PCT International Search and Preliminary Examination Guidelines
PART IV THE INTERNATIONAL SEARCH
Chapter 15 The International Search
Preliminary Steps
15.37 Documents cited in the international application should be examined if they are cited as the starting point of the invention, or as showing the state of the art, or as alternative solutions to the problem concerned, or when they are necessary for a correct understanding of the application; however, when such citations clearly relate only to details not directly relevant to the claimed invention, they may be disregarded. If the international application cites a document that is not published or otherwise not accessible to the International Searching Authority and the document appears essential to a correct understanding of the invention to the extent that a meaningful international search would not be possible without knowledge of the content of that document, the International Searching Authority may postpone the search and request the applicant to provide first a copy of the document, if possible to do so within the time limits for the preparation of the international search report under the PCT. If no copy of the document is received, the International Searching Authority should first attempt to carry out the international search and then, if necessary, indicate that no meaningful search could be carried out in total or that the search needed to be restricted.
15.38 The examiner then considers the abstract (together with the title of the invention and the figure of the drawings to be published with the abstract) in relation to the requirements of the Regulations under the PCT (see paragraphs 16.41 to 16.42). Since the abstract should relate to the international application as filed, the examiner should consider it and determine its definitive contents no later than the completion of the international search report. Under certain circumstances (see paragraph 15.40), the examiner will have to establish the abstract and/or title, and/or select the figure to accompany the abstract for publication purposes. Such abstract is established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation.
15.39 The examiner, after having considered the abstract, if any, then classifies the international application according to at least the International Patent Classification (IPC) (see Chapter 7).
15.40 If publication of the international application is due before the international search has been established, the examiner must, upon request by the International Bureau, establish the classification of the application before the search is carried out; the examiner, at the same time, examines the abstract (together with the title and selected figure) for the purpose of publication. This examination of the abstract does not go beyond ensuring that it relates to the application concerned and that no conflict exists with the title of the invention or with the classification of the application. If at that time no abstract, title or figure selection has been provided by the applicant, the examiner does so. No abstract or title need be established where the International Searching Authority received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract and/or title. Subject to the above, if the international search report is published later than the date of publication of the international application, the abstract published with the application will be as filed and the definitive abstract will be published together with the international search report.
15.41 Having determined the subject of the invention, as outlined in paragraphs 15.21 to 15.23, it may be desirable for the examiner to prepare first a written search statement, defining the subject of his search as precisely as possible. In many instances, one or more of the claims may themselves serve this purpose, but they may have to be generalized in order to cover all aspects and embodiments of the invention. At this time, the considerations relating to the exclusion from international search (see Chapter 9) and to lack of unity of invention (see Chapter 10) should be borne in mind. The examiner may also have to restrict the international search in exceptional situations because no search at all is possible (see paragraphs 9.19, 9.26 to 9.30 and 9.40); but the examiner should not do this if it can be avoided (see paragraphs 9.17 and 9.19 to 9.25). Any restrictions of the international search on these grounds should be indicated in the international search report. If no search is made, a declaration should be issued under Article 17(2)(a).
15.42 The claims should be construed and searched having particular regard to the various types and forms of claims used, such as two-part claims and product-by-process claims (see paragraphs 15.21 to 15.33).