PCT International Search and Preliminary Examination Guidelines
as in force from July 1, 2022
TABLE OF CONTENTS
PART I: INTRODUCTION AND OVERVIEW
Chapter 1 Introduction
- Purpose and Status of These Guidelines
- Arrangement and Terminology of These Guidelines 1.05 – 1.08
- Overview of International Application Process 1.09 – 1.11
- The International Authorities
- Flowchart of Typical International Application Processing
Chapter 2 Overview of the International Search Stage
- Objectives 2.01 – 2.04
- Preliminary Matters 2.05 – 2.09
- Receipt of Search Copy from Receiving Office 2.05 – 2.07
- Acknowledgement and Allocation by the International Searching Authority 2.08 – 2.09
- The International Search Process 2.10 – 2.12
- Time Limit for Establishing International Search Report 2.13
- Transmittal of the International Search Report, Written Opinion, etc. 2.14
- Options Open to the Applicant 2.15
- Further Processing of the International Search Report and Written Opinion
- Publication of the Search Report and Making Available of the Written Opinion of the International Searching Authority 2.17 – 2.18
- Copies of Documents Cited in Search Report 2.19
- Supplementary International Searches 2.20 – 2.21
- International-Type Searches 2.22
Chapter 3 Overview of the International Preliminary Examination Stage
- Introduction 3.01 – 3.06
- Preliminary Matters
- Filing of Demand 3.07 – 3.08
- Checking of Demand and Notification of Receipt 3.09 – 3.12
- Commencement of International Preliminary Examination 3.13 – 3.15
- The International Preliminary Examination Process 3.16 – 3.22
- Basis of the Written Opinion or International Preliminary Examination Report 3.20 – 3.21
- Further Consideration 3.22
- Nature of the International Preliminary Examination Report 3.23
- Time Limit for Establishing the International Preliminary Examination Report 3.24
- Transmittal of the International Preliminary Examination Report and Related Documents 3.25
- Further Processing of the International Preliminary Examination Report
- Confidential Treatment 3.26
- Making Available of the International Preliminary Examination Report and Related Documents 3.27
- Transmission of the International Preliminary Examination Report to Elected Offices 3.28
- Translation of International Preliminary Examination Report 3.29
- Copies of Documents Cited in International Preliminary Examination Report 3.30
PART II THE INTERNATIONAL APPLICATION
Chapter 4 Content of the International Application (Other Than the Claims)
- General 4.01
- Description
- Technical Field 4.04
- Background Art 4.05
- Disclosure of Invention 4.06 – 4.07
- Brief Description of Drawings 4.08 – 4.09
- Best Mode for Carrying Out the Invention 4.10
- Structure and Function 4.11
- Sufficiency 4.12 – 4.13
- Industrial Applicability 4.14
- Nucleotide and/or Amino Acid Sequence Listings 4.15
- Deposit of Biological Material 4.16 - 4.18
- References to Deposited Microorganisms or Other Biological Material as Part of the Description 4.19
- Requirements as to the Language of Sheets Containing References to Deposited Microorganisms or Other Biological Material 4.20
- General 4.21 – 4.27
- Drawings 4.28
- Expressions, Etc., Not to Be Used 4.29 – 4.32
Appendix to Chapter 4
Chapter 5 Claims
- General 5.01 – 5.03
- Form and Content of Claims 5.04 – 5.11
- Kinds of Claim
- Categories 5.12 – 5.14
- Independent and Dependent Claims 5.15 – 5.19
- Interpretation of Claims
- “Use” Claims 5.21
- Preamble 5.22 – 5.23
- Open and Closed Claims 5.24
- “Means-Plus-Function” Claims 5.25
- “Product-by-Process” Claims 5.26 – 5.27
- Product and Apparatus Limitations in Process Claims 5.28
- Inconsistency Between Claims and Description 5.29 – 5.30
- Clarity
- Clarity of Relative Terms 5.34 – 5.38
- Clarity of Other Terms 5.39 – 5.41
- Conciseness, Number of Claims 5.42
- Support in Description 5.43 – 5.44
- Clear and Complete Disclosure of Claimed Invention
- Sufficiency Commensurate with the Claims 5.52 – 5.53
- Relationship of Claims to Disclosure 5.54 – 5.58
Appendix to Chapter 5
Chapter 6 Priority
