PCT International Search and Preliminary Examination Guidelines
PART IV THE INTERNATIONAL SEARCH
Chapter 16 International Search Report
Filling Out the International Search Report (Form PCT/ISA/210)
Earliest Priority Date
16.22 The earliest priority date is given in Box No. VI of the request Form (PCT/RO/101).
16.23 The first sheet of the international search report indicates the total number of sheets in the report. The correct number is entered, not including sheets which have not been filled in (blank sheets). The number of sheets only includes the number of sheets from Form PCT/ISA/210. It does not include the number of sheets from Form PCT/ISA/220 (Notification of transmittal of the international search report and the written opinion of the International Searching Authority, or the declaration) as this is a letter to the applicant/attorney only.
"It Is Also Accompanied by a Copy of Each Prior Art Document Cited in This Report" Box
16.24 If the International Searching Authority is sending out documents, this box is checked.
16.25 If the search has been conducted on the basis of a translation of the international application (see paragraph 15.14), this is indicated in item 1 of the first sheet of the international search report. This item also includes indications of whether a rectification of an obvious mistake has been taken into account, and a reference to any details relating to sequence listings used (see also paragraphs 15.15 to 15.17).
Nucleotide and/or Amino Acid Sequence Listings
16.26 Where the application discloses any nucleotide and/or amino acid sequence that has ten or more specifically defined nucleotides or four or more specifically defined amino acids, box 1.c of the first sheet is checked and Box No. I (appearing on "continuation of first sheet (1)") is used. Consequently, if the search was carried out on the basis of a sequence listing furnished, item 1 indicates whether it was filed as part of the international application or subsequently for the purposes of international search (in this case, also indicates whether it was accompanied by a statement that the sequence listing does not go beyond the disclosure in the international application as filed). If the applicant failed to furnish a sequence listing complying with the relevant standard in an accepted language and the search was carried out without the sequence listing, this fact is indicated in item 2. See paragraphs 4.15 and 15.12 for further details.
Reference to Main International Search Report
16.27 In the case of supplementary international search reports, item 1.d of the first sheet indicates whether the international search report was received in time to take it into account. If the international search report was not taken into account, it may be necessary to include an indication of any assumptions which were made as to the scope of the main international search in the Annex of Form PCT/SISA/501 concerning the scope of the supplementary international search (see paragraph 15.93).
Restriction of the Subject of the International Search
16.28 The report indicates whether the search was restricted or not for any of the reasons indicated below. If any such restrictions are applied, the claims in respect of which a search has not been carried out are identified and the reasons for this are indicated. The four categories where such restrictions may arise are:
(i) claims drawn to subject matter not required to be searched by the International Authority (see Chapter 9); in the case of supplementary international searches, see also paragraph 15.87)
(ii) claims in respect of which a meaningful search cannot be carried out (see Chapter 9);
(iii) multiple dependent claims which do not comply with Rule 6.4(a) (see paragraph 5.16);
(iv) lack of unity of invention (see Chapter 10).
The written opinion of the International Searching Authority will also report the relevant facts, for example, by way of a reference to the full explanation in the international search report.
16.29 Where claims are not searched for any of the reasons (i) to (iii), box 2 of the first sheet of the international search report is checked. In addition, Box No. II of the international search report (on "continuation of first sheet (2)") is completed, giving the details.
16.30 It should be noted that claims which rely, in respect of the technical features of the invention, on references to the description or drawings ("omnibus claims"; see paragraph 5.10) are searched and reported upon if they can be given a definite construction. However in the written opinion of the International Searching Authority and for the purposes of international preliminary examination, any breach of Rule 6.2(a) (no reference to the description or drawings except when absolutely necessary) may be reported in Box No. VII of the opinion or report.
16.31 If the national law of the Office acting as International Searching Authority permits multiple dependent claims which do not comply with Rule 6.4(a), such claims are included in the international search and no indication is made under item 3 of Box No. II.
16.32 Where lack of unity has been found (see Chapter 10), check box 3 of the first sheet of the international search report (Form PCT/ISA/210) is checked. In addition, Box No. III of the international search report (on "continuation of first sheet (2)") is completed, irrespective of whether an invitation to pay additional search fees has issued. The search report indicates the separate inventions present in the claims, whether additional search fees were requested and paid, and which claims were searched. It also indicates whether any additional search fees were accompanied by a protest. In the case of supplementary international search reports, there is no opportunity to pay additional fees and only a single invention is searched - see paragraphs 10.83 to 10.88 for the applicable process in this case.
