) Computer programs to the extent that it, the said Authority is not equipped to search prior art ( PCT Article 17(2)(a)(i) and PCT Rule 39).
The applicant considering the filing of an international application may be well advised not to file one if the subject matter of the application falls into one of the above mentioned areas. If he or she still does file, the International Searching Authority may declare that it will not establish an international search report. Accordingly, applicant should take into consideration which International Searching Authority (e.g., European Patent Office) he or she selects to conduct the international search. It is to be noted, nevertheless, that the lack of the international search report in such case will not have, in itself, any influence on the validity of the international application and the latter's processing will continue, including its communication to the designated Offices.
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If the International Searching Authority considers that the description, the claims, or the drawings fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out, it may declare that it will not establish a search report ( PCT Article 17(2)(a)(ii)). Such declaration may also be made in respect of some of the claims only. The lack of the international search report will not, in itself, have any influence on the validity of the international application and the latter's processing will continue, including its communication to the designated Offices. Where only some of the claims are found to be unsearchable, the International Searching Authority will not search them, but will search the rest of the international application. Any unsearched claims will be indicated in the international search report.
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