- The Right to Priority 6.01 – 6.05
- Determining Priority Dates 6.06 – 6.10
- Claiming Priority 6.11 – 6.17
Chapter 7 Classification of International Applications
- Definition 7.01
- Definitive Classification of the International Application
- Amended Classification in the Case of Later Published International Search Report 7.05
- Classification When Scope Is Obscure 7.06
- Lack of Unity of Invention 7.07
- Classification of International Applications Excluded from International Search 7.08
Chapter 8 Rule 91 – Obvious Mistakes in Documents
- Rule 91 – Obvious Mistakes in Documents 8.01 – 8.07
- Mistakes that Cannot be Rectified Under Rule 91
- Transmittal to Another Authority of a Request for Rectification 8.11 – 8.12
- Invitation to the Applicant to Request Rectification 8.13
- Submission and Processing of a Request for Rectification 8.14 – 8.17
- Authorization and Effect of Rectifications 8.18 – 8.23
- Effective Date of Rectification 8.24
PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
Chapter 9 Exclusions from, and Limitations of, International Search and International Preliminary Examination
- Introduction 9.01
- Excluded Subject Matter
- Scientific and Mathematical Theories 9.05
- Plant or Animal Varieties or Essentially Biological Processes for the Production of Plants and Animals, Other Than Microbiological Processes 9.06
- Schemes, Rules or Methods of Doing Business, Performing Purely Mental Acts or Playing Games 9.07
- Methods for Treatment of the Human or Animal Body by Surgery or Therapy; Diagnostic Methods Practiced on the Human or Animal Body 9.08 – 9.10
- Mere Presentations of Information 9.11 – 9.14
- Computer Programs, to the Extent That the Authority is not Equipped to Carry Out Search or Preliminary Examination on Such Programs 9.15
- General Considerations in Assessing the Nature of the Subject Matter
- Form of Claims 9.16
- Excluded Matter in Only Some Claims 9.17
- Cases of Doubt 9.18
- Extent of Search and Preliminary Examination in Certain Situations
- Examples Where Search or Preliminary Examination Possible, with an Indication in the Written Opinion 9.20 – 9.25
- Examples of Exceptional Situations Where No Search at All is Possible for All or Some of the Claims 9.26 – 9.30
- Non-Prior-Art Issues 9.31 – 9.32
- Industrial Applicability 9.33Informal Clarification 9.34 – 9.35
- Unclear Claims 9.36 – 9.37
- Perpetual Motion 9.38
- Sequence Listings 9.39
- Declaration of Non-Establishment of International Search Report 9.40
- Multiple Dependent Claims 9.41 – 9.41B
- Supplementary International Search 9.42
Appendix to Chapter 9
- Excluded Subject Matter Regarding Schemes, Rules or Methods of Doing Business, Performing Purely Mental Acts or Playing Games
- Excluded Subject Matter Pertaining to Programs for Computers
Chapter 10 Unity of Invention
- Determination of Unity of Invention 10.01 – 10.10
- Illustrations of Particular Situations
- Combinations of Different Categories of Claims 10.12 – 10.16
- “Markush Practice” 10.17
- Intermediate and Final Products 10.18 – 10.19
- Examples Concerning Unity of Invention
- Different Aspects of the Invention Claimed (Method, Apparatus, Product etc.) 10.21 – 10.36
- Unity of Invention Exists – Examples 1 to 14 10.21 – 10.34
- No Unity of Invention (a priori) – Examples 15 to 16 10.35 – 10.36
- Claims having Overlapping Features but Progressively Adding New Features
- Complementary Forms of the Invention (e.g. Receiver and Transmitter)
- Alternative Forms of an Aspect of the Invention (Varying Solutions to the Same Problem)
- Unity of Invention Exists – Examples 24 to 30 10.44 – 10.50
- No Unity of Invention (a priori) – Examples 31 to 39 10.51 – 10.59
- Dependent Claims Adding Substantial Features Which Diverge from the Inventive Concept (Lack of Unity a posteriori) – Example 40 10.59A
- Lack of Unity of Invention in a Single Independent Claim – Examples 41 and 42 10.59B – 10.59C
- Complex Claim Sets with Overlapping Features – Example 43 10.59D
- Examples of use of the minimum reasoning 10.59E – 10.59J
