PCT Receiving Office Guidelines

Chapter VI: Article 14 Check and Other Formal Requirements

Use of Earlier Search and Classification Results

116A. Reference to Earlier Search. Where the applicant wishes the International Searching Authority to base the international search report wholly or in part on the results of an earlier international search, international-type search or national search carried out either by the same International Searching Authority, by another International Searching Authority or by a national (regional) Office, the corresponding indications must be made in Continuation of Box No. VII of the request (Rule 4.12).

116B. Where the applicant has requested the International Searching Authority to take into consideration the results of an earlier search, the receiving Office checks in general whether the applicant has either submitted the results of the earlier search together with the international application or else requested either the receiving Office or the International Searching Authority to retrieve them. This check by the receiving Office is however not necessary where the earlier search referred to was conducted either by the same International Searching Authority or by that same national (regional) Office acting as International Searching Authority since, under Rule 12bis.1(c), the submission of the results of the earlier search result is not required in such cases. If the applicant nevertheless checked any boxes in Continuation of Box No. VII, item 1, other than the one requesting the International Searching Authority to take into account the results of an earlier search(es) or the ones informing the receiving Office about the availability of the related documents to the International Searching Authority, the receiving Office should correct such indications ex officio. The receiving Office also checks whether the document(s) correspond to the indications made in Continuation of Box No. VII, item 1.2 of the request and whether the data indicated in Continuation of Box No. VII, item 1.2 is complete and appears to be correct. Furthermore, where the applicant has requested the receiving Office, under Rule 12bis.1(b), to prepare and transmit the results of the earlier search to the International Searching Authority by checking the related box (second main box) in Continuation of Box No. VII, item 1.2, the receiving Office checks whether the earlier search referred to has been completed and, where applicable, whether the fee referred to in Rule 12bis.1(b) has been paid. The applicant may also request the receiving Office to prepare and transmit the results of the earlier search even where that earlier search was not carried out by the receiving Office but where the earlier search results are otherwise available to it, by checking the related box (second main box) in Continuation of Box No. VII, item 1.2 (Rule 12bis.1(d)).

116C. Where the indications in Continuation of Box No. VII and the results of the earlier search submitted comply with the requirements mentioned in paragraph 116B, the receiving Office, as applicable, transmits, or prepares and transmits, or where they are available in a form and manner acceptable to that Office, retrieves and transmits, the results of the earlier search together with the search copy to the International Searching Authority. If not already included with the earlier search results, the receiving Office also transmits to the International Searching Authority, together with the search copy, a copy of the results of any classification effected by that Office, if already available (Rule 23bis.1(b)). Where the applicant has furnished any other document in connection with the request under Rule 12bis.1(a) together with the international application, the receiving Office either informs the applicant that such documents should be submitted directly to the International Searching Authority or, at its choice, transmits those documents to the International Searching Authority.

116D. Incomplete or Incorrect Indications or Missing or Inconsistent Earlier Search Results. Where the receiving Office has found that the indications made in item 1 of Continuation of Box No. VII are incomplete, do not correspond to the earlier search results submitted or seem otherwise incorrect, the receiving Office may proceed as outlined in paragraphs 161 to 165 ("Ex officio Corrections") or refer the applicant to Rule 91.1. The sending of the search copy to the International Searching Authority should, however, not be delayed by any such ongoing proceedings. Where any such incomplete or incorrect indications in item 1 of Continuation of Box No. VII cannot be resolved as an ex officio correction and/or under Rule 91.1, or where the applicant has failed to submit the results of the earlier search together with the international application under Rule 12bis.1(a) or where the receiving Office could not prepare and transmit a copy of the results of the earlier search under Rules 12bis.1(b) and 23bis.1(a), the receiving Office should inform the applicant (Form PCT/RO/132) that his request for the International Searching Authority to take into account the results of an earlier search could not be acted upon and/or be forwarded to the International Searching Authority. A copy of this notification should be sent to the International Bureau and the International Searching Authority. Where the indications in item 1 of Continuation of Box No. VII do not seem to correspond to the earlier search results submitted by the applicant under Rule 12bis.1(a), and even if such inconsistencies could not be resolved, the receiving Office should nevertheless transmit the earlier search results to the International Searching Authority.

116E. Transmission of the earlier search and classification results to the International Searching Authority by the receiving Office where the applicant did not make a request under Rule 4.12. Where the international application claims the priority of one or more earlier applications filed with the same Office as that which is acting as the receiving Office, that Office carried out an earlier search or classification in respect of the given priority claim(s), subject to Article 30(2)(a) and (3), the receiving Office shall transmit a copy of the results of the earlier search and any earlier classification to the International Searching Authority (Rule 23bis.2(a)). This obligation exists despite the applicant not having requested the International Searching Authority to take into consideration the results of an earlier search carried out either by the same or another International Searching Authority or by a national (regional) Office under Rule 4.12. Where the earlier search was carried out by the same International Searching Authority or by the same national (regional) Office as that which is acting as the International Searching Authority, or, where the receiving Office is aware that the earlier search or classification results are available to the International Searching Authority, then no transmittal of such results is required (Rule 23bis.2(d)). Exceptions apply for the receiving Offices DE, FI and SE where the applicant may request the receiving Office not to transmit the results of an earlier search to the International Searching Authority (Rule 23bis.2(b)); or for the receiving Offices AU, CH, CZ, FI, HU, IL, JP, NO, SE, SG and US where the national law applied by the receiving Office is not compatible with that obligation, thereby preventing the receiving Office from transmitting the results of any earlier search and classification unless such transmittal is authorized by the applicant (Rule 23bis.2(e)). Item 2.2 of Continuation of Box No. VII, in the request form allows applicants to request the non-transmittal of the results of earlier searches where Rule 23bis.2(b) applies. Item 2.3 of Continuation of Box No. VII in the request allows applicants to authorize the receiving Office to transmit such results where Rule 23bis.2(e) applies (including cases where Article 30(2)(a) and (3) apply). Where the applicant has checked the box in item 2.2 of Continuation of Box No. VII (Rule 23bis.2(b)) but the receiving Office has not notified the International Bureau under Rule 23bis.2(b) or has subsequently withdrawn such notification of incompatibility, the receiving Office should correct the indication ex officio. Where the applicant has checked the first and/or the second box in item 2.3 of Continuation of Box No. VII (Rule 23bis.2(e)) but either (i) the receiving Office has not notified the International Bureau under Rule 23bis.2(e) or has subsequently withdrawn such notification of incompatibility, or (ii) Article 30(2)(a) and (3) does not apply, the receiving Office should correct the indication ex officio.

116F. Informal Comments on Earlier Search Results. Where the applicant has indicated in the request that he submits informal comments on earlier search results together with the international application⁵, the receiving Office checks whether the applicant in fact submitted informal comments on earlier search results and transmits a copy of any such comments to the International Searching Authority and the International Bureau, together with the search copy and the record copy respectively.

116G. Missing Indications or Missing Informal Comments. Where the applicant has indicated in the request that he submits informal comments on earlier search results, but the receiving Office finds that these comments are missing, it may delete the indications made in the request ex officio. However, before making such a correction, the receiving Office should preferably contact the applicant and ask for clarification. Where the applicant has submitted informal comments on earlier search results together with the international application, but has not so indicated in the request, the receiving Office should nevertheless transmit a copy of such informal comments to the International Searching Authority and the International Bureau, together with the search copy and the record copy respectively.

116H. Submission of Informal Comments After the Filing of the International Application. Where the receiving Office receives informal comments on earlier search results subsequent to the filing of the international application, it should transmit a copy of such informal comments to the International Searching Authority and the International Bureau.