PCT International Search and Preliminary Examination Guidelines
PART IV THE INTERNATIONAL SEARCH
Chapter 15 The International Search
Orientation and Subject of the International Search
Analysis of the Claims
15.21 When taking up an international application to be searched, the examiner first considers the application in order to determine the subject of the claimed invention, taking account of the guidance given below and in Chapter 5. For this purpose, the examiner makes a critical analysis of the claims in the light of the description and drawings.
15.22 The international search is directed to the invention defined by the claims, as interpreted with due regard to the description and drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed. See Chapter 5 for the relationship between the disclosure and the claims.
15.23 Since the applicant is not permitted to amend the claims before receiving the international search report, except to rectify obvious mistakes or to correct formal matters which are contrary to the PCT and are called to the applicant’s attention by the receiving Office, the international search is directed to the claims as filed. See paragraph 15.25. This is subject to the exception where the rectification of an obvious mistake in the claims is authorized by the International Searching Authority according to Rules 91.1(b)(ii), (c) and (d) before it has begun to draw up the international search report, in which case the rectified claims are taken into account in the search and the international search report shall so indicate (Rule 43.6bis) (see paragraphs 8.18 and 8.19).
Inventions for Which No Fees Have Been Paid
15.24 When the claims of the international application do not relate to one invention only, nor to a group of inventions so linked as to form a single general inventive concept, the applicant may be invited (with Form PCT/ISA/206, see paragraphs 10.60 to 10.65) to pay additional search fees. If the applicant does not pay any additional search fees in response to the invitation, the international search will, except in the circumstances referred to in paragraphs 10.64 and 10.65, be restricted to those parts that relate to the invention, or so linked group of inventions, first mentioned in the claims. If additional fees have been paid within the prescribed time limit, those parts that relate to the inventions covered thereby must also be searched (see Chapter 10).
15.25 In principle, and insofar as possible and reasonable, the international search should cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended. For example, where an international application relating to an electric circuit contains one or more claims only directed to the function and manner of operation, and the description and drawings include an example with a detailed non-trivial transistor circuit, the search must necessarily include this circuit. Nevertheless, reasons of economy may make certain restrictions of the international search necessary, for example, when there is a broad claim and many examples and it is not possible to foresee which will be the subject of amended claims.
15.26 No special search effort need be made for searching unduly wide or speculative claims, beyond the extent to which they are supported by the description. For example, if in an international application relating to and describing in detail an automatic telephone exchange, the claims are directed to an automatic communication switching center, the international search should not be extended to automatic telegraph exchanges, data switching centers, etc., merely because of the broad wording of the claim, except if it is probable that such an extended search could produce a document on the basis of which a reasonable objection as regards lack of novelty or inventive step could be established. Likewise, if a claim is directed to a process for manufacturing an “impedance element” but the description and drawings, relate only to the manufacture of a resistor element, and give no indication as to how other types of impedance elements could be manufactured by the process of the claimed invention, extension of the search to embrace, say, manufacture of capacitors, would not normally be justified. However, if a meaningful search based on a claim that is not supported by the description can be carried out without much increase in effort, the search should be extended to cover the claimed subject matter that is not supported by the description if the scope of the claim is not unduly wide.
15.27 The international search carried out for the independent claim(s) must also take into consideration the subject matter of all dependent claims. Dependent claims are interpreted as being restricted by all features of the claim(s) upon which they depend. Therefore, where the subject matter of the independent claim is novel, that of the dependent claims is also considered novel for the purpose of international search. When the novelty and inventive step of the independent claim are apparent as a result of the international search, there is no need to make a further search in respect of the subject matter of the dependent claims as such.
15.28 However, where the novelty or inventive step of the main claim is questioned, it may be necessary for assessing inventive step of a dependent claim to establish whether the features of the dependent claim as such are novel by expanding the field of search. No special search should be made for features that are so well known that documentary evidence seems to be unnecessary; however, if a handbook or other document showing that a feature is generally known can be found rapidly, it should be cited. When the dependent claim adds a further feature (rather than providing more detail of an element figuring already in the main claim), the dependent claim in effect constitutes a combination claim and should be dealt with accordingly (see paragraph 15.31).