- Process at the International Search Stage
- Invitation to Pay Additional Fees 10.60 – 10.63
- Search of Additional Inventions Without Payment of Fees 10.64 – 10.65
- Protest Procedure 10.66 – 10.70
- Process at the International Preliminary Examination Stage
- Protest Procedure 10.78 – 10.82
- Process at the Supplementary International Search Stage 10.83 – 10.88
- Review of Opinion 10.87 – 10.88
Chapter 11 Prior Art
- Prior Art Generally 11.01
- Date of Disclosure
- Documents Casting Doubt on Priority Claim Made in the International Application 11.06
- Documents Not Within the Prior Art Which May Nevertheless Be Relevant
- Later Published Patent Applications (for Purposes of the International Search Report) 11.07
- Later Published Patent Applications (for Purposes of International Preliminary Examination) 11.08 – 11.09
- Copending Applications, Including Those Filed on the Same Date 11.10
- Documents Relevant to Understanding the Invention 11.11
- Form of Disclosure
- Availability of Written Disclosures to the Public 11.12
- Disclosure on the Internet 11.13
- Disclosure Made on the Web Sites of Trusted Publishers 11.14 – 11.15
- Disclosure Made on Web Sites of Unknown Reliability 11.16 – 11.20
- Differences Between Patent and Non-Patent Citations 11.21
- Documents Reproducing an Earlier Oral Description 11.22
- Difficulty in Establishing Date of a Document 11.23
- Relevant Date in Relation to Individual Claims or Parts of Claims 11.24 – 11.26
Chapter 12 Novelty
- Meaning of Novelty 12.01 – 12.02
- Considerations in Determining Novelty
- Methodology 12.03
- Inherent or Implicit Disclosure 12.04
- Interpretation of Claims 12.05
- Combining Documents 12.06
- Alternatives 12.07
- Generic vs. Specific Disclosures 12.08 – 12.09
- Ranges 12.10
Appendix to Chapter 12
Chapter 13 Inventive step
- Meaning of Inventive Step 13.01 – 13.02
- Considerations in Determining Inventive Step
- What Is “Obvious”? 13.03
- Light of Later Knowledge 13.04
- Invention as a Whole; Combination of Known or Obvious Elements 13.05 – 13.07
- Assessing the Contribution Against the Prior Art 13.08 – 13.10
- The “Person Skilled in the Art” 13.11
- Combining Teachings 13.12 – 13.13
- Examples 13.14
- Other considerations
- Ex Post Facto Analysis 13.15
- Technical Value, Long-Felt Needs 13.16 – 13.17
- Commercial Success 13.18
- Dependent Claims 13.19
Appendix to Chapter 13
- Problem-Solution Approach
- Examples in which a single document calls into question the inventive step
Chapter 14 Industrial Applicability
- Meaning of Industrial Applicability 14.01 – 14.03
- Methodology 14.04 – 14.06
Appendix to Chapter 14
PART IV THE INTERNATIONAL SEARCH
Chapter 15 The International Search
- Objective of the International Search and Supplementary International Search 15.01 – 15.07
- Non-Written Disclosures
- The Examiner 15.08 – 15.09
- Basis of the Search 15.10 – 15.17C
- Scope of the International Search 15.18 – 15.20
- Orientation and Subject of the International Search
- Analysis of the Claims 15.21 – 15.23
- Inventions for Which No Fees Have Been Paid 15.24
- Full Coverage 15.25
- Speculative Claims 15.26
- Dependent Claims 15.27 – 15.28
- Search of Particular Claim Types and Features
- Combination of Elements 15.31
- Different Categories of Claim 15.32
- Cases Where No Meaningful Search Is Possible
- Information Meeting the Criteria of Rule 48.2(l) 15.36A
- Access to the File held by the International Searching Authority 15.36B
- Search Strategy
- Preliminary Steps 15.37
- Abstract and Title 15.38
- Classification 15.39
- Publication Prior to Search 15.40
- Search Statement 15.41 – 15.42
- Field of Search
- Analogous Fields 15.48 – 15.51
- Conducting the Search
- Security of Searching Using the Internet 15.56 – 15.59
- No Documents Found 15.60
- Stopping Search 15.61
- Recording the Search 15.62
- Evaluating the Prior Art
- Matters of Doubt Regarding Relevant Prior Art 15.64 – 15.65
- Excluded Subject Matter 15.66
- Selection of Citations and Identifying Most Relevant Portions 15.67 – 15.72
- Procedure After Searching
- Supplementary International Search