Articles 3(2), 4(1)(iv); Rules 8, 44.2
16.33 The international application must contain a title and an abstract. The examiner conducting the main international search indicates approval or amendment of the title of the invention, the text of the abstract, and the selection of the figure that is to accompany the abstract in items 4 to 6 of the first sheet of the international search report. Box No. IV ("continuation of first sheet (3)") is used to record any new or amended abstract.
16.34 This procedure does not apply to supplementary international searches. Consequently paragraphs 16.35 to 16.51 do not apply to supplementary international search reports. For international-type searches, it is a matter for agreement between the International Searching Authority and the national Office on whose behalf the international search is conducted whether the title and abstract are reviewed by the International Authority. Form PCT/ISA/201 does not include specific space for such matters; if required, the appropriate information should be recorded on separate sheets.
16.35 According to Rule 4.3, the title must be short and precise (preferably from two to seven words in English or when translated into English). Furthermore, the title should clearly and concisely state the technical designation of the invention. In this regard the following should be taken into account:
(a) personal names or trade names or similar terms of a non-technical nature which do not serve to identify the invention should not be used;
(b) the abbreviation "etc.", being vague, should not be used and should be replaced by an indication of what it is intended to cover;
(c) titles such as "Method", "Apparatus", "Chemical Compounds" alone or similar vague titles do not clearly state the technical designation of the invention."
Article 14(1)(a)(iii), 14(1)(b); Rules 26, 37.1
16.36 Where the international application lacks a title, the relevant receiving Office should find this in its routine check and issue the invitation to correct accordingly. The receiving Office should notify the International Searching Authority that the invitation has been sent. The receiving Office may declare the international application withdrawn if no title is furnished to the receiving Office within the time limit fixed. However, the International Searching Authority proceeds with the international search unless and until it receives notification that the application is considered withdrawn.
16.37 The examiner is required to draft a title where:
(i) the applicant has not responded to the invitation from the receiving Office to provide a title within the time allowed, but the International Searching Authority has not received notification that the application is considered withdrawn;
(ii) no title was filed and the receiving Office omitted to invite the applicant to rectify the deficiency; or
(iii) the title is deficient because it does not comply with the requirements of Rule 4.3.
16.38 The examiner is not required to gain the approval of the applicant for the title and the establishment of the title by the examiner is by suitable completion of item 4 of the first sheet of the international search report.
- Abstract
Article 14(1)(a)(iv), (1)(b); Rules 26, 38.1
16.39 Where the international application lacks an abstract, the receiving Office should find this in their routine check and issue the invitation to correct accordingly. The receiving Office should notify the International Searching Authority that the invitation has been sent. The receiving Office may declare the international application withdrawn if no abstract is furnished to the receiving Office within the time limit fixed. However the International Searching Authority proceeds with the international search unless and until it receives notification that the application is considered withdrawn.
16.40 If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, it establishes an abstract itself. Where the international application contains an abstract or the applicant has furnished an abstract upon invitation by the receiving Office, the International Searching Authority will review the abstract for compliance with the requirements set forth in Rule 8. If it is found that the abstract does not comply with this Rule, the International Searching Authority amends the abstract to bring it into compliance.
16.41 When reviewing the abstract provided by the applicant, or establishing the text of the abstract where it is missing, the examiner should take into consideration that the abstract is merely for use as technical information and, in particular, must not be used for the purpose of interpreting the scope of the protection sought. The abstract should be drafted so that it constitutes an efficient instrument for the purpose of assisting the scientist, engineer or researcher in searching in the particular technical field and should in particular make it possible to assess whether there is a need to consult the international application itself. Guidelines for the preparation of abstracts can be found in WIPO Standard ST.12/A.
16.42 When considering the compliance of the abstract with Rule 8, or when establishing an abstract, the examiner should have particular regard to the following:
(a) The abstract should provide a summary of the disclosure as contained in the description, claims and drawings. The summary should indicate the technical field to which the invention pertains and be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution to that problem through the invention, and the principal use or uses of the invention. It should be drafted so as to serve as an efficient scanning tool for searching purposes in the art.
(b) The abstract should be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English). Lengthy abstracts and unnecessary words should be avoided. The abstract should not contain statements on the alleged merits or value of the claimed invention or on its speculative application. Phrases should not be used which can be implied, such as, "This disclosure concerns", "The invention defined by this disclosure" and "This invention relates to".
(c) The abstract should also be clear and easy to understand. Each main technical feature mentioned in the abstract and illustrated by a drawing should be followed by a reference sign, placed between parentheses. An abstract may be incomprehensible if the reference numerals used in the abstract do not correspond to those indicated in the relevant figures. However, an absence of reference numerals on the figures must be accepted as the examiner has no mechanism to initiate their inclusion.
16.43 It should be noted that providing a high quality abstract for the application is primarily the responsibility of the applicant. Nevertheless, when reviewing the abstract provided by the applicant, the examiner should amend the abstract to bring it into compliance with Rule 8, at least in the following circumstances:
(a) the abstract provided by the applicant is overly lengthy which cannot be justified by the nature of the invention;
(b) the abstract clearly contains statements on the alleged merits or value of the claimed invention or on its speculative application; or
(c) the abstract clearly fails to indicate the gist of the solution provided by the claimed invention to the technical problem described in the application.
16.44 The review of the abstract should be conducted in a way that does not impact the date of actual completion of the search. This review should be completed in parallel with other steps in the process.
16.45 The applicant can only comment on the abstract prepared by the examiner after it has been established in the international search report (see Form PCT/ISA/210, first sheet, item 5). This is the only invitation to comment issued to the applicant. It occurs either when no abstract has been filed or when the originally filed abstract does not comply with Rule 8. In this event the examiner establishes an appropriate abstract.
16.46 The applicant is allowed one month from the date of mailing of the international search report to submit to the International Searching Authority proposed modifications of the abstract, or, where the abstract has been established by the Authority, proposed modifications of and/or comments on that abstract. The examiner shall then consider the proposed modifications and/or comments and decide whether to modify the abstract.
16.47 If the International Searching Authority modifies the abstract established in the international search report, it notifies the International Bureau and the applicant using Form PCT/ISA/205. The examiner need not reply to the comments submitted by the applicant.
16.48 Where the international application contains drawings, the applicant should suggest a figure of the drawings to accompany the abstract for publication, which is indicated in Box No. IX of the request form (PCT/RO/101). If the applicant fails to do so, or if the figure suggested by the applicant is not the best one to characterize the invention, the examiner should select a figure of the drawings that best characterizes the invention to be published with the abstract.
16.49 Only one figure should normally be selected. The inclusion of more than one figure should only be considered in exceptional circumstances where necessary information cannot be otherwise conveyed. Furthermore, a figure containing significant amounts of text matter should generally be avoided as this can cause difficulty in reading and understanding when the figure is published with the abstract. Where none of the figures is considered useful for the understanding of the invention (even where the applicant has suggested a figure), no figure should be selected.
16.50 The indication of the figure that is to accompany the abstract when the latter is published is made under item 6 of the first sheet of the international search report. If the International Searching Authority determines that no figure is to be published with the abstract, it is so indicated. Where the application contains no drawings, none of the boxes are checked.
16.51 It is not recommended to select more than one figure; however, if it is necessary to do so then the wording of the Form should be changed to reflect the change from single case to plural case. For example, "figure" is changed to "figures", "is" to "are" and "No." to "Nos.". (These recommendations will be followed, mutatis mutandis, when the international search report is being prepared in a language, such as Japanese, that does not have distinction between singular and plural forms.)
Classification of Subject Matter
16.52 The International Searching Authority conducting the main international search assigns obligatory "invention information" International Patent Classification (IPC) symbols in accordance with the rules as set forth in the Guide to the IPC and in the IPC itself (using the edition of the IPC in force at the time) and records this information in Box A of the second sheet of the international search report. Non-obligatory IPC symbols, as defined in the Guide (such as the optional IPC indexing codes), do not need to be applied. The IPC Guide can be accessed via the WIPO web site at: www.wipo.int. See Chapter 7. No additional classification or reclassification is made during any supplementary international search.
16.53 The international search report lists the classification identification of the fields searched in Box B of the second sheet of the international search report. If the IPC is not used for this purpose, the classification used is indicated.
Minimum Documentation Searched
16.54 The International Searching Authority consults the minimum documentation specified in Rule 34 and considers other relevant databases or other search resources such as those listed in the Search Guidance IPDL. Where the IPC classification terms were searched, with or without restricting the search by using key words, the examiner should enter the associated IPC symbols on the international search report.
Documentation Searched Other Than Minimum Documentation
16.55 Where documentation other than the PCT minimum documentation is searched, the other documentation searched is identified in Box B of the second sheet of the international search report when practicable. This section is used for non-electronic databases searched, for example, paper or microfilm. It is used for example, for:
(a) Capri-enter "CAPRI" and the appropriate IPC code for the classification searched, for example, "CAPRI: IPC F16B 1/02".
(b) Search of patent specifications not forming part of the minimum documentation according to a classification system peculiar to the country issuing the patent - enter classification searched, for example, "AU Class 53.6"
(c) Search of patent specifications not forming part of the minimum documentation according to the IPC: - enter the IPC codes for the classification places searched, for example, "AU: IPC B65G 51/-"
16.56 In the case of a supplementary international search report, depending on the scope of service which is defined in the agreement between the International Bureau and the particular International Searching Authority, the examiner may assume that the PCT minimum documentation had been included in the main international search and that the main focus of the search might lie elsewhere, for example on disclosures in particular languages in which the International Authority specified for supplementary search specializes. An extra sheet may be included to make longer comments on the scope of the supplementary international search, including any assumptions which have been made on the scope of the main international search in the event that this was not received by the Authority in time to review it prior to carrying out the supplementary search (see paragraph 15.93).
16.57 Where the examiner chooses to cite a document listed in a third party observation which would not have been found in the documentation searched, he may indicate "Third party observation submitted [Date]" in the "documentation searched other than the minimum documentation" box in Form PCT/ISA/210.
16.58 Where an electronic database is used in carrying out the international search, the name of the database may be included in the search report. In addition, depending on the policy of an International Searching Authority, examiners may find it useful to others to indicate the exact search queries used to search the database in the report. If it is impractical to record the exact query or queries, then a summary of the query or queries should be included. See paragraph 16.59.
16.59 Where keywords (search terms) are used, it may be useful to include the keywords on the search report. If the number of keywords used is large, then a representative sample of the keywords could be used (for example, "Keywords: A, B, C, and similar terms"). However, 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. See paragraph 15.62.
16.60 Structure searches are not conveniently indicated on the search report. If a structure search was carried out this can be indicated by a statement such as "structure search carried out based on the quinoline nucleus in formula (I)".
16.61 Sequence searches should be dealt with in the same way as structure searches ("search of SEQ ID 1-5").
Examples:
DWPI & keywords: A, B, C, and similar terms (Note; DWPI includes WPAT, WPI, WPIL)
JAPIO & keywords: A, B, C, and similar terms
MEDLINE & keywords: A, B, C, and similar terms
DWPI IPC A01B 1/- & keywords: A, B, C
CA & WPIDS: IPC C07D 409/- & keywords: A, B, C
CA: Structure searched based on Formula (I)
ESP@CE keywords: A, B, C.
Genbank: Sequence search on nucleic acid sequence SEQ ID NO: 1.
Notes:
(a) Merely putting "keywords searched" without specifying the actual keywords used is not acceptable.
(b) There is no need to indicate the way the database was accessed, for example, there is no need to specify that ESP@CE was accessed via the Internet, or MEDLINE via STN.
(c) Where the search is conducted using a particularly relevant portion of a longer referenced nucleic acid or amino acid sequence, rather than the full length sequence referenced as filed for a particular SEQ ID NO of the sequence listing, the search examiner should indicate the region or regions of the full length reference sequence which encompassed the sequence searched. For example "search of SEQ ID NO: 1 for nucleotides 1150-1250 only."
16.62 Where the international search report is entirely or partly based on a previous search made for an application relating to a similar subject, the previous application number and the relevant search history consulted for this previous search is, where appropriate, identified as having been consulted for the international application in question, except in those instances where the details of an earlier search cannot be ascertained, or whenever it is impractical to record the full details of the earlier search. In the latter case, a summary of the earlier search should be included. Where the previous application has been published, this information is recorded in the international search report; if the previous application has not yet been published and, if the applicant is the same as that of the previous application, the information may be sent to the applicant informally when the international search report is transmitted. See paragraph 16.59.
Documents Considered to Be Relevant
16.63 The completion of Box C of the second sheet of the international search report can be considered as having three components. These are: the citation category; the citation of the document together with identification of relevant passages where appropriate; and the identification of relevant claim numbers. These three components are discussed separately in paragraphs 16.65 to 16.75, 16.78, 16.77 and 16.80, respectively, below.
16.64 Some general points to note are:
(a) Documents selected for citation should be the prior art that is closest to the applicant's invention. The duplication of teachings by way of citation of multiple documents showing the same inventive elements should be kept to a minimum (see paragraphs 15.67 and 15.69).
(b) When citing a document, the examiner should clearly indicate which portions and specific pages of the document are most relevant (see paragraph 15.69). Where the cited document is a patent document in a language other than English and another member of the same patent family is available in English, the examiner should preferably also indicate the corresponding part or passage of the English member of the patent family. In doing so, the examiner should not cite the English member as a separate document, but briefly mention it and indicate the relevant part or passage of that English member in the place following the indications of specific part or passage of the cited document. Alternatively, the indication of the corresponding part or passage of the English member of the patent family may be given in the patent family annex of the international search report (see paragraph 16.82A).
(c) In the case of supplementary international searches, the examiner need not include in the report the citation of any document cited in the international search report, except where the document needs to be cited in conjunction with other documents that were not cited in the international search report. Noting that the supplementary search is intended to supplement the main international search rather than to make a reassessment, inclusion of such citations and reassessment of their relevance should be avoided. Usually, the reason for including such a citation is where it is necessary to cite the document as category "Y" (see paragraph 16.68) to indicate a lack of inventive step when the disclosure of the document is taken together with that of a newly discovered citation, further to any lack of inventive step indicated in the main international search report. Nevertheless, recitation of a document may also be appropriate where the main international search report has clearly failed to recognize the extent of a document's relevance, for example because the first examiner was relying on an abstract or machine translation because he did not understand the original language of the document.
16.65 Documents which are cited are given a category indication by way of an alphabetic character, details of which are given in Administrative Instructions 505 and 507 and below. The categories for citations are also explained under the "Documents considered to be relevant" section of the report. A category should always be indicated for each document cited. Where needed, combinations of different categories are possible.
− Particularly relevant documents
16.66 Where a document cited in the international search report is particularly relevant, it is indicated by the letters "X" or "Y".
16.67 Category "X" is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or where a document is such that when considered in light of common general knowledge, a claimed invention cannot be considered to involve an inventive step.
16.68 Category "Y" is applicable where a document is such that a claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other documents of the same category, such combination being obvious to a person skilled in the art.
− Documents defining the state of the art not prejudicing novelty or inventive step
16.69 Where a document cited in the International search report represents state of the art not prejudicial to the novelty or inventive step of the claimed invention, it is indicated by the letter "A".
− Documents which refer to a non-written disclosure
16.70 Where a document cited in the International search report refers to a non-written disclosure, the letter "O" is entered. Examples of such disclosures include conference proceedings. The document category "O" is always accompanied by a symbol indicating the relevance of the document according to paragraphs 16.67 to 16.69, for example O,X, O,Y or O,A.
16.71 Documents published on dates falling between the date of filing of the application being examined and the date of priority claimed, or the earliest priority if there is more than one (see Article 2(xi)(b)), are denoted by the letter "P". The letter "P" is also given to a document published on the very day of the earliest date of priority of the patent application under consideration. The document category "P" is always accompanied by a symbol indicating the relevance of the document, for example P,X, P,Y or P,A.
− Documents relating to the theory or principle underlying the invention
16.72 Where any document cited in the search report is a document whose publication date occurred after the filing date or the priority date of the international application and is not in conflict with the said application, but which may be useful for a better understanding of the principle or theory underlying the invention, or is cited to show that the reasoning or the facts underlying the invention are incorrect, it is indicated by the letter "T".
− Potentially conflicting patent documents
16.73 Any patent document bearing a filing or priority date earlier than the filing date of the application searched but published on or after the international filing date and the content of which would constitute prior art relevant to novelty (Article 33(2)) is indicated by the letter "E" (see Section 507(b) and Rule 33.1(c)). An exception is made for patent documents based on the priority under consideration. For the benefit of Contracting States whose national laws allow the combination of documents that are indicated by the letter "E" to be cited for inventive step purposes, category "E" may be accompanied by one of the categories "X", "Y", or "A".
− Documents cited in the application
16.74 When the search report cites documents already mentioned in the description of the patent application for which the search is carried out, such documents are denoted by the letter "D". The document category "D" is always accompanied by a symbol indicating the relevance of the document, for example D,X, D,Y or D,A.
− Documents cited for other reasons
16.75 Where in the search report any document is cited for reasons other than those referred to in the foregoing paragraphs (in particular as evidence), for example:
(a) a document which may throw doubt on a priority claim (Article 4(C)(4) of the Paris Convention), or
(b) a document cited to establish the publication date of another citation
the document is indicated by the letter "L". Brief reasons for citing the document should be given. Documents of this type need not be indicated as relevant to any particular claims. However, where the evidence which they provide relates only to certain claims (for example the "L" document cited in the search report may invalidate the priority in respect of certain claims and not others), then the citation of the document should refer to those claims.
16.76 In certain cases the invention may have been disclosed, before the relevant date for the purposes of the PCT, in such a way that it is not considered to form part of the state of the art in accordance with the national law of one or more designated Offices. The applicant may make a declaration of the existence of such excluded state of the art in the request Form according to Rule 4.17(v). However these exemptions do not necessarily apply in all designated Contracting States and additionally, according to Rule 51bis.1(a)(v), the applicant may still have to file the correct documents in the national/regional phase at the designated Office in question in order to qualify for the exemption. Consequently such documents must be cited on the international search report with the appropriate category indicated above and may also be considered in the written opinion of the International Searching Authority and during international preliminary examination.
Relationship Between Documents and Claims
16.77 Each citation should include a reference to the claims to which it relates. If necessary, various relevant parts of the document cited should each be related to the claims in like manner (with the exception of "L" documents, see paragraph 16.80 and "A" documents, see paragraph 16.73). It is also possible for the same document to represent a different category with respect to different claims. For example:
X WO9001867 A (WIDEGREN LARS (SE)) 1
8 March 1990 (1990-03-08)
Y * figure 1 * 2-5
A * figure 2 * 6-10
The above example means that Figures 1 and 2 of the cited document disclose subject matter which prejudices the novelty or inventive step of claim 1, which prejudices the inventive step of claims 2-5 when combined with another document cited in the search report, and which represents non-prejudicial state of the art for the subject matter of claims 6-10.
Section 503; WIPO Standard ST.14
16.78 Identification of any document should be made according to WIPO Standard ST.14. In the case of patent documents, this means the inclusion of:
(i) the industrial property office that issued the document, by the two-letter code (WIPO Standard ST.3);
(ii) the number of the document as given to it by the industrial property office that issued it (for Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document);
(iii) the kind of document, by the appropriate symbols as indicated on the document under WIPO Standard ST.16 or, if not indicated on that document, as provided in that Standard, if possible;
(iv) the name of the patentee or applicant (in capital letters and, where appropriate, abbreviated);
(v) the date of publication of the cited patent document (using four digits for a year designation according to the Gregorian Calendar) or, in case of a corrected patent document, the date of issuance of the corrected patent document as referred to under INID code (48) of WIPO Standard ST.9 and, if provided on the document, the supplementary correction code as referred to under INID code (15);
(vi) indications of the location of the most relevant cited material within the document, preferably by means of paragraph numbers or page and line numbers; where multiple renderings of the same document are published (for example, PDF and HTML); it may also be necessary to indicate which version of the document is being referred to (WIPO Standard ST.14 also provides recommendations for best modes of identifying passages in cases where paragraph, page and line numbers are not well defined).
