Practical Advice

http://www.wipo.int/pct/en/newslett/2018/article_0006.html
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Practical Advice

Requesting the International Searching Authority to use the results of an earlier search

Q:      I am just about to file an international application claiming the priority of an earlier national application.  Can I request that the results of the search on the earlier application be taken into account by the International Searching Authority when drawing up the international search report ?  If so, how do I do this, and will I be entitled to a reduction in the search fee?

A:  It is possible to request the International Searching Authority (ISA) to take into account, when carrying out the international search, the results of an earlier international, international‑type or national search carried out by the same or another ISA or by a national Office (“earlier search”), provided that you comply with all the requirements under PCT Rules 4.12 and 12bis.1, as outlined below.  You should be aware, however, that the ISA is not obliged, in all cases, to take the results of the earlier search into account.  According to PCT Rule 41.1, if the earlier search was carried out by the same ISA, or by the same Office as that which is acting as the ISA, the ISA shall, to the extent possible, take those results into account in carrying out the international search.  However, if the earlier search was carried out by another ISA, or by a national (or regional) Office other than that which is acting as the ISA, the ISA may decide whether or not it will take those results into account in carrying out the search.

If you would like to request that the results of an earlier search be taken into account by the ISA, you are required to:

(1)     Indicate your wish for the ISA to take into account the results of the earlier search in the request form.  In ePCT‑Filing this is easy to do by selecting the appropriate options under “International Search”;  there are equivalent features in PCT‑SAFE and other PCT online filing software.  Should you still be filing on paper, please refer to Box VII of the request form (“International Searching Authority”), in particular, the special check‑boxes under the Continuation of Box No. VII (“Use of Earlier Search and Classification Results”).  You must identify the earlier application in respect of which the earlier search was carried out by including the filing date, the application number and the country (or regional Office) of filing.  The request may, where applicable, contain a statement (under PCT Rule 4.12(ii)) to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that it is the same, or substantially the same, as that earlier application except that it is filed in a different language. 

(2)     Provide the receiving Office with a copy of the results of the earlier search for onward transmittal to the ISA.  This should be submitted together with the international application at the time of filing, and may be in the form of a search report, a list of cited prior art or an examination report, depending on the form in which they were presented by the Authority or Office concerned) (PCT Rule 12bis.1(a)).  However, you do not need to do so in the following cases:

  • where the earlier search was not carried out by the ISA indicated in Box No. VII of the request form but by the same Office as that which is acting as the receiving Office. In this case, you can, instead of submitting the copy of the results of the earlier search yourself, request the receiving Office to prepare and transmit a copy of the earlier search results directly to the ISA by marking the relevant check‑box provided in Continuation of Box No. VII (item 1) of the request form (note that such a request may be subject to the payment of a fee) (PCT Rule 12bis.1(b));
  • where the earlier search was carried out by the same Authority or Office as that which will act as the ISA (PCT Rule 12bis.1(c)); or
  • where a copy of the earlier search results is available to the receiving Office or the ISA in a form and manner acceptable to it, for example, from a digital library, and you indicated this fact as provided for in Continuation of Box No. VII (item 1) of the request form (PCT Rule 12bis.1(d)).

Note that if you would like the results of more than one earlier search to be taken into account, the information on each earlier search needs to be furnished.  ePCT‑Filing and other online filing software allows you to include information on additional earlier searches.  If filing on paper, the information on each earlier search will need to be included on a separate sheet and so you will have to duplicate the sheet containing the Continuation of Box No. VII for each extra earlier application and mark each page: “Continuation sheet of item 1 of Continuation of Box No. VII”. 

Additionally, in accordance with PCT Rule 12bis.2, if the ISA invites you to do so, you may, within a time limit indicated in the invitation, also be required to provide it with other documents related to the earlier search:

  • a copy of the earlier application (PCT Rule 12bis.2(a)(i));
  • where the earlier application is in a language which is not accepted by the ISA, a translation of the earlier application into a language which is accepted by that Authority (PCT Rule 12bis.2(a)(ii));
  • where the results of the earlier search are in a language which is not accepted by the ISA, a translation of those results into a language which is accepted by that Authority (PCT Rule 12bis.2(a)(iii)); and
  • a copy of any document cited in the results of the earlier search (PCT Rule 12bis.2(a)(iv)).

Such copies or translations may not be required, however, in the following situations:

  • where the earlier search was carried out by the same ISA, or by the same Office as that which is acting as the ISA, or where a copy or translation referred to in PCT Rule 12bis.2(a)(i) or (ii) is available to the ISA in a form and manner acceptable to it, for example, from a digital library, or in the form of the priority document (PCT Rule 12bis.2(b)); and
  • where the request contains a statement under PCT Rule 4.12(ii) to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language (PCT Rule 12bis.2(c)).

Where the ISA takes into account the results of an earlier search in carrying out the international search, this generally makes the search procedure more efficient by minimizing duplication of work.  In view of this, the ISA will normally refund or partially refund the search fee paid in connection with the international application, but only to the extent and under the conditions provided for in the applicable Agreement between the Office concerned and the International Bureau in relation to the functioning of the former as an ISA and International Preliminary Examining Authority under PCT Article 16(3)(b) (see PCT Rule 16.3))1.  You would therefore initially have to pay the full amount of the search fee, and wait for any refund to be paid to you once the ISA is in a position where it can establish the extent to which it has been able to make use of the earlier search results. 

Details of the conditions relating to such refunds are available in the above‑mentioned Agreements which are available at:

http://www.wipo.int/pct/en/access/isa_ipea_agreements.html

and can be also found in the corresponding Annex D of the PCT Applicant’s Guide at:

http://www.wipo.int/pct/en/appguide/

Note that, in addition to the situation described in this Practical Advice where the applicant requests that the results of the search on the earlier application be taken into account by the ISA when drawing up the international search report, under certain circumstances, the results of earlier searches may be transmitted to the ISA under PCT Rule 23bis.2(a) and taken into account by them when carrying out the international search even where the applicant has not expressly requested this under PCT Rule 4.12.  Further information on this situation will be dealt with in a separate Practical Advice.