- Requesting Supplementary International Search 15.78 – 15.79
- Receipt of the Request for Supplementary International Search by the Authority 15.80 – 15.81
- Start of Supplementary International Search 15.82 – 15.83
- Withdrawal of the Request for Supplementary International Search 15.84
- Basis of the Supplementary International Search 15.85 – 15.86
- Claims Excluded From Supplementary International Search 15.87 – 15.88
- Expressions, Etc., Not to Be Used 15.88A
- Information Meeting the Criteria of Rule 48.2(l) 15.88B
- Access to the File held by the Authority Specified for Supplementary Search
- Unity of Invention 15.89 – 15.92
- Extent of Search 15.93
- Establishment of the Supplementary International Search Report 15.94 – 15.96
- Copies of Documents 15.97
Chapter 16 International Search Report
- General
- Time Limit for Establishing the International Search Report 16.05
- Completing the International Search Report
- Form and Language of the International Search Report
- International Search Report Form 16.08 – 16.10
- Language of Search Report 16.11
- Sheets Included in the Publication 16.12 – 16.13
- Filling Out the Notification of Transmittal of the International Search Report or the Declaration, and the Written Opinion of the International Searching Authority (Form PCT/ISA/220)
- Address for Correspondence 16.14
- Applicant’s or Agent’s File Reference 16.15
- International Application Number 16.16
- International Filing Date 16.17
- Applicant 16.18
- Cases Where No, or Limited, Search Report is Established 16.19 – 16.21
- Earliest Priority Date 16.22
- Total Number of Sheets 16.23
- “It Is Also Accompanied by a Copy of Each Prior Art Document Cited in This Report” Box 16.24
- Basis of the Report 16.25
- Nucleotide and/or Amino Acid Sequence Listings and Related Tables 16.26
- Reference to Main International Search Report 16.27
- Restriction of the Subject of the International Search 16.28 – 16.32
- Title, Abstract and Figure 16.33 – 16.51
- Filling Out the International Search Report (Form PCT/ISA/210) 16.22 – 16.85
—Title 16.35 – 16.38
—Abstract 16.39 – 16.47
—Drawings to Be Published 16.48 – 16.51 - Classification of Subject Matter 16.52
- Fields Searched 16.53
- Minimum Documentation Searched 16.54
- Documentation Searched Other Than Minimum Documentation 16.55 – 16.57
- Electronic Database Consulted 16.58 – 16.61
- Previous Search 16.62
- Documents Considered to Be Relevant 16.63 – 16.64
- Citation Category 16.65 – 16.76
—Particularly relevant documents 16.66 – 16.68
—Documents defining the state of the art not prejudicing novelty or inventive step 16.69
—Documents which refer to a non-written disclosure 16.70
—Intermediate documents 16.71
—Documents relating to the theory or principle underlying the invention 16.72
—Potentially conflicting patent documents 16.73
—Documents cited in the application 16.74
—Documents cited for other reasons 16.75
—Non-prejudicial disclosures 16.76 - Relationship Between Documents and Claims 16.77
- Citation of the Documents 16.78 – 16.82A
- Finalization of the Report 16.83 – 16.85
PART V WRITTEN OPINION/INTERNATIONAL PRELIMINARY EXAMINATION REPORT
Chapter 17 Content of Written Opinions and the International Preliminary Examination Report
- Introduction 17.01 – 17.03
- Different Types of Opinion and Report
- Content of the Opinion or Report
- Overview of Content 17.09
- Form of Opinion or Report 17.10
- Data 17.11 – 17.12
- Box No. I: Basis of the Written Opinion 17.13 – 17.27
—Language Considerations 17.15
—Sheets Deemed to Be Part of the Application as Originally Filed 17.16
—Examination on Basis of Amended International Application 17.17 – 17.20
—Nucleotide and/or Amino Acid Sequence Listings 17.21
—Amendments Resulting in Gaps in Numbering 17.22
—Amendments Going Beyond Original Disclosure 17.23 – 17.24
—Top-up Searches 17.25
—Amendments Not Accompanied by a Letter to Indicate Their Basis in the Application as Filed 17.26
—Rectification of Obvious Mistakes 17.27 - Box No. II: Priority 17.28 – 17.31
