PCT International Search and Preliminary Examination Guidelines
PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
Chapter 11 Prior Art
Date of Disclosure
11.02 It should be noted that the definition of relevant prior art for purposes of international search report is different from the definition of relevant prior art for other purposes, including the written opinion established by the International Searching Authority because "relevant date" is defined differently for international search report purposes and for written opinion and international preliminary examination purposes.
Relevant Date for International Search Report Purposes
11.03 Rule 33.1 makes it clear that potentially relevant disclosures should be included in the international search report "provided that the making available to the public occurred prior to the international filing date." Rule 33.1 defines "relevant date" as the international filing date of the international application. This ensures that the international search report provides information which will be complete even if national authorities disagree with the examiner's opinion on the validity of the priority claim.
Relevant Date for Written Opinion and International Preliminary Examination Purposes
11.04 For the purposes of the written opinion and international preliminary examination, Rule 64.1 defines the relevant date as:
(i) subject to items (ii) and (iii), the international filing date of the international application under international preliminary examination (or, in conjunction with Rule 43bis.1(b), for which a written opinion is being established by the International Searching Authority); or
(ii) where the international application claims the priority of an earlier application and has an international filing date which is within the priority period (12 months from the filing date), the filing date of such earlier application, unless the International Authority considers that the priority claim is not valid;
(iii) where the international application claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the filing date of such earlier application, unless the International Authority considers that the priority claim is not valid for reasons other than the fact that the international application has an international filing date which is later than the date on which the priority period expired.
11.05 Clearly, when a potentially relevant document has been published between a claimed priority date of the application and its international filing date, the examiner is required to consider whether the claimed priority date is valid for the purposes of determining the "relevant date" of the claims in the international application. Note: If there is time left for the applicant to perfect, correct or add a priority claim but there is insufficient time for the examiner to make a proper determination as to whether the priority claim is valid, due to the need to issue a timely written opinion by the International Searching Authority, the "relevant date" for the purposes of the written opinion will be based on the claimed priority date. (See paragraphs 6.17 and 17.29(b)).