16.78A Identification of an article published in a periodical or other serial publication should be made according to WIPO Standard ST.14 by the inclusion of the following:
(i) the name of the author (in capital letters). In case of multiple authors, preferably, all names should be entered, alternatively the name of the first author should be entered followed by "et al.";
(ii) the title of the article (where appropriate, abbreviated or truncated) in the periodical or other serial publication;
(iii) the title of the periodical or other serial publication (abbreviations conforming to generally recognized international practice may be used);
(iv) the location within the periodical or other serial publication by indicating date of issue by four digits for the year designation, issue designation, pagination of the article (where year, month and day are available, the provisions of WIPO Standard ST.2 should be applied);
(v) if available, the standard identifier and number assigned to the item, e.g., ISBN 2-7654-0537-9, ISSN 1045-1064. It should be noted that these numbers may differ for the same title in the printed and electronic versions;
(vi) where applicable, the relevant passages of the article and/or the relevant figures of the drawings.
16.78B For non-patent literature citations in a language other than English, the original (non-English) reference should be included, wherever technically possible, followed by an official translation into English, if one exists and it is available, in round brackets. An "official translation" here means an existing rendering of the original language name or title in English coming from the same source as the citation and useful for identifying and retrieving the relevant document. In case an official translation into English is not available for some elements of the original citation, an informal translation into English for those elements may optionally be provided after all elements of any official translation. Any informal translation should be preceded by the text "non-official translation".
16.78C Examples of identifying documents cited in the international search report in the situations described in the preceding paragraphs and in other situations are found in WIPO Standard ST.14.
16.79 In the case of supplementary international search reports, an explanation may also be included with regard to why the citation is considered relevant. This aims to assist the reader in establishing the reason for which a document was cited, noting especially that many citations in supplementary international search reports may be in languages which might not be fully comprehended by the applicant or by designated and elected Offices. If this explanation can be made in a few words, such that it will not make the list of citations difficult to read, it should be included together with the main citation. If a longer explanation appears necessary, a separate sheet may be added for the purpose.
16.80 For "A" citations it is not necessary to indicate the relevant claims unless there is good reason to do so; for example where there is a clear lack of unity a priori and the citation is relevant only to a particular claim or group of claims or when the claims meet the criteria of novelty, inventive step, and industrial applicability under Article 33(2) to (4) and the "A" category citations represent the most relevant prior art.
16.81 The box on the second sheet of Form PCT/ISA/210 entitled "Further documents are listed in the continuation of Box C" is checked if more documents are cited than will fit in the space provided in Box C and therefore a continuation sheet is used.
16.82 The search report is published with the specification and distributed worldwide. To enable any reader in any country to consider the citation in the most convenient document/language, the known family members of each citation are normally listed in the patent family annex of the international search report. The box on the second sheet of Form PCT/ISA/210 entitled "See patent family annex" is checked if a family member listing is included with the report. Where INPADOC is used to check the family member, it should be noted that:
(a) INPADOC does not provide family listings for documents published prior to 1968;
(b) If INPADOC indicates there are no family members for a cited document then indicate this by entering the word "NONE" where the family members would appear. This indicates to the applicant that a search for family members has been carried out and there was a nil result; and
(c) If INPADOC indicates that none of the citations has a family member the "See patent family annex" box should still be checked and the practice indicated in the paragraph (b) above should be followed for all citations.
16.82A The patent family annex may also be used to indicate the corresponding part or passage of the English member of a patent family if the cited patent document is in a language other than English (see paragraph 15.69).
Article 19; Rules 43.1, 43.2, 46.1
16.83 The identification of the International Searching Authority which established the international search report and the date on which the report was drawn up are indicated at the bottom of the second sheet of the international search report. This date should be that of the drafting of the report by the examiner who carried out the search. In addition to the date of actual completion, that is, the date on which the report was drawn up, of the international search, the international search report also indicates the date on which it was mailed to the applicant, which is important for the computation of the time limit for filing amendments to the claims under Article 19.
16.84 Where the examiner is an authorized officer his name will appear on the search report. Where the examiner is not an authorized officer the name of the responsible examiner who will be supervising the report should be entered as the authorized officer. Where the examiner is an authorized officer then the date of actual completion will be the date of completion of the search report and he enters it on the search report. Where the examiner is not an authorized officer, the "date of completion" should be entered after the responsible officer has supervised the report and corrections, if any, have been made.
16.85 The report should be mailed within three months of receipt of the search copy or within nine months from the priority date, whichever is later.