- Box No. III: Non-Establishment of Opinion with Regard to Novelty, Inventive Step and Industrial Applicability 17.32 – 17.37
—Subject Matter Excluded Under Rule 67.1 17.33
—Clarity or Support 17.34 – 17.35
—No International Search Made for Some or All Claims 17.36
—Nucleotide and/or Amino Acid Sequence Listings 17.37 - Box No. IV: Lack of Unity of Invention 17.38 – 17.41
—Additional Fees Paid Under Protest 17.41 - Box No. V: Reasoned Statement Under Rule 66.2(a)(ii) with Regard to Novelty, Inventive Step or Industrial Applicability; Citations and Explanations Supporting Such Statement 17.42 – 17.44
- Box No. VI: Certain Documents Cited 17.45 – 17.48
- Box No. VII: Certain Defects in the International Application 17.49
- Box No. VIII: Certain Observations on the International Application 17.50 – 17.55
—Finalization of the Report 17.51
—Language of the Written Opinion and the International Preliminary Examination Report 17.52
—Form of Objection 17.53 – 17.54
—Ensuring Report Is of Maximal Use for Later Stages 17.55 - Standardized Clauses 17.55A
- Invitation to Correct or Amend 17.56 – 17.58
- Cases Where Partial Written Opinion or No Written Opinion to Be Established
- Excluded Subject Matter 17.60
- Lack of Unity of Invention 17.61 – 17.65
—Written Opinion of the International Searching Authority 17.61 – 17.62
—Written Opinion of the International Preliminary Examining Authority or the International Preliminary Examination Report 17.63 – 17.65 - Dealing with Major Objections First 17.66
- Other Considerations
PART VI THE INTERNATIONAL PRELIMINARY EXAMINATION STAGE (OTHER THAN THE INTERNATIONAL PRELIMINARY REPORT)
Chapter 18 Preliminary Procedure on Receipt of the Demand
- Use of Facsimile Machine, Telegraph, Teleprinter, Etc. 18.01
- Basis for International Preliminary Examination
- Statement Concerning Amendments 18.03 – 18.06A
- Language for the Purposes of International Preliminary Examination 18.07 – 18.09
- Documents, Etc., for the International Preliminary Examining Authority
Chapter 19 Examination Procedure Before The International Preliminary Examining Authority
- General 19.01 – 19.05
- Start of, and Time Limit for, International Preliminary Examination
- Start of Examination 19.07 – 19.09
- Time Limit for Completing Examination 19.10 – 19.12
- First Stage of International Preliminary Examination
- General 19.13 – 19.14
- Top-up Searches 19.15 – 19.21
- Cases Where No Written Opinion Is Required 19.22 – 19.23
- Cases Where a Further Written Opinion May Be Issued 19.24
- Claims for Which No International Search Report Has Been Established 19.25
- Further Stage of International Preliminary Examination 19.26 – 19.33
- Correction of International Preliminary Examination Report 19.34 – 19.35
- Matters Applicable Generally to Various Stages of International Preliminary Examination
- Making Amendments: General Considerations 19.36
- Rectification of Obvious Mistakes 19.37 – 19.40
- Informal Communication with the Applicant 19.41 –19.46
- Establishment of the International Preliminary Examination Report
- General 19.47 – 19.48
- Determination of Time Limits 19.49
- Withdrawal of the Demand or All Elections 19.52
Chapter 20 Amendments
- Amendment Prior to the Start of International Preliminary Examination
- Amendment of the Claims Under Article 19 20.01
- Amendment Under Article 34 20.02 – 20.03
- Making Amendments: General Considerations 20.04 – 20.08
- Appraisal of Amendments 20.09
- Additional Subject Matter 20.10 – 20.19
- Lack of Support 20.20 – 20.21
- Amendments to Translated Applications 20.22
Appendix to Chapter 20
PART VII QUALITY
Chapter 21 Common Quality Framework for International Search and Preliminary Examination
- Introduction 21.01 – 21.03
- 1. Leadership and Policy 21.04 – 21.10
- 2. Risk-based practices 21.11 – 21.14
- 3. Resources 21.15
– Sufficient Human Resources
– Sufficient Material Resources
– Sufficient Training Resources
– Oversight Over Its Resources - 4. Management of Administrative Workload 21.16
- 5. Quality Assurance 21.17
- 6. Communication
- 7. Documentation 21.22 – 21.25
- