PCT International Search and Preliminary Examination Guidelines
PART IV THE INTERNATIONAL SEARCH
Chapter 15 The International Search
15.52 The examiner carries out the international search, directing attention to any prior art likely to have bearing on novelty or inventive step. In addition, the examiner is encouraged to cite any prior art likely to be of assistance in determining sufficiency of description through the whole of the field claimed, per paragraphs 5.52 and 5.53 and the requirement that the claimed invention be fully supported by the description, per paragraphs 5.54 to 5.58. The examiner should also note any documents that may be of importance for other reasons, such as documents putting doubt upon the validity of any priority claimed, contributing to a better or more correct understanding of the claimed invention, or illustrating the technological background, but the examiner should not spend time in searching for these documents, nor in the consideration of such matters unless there is a special reason for doing so in a particular case. Documents which do not qualify as prior art because they post-date the claimed invention may nevertheless be cited to show a universal fact, such as characteristics or properties of a material, or a specific scientific fact, or to show the level of ordinary skill in the art.
15.53 The examiner should concentrate the search efforts on the search resources and strategies in which the probability of finding highly relevant documents is greatest. Where the examiner intends to cite any prior art likely to be of assistance in determining sufficiency of description, while conducting a search in a relevant area, the examiner should identify all documents, regardless of publication dates, which are highly relevant to the determination of novelty, inventive step, adequacy of support, and industrial applicability of the claimed invention. The examiner should always take account of the search results already obtained in considering whether to extend the search (that is, consult additional databases, broaden a search query, or include additional classification places).
15.54 The examiner typically conducts a search of the patent literature first. In certain art areas, such as those identified in the Search Guidance IPDL (see paragraph 5.43), a search of the non-patent literature may be necessary. However, regardless of the art being searched, if little or no relevant patent prior art is located, the examiner should consider broadening the resources searched to include databases containing non-patent literature.
15.55 Note that no special search should be made for features that are instantly and unquestionably demonstrable as being well known such that documentary evidence seems unnecessary. Preferably, however, a handbook or other document showing that a feature is generally known should be cited if practicable.
Security of Searching Using the Internet
15.56 When conducting a search on an international application, it may be necessary to make use of the Internet as a search tool. According to Rule 42.1, the international application must be searched within three months of receipt of the search copy by the International Searching Authority (or nine months after the priority date, if this expires later), and the receiving Office must usually forward the search copy to the International Searching Authority within one month of the international filing date (Rule 23.1(a)). This means that where the full priority year is claimed, the search will usually have to be performed at the very latest, within 16 months of the priority and consequently before international publication according to Article 21(2)(a). Where the international application has not yet been published at the time of the search, there exists the danger that search terms used in the search on non-secure Internet search engines or in databases available on the Internet may be observed by third parties. This may reveal details of the application before it is published, which is clearly undesirable. It should be stressed that it is common practice for Internet sites to keep records of queries, which result in their retrieval. This is particularly dangerous to the applicant, where the web site retrieved belongs to a competitor.
15.57 All web sites must be treated as non-secure unless the Authority has a commercial arrangement with a service provider in order to maintain confidentiality and a secure connection to that web site is used.
15.58 Consequently, extreme caution must be exercised when using the Internet as a search tool where (as in most cases) the international application has not yet been published. Where a relevant database is accessible via the Internet, but an alternative secure connection to the same database is accessible by the International Searching Authority, the secure connection must be used.
15.59 Where no secure connection to a database on the Internet is available to the International Searching Authority, the search may be conducted on the Internet using generalized search terms representing combinations of features that relate to the claimed invention, which have already been shown to exist in the state of the art.
15.60 If no documents of a more relevant nature for assessing novelty and inventive step are available, the examiner should consider citing the documents most relevant to the "technological background" of the invention which have been noted during the international search. Generally speaking, no special search effort should be undertaken for this purpose. However, the examiner may exercise discretion here in special cases. In exceptional cases, an international search may be completed without any relevant document having been found.
15.61 Reasons of economy dictate that the examiner use appropriate judgment to end the search when the probability of discovering further relevant prior art becomes very low in relation to the effort needed. The international search may also be stopped when one or more documents have been found clearly demonstrating lack of novelty in the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed, apart from features the application of which would not involve an inventive step and which are instantly and unquestionably demonstrable as being well known in the field under consideration such that documentary evidence seems to be unnecessary. Accordingly, the examiner should not stop the search if lack of novelty is demonstrated for only a limited number of claimed embodiments, even though this would lead to an objection of lack of novelty in the written opinion. The examiner may continue searching if there are any outstanding issues regarding the requirement for a clear and complete description of the claimed invention so as to enable a person skilled in the art to make and use the invention through the whole of the field claimed, the requirement that the claimed invention be fully supported by the description, or the requirement of industrial applicability and these issues could be clarified by additional prior art. See paragraph 15.52. Where the document is an Internet disclosure and doubts exist with regard to its publication date (such that it is not clear if it was published before the relevant date according to Rule 64.1), the examiner should continue the search as though that Internet disclosure had not been retrieved.
15.62 In recording the search history of the International Search, the examiner, lists the classification identification of the fields searched. If the IPC is not used for this purpose, the classification used is indicated. See paragraph 16.59. Depending on the policy of an International Searching Authority, the examiner may find it useful to record the search history in sufficient detail to allow examiners of national stage applications to fully interpret and rely upon the international search. This includes recording the details of any patent and non-patent literature searches as well as searches conducted on the Internet, including the key words and query operators, expressed as complete search queries to the extent practical, logic employed as the basis of a text search which resulted in the discovery of prior art, or the amino acid or nucleic acid sequence employed as the basis of a sequence search and the sequence alignment corresponding to prior art cited in the international search report that was obtained from the sequence search, or the chemical structure employed as the basis of a chemical structure search or details of other non-classification or non-text searches performed. See paragraphs 16.53 to 16.62 for additional guidance on recordation of the search history. The recorded search history should also include any query used in any of the foregoing searches. Provision of the actual search query from these search histories is generally easily accomplished by direct printing of the search query from the automated system used to construct and perform the search query from a given electronic search resource. Where an electronic database is used, the name of the database should be provided; the actual search queries used may also be useful information that, depending on the policy of the International Searching Authority, may be provided and made available to examiners of national stage applications if practical. Examiners are also encouraged to record the search history to include the details of searches used to determine compliance with the requirements of novelty, inventive step, industrial applicability, support, sufficiency, or other appropriate requirements. However, unless required at the option of the International Searching Authority, there is no requirement to include all details of patent and non-patent literature searches that were performed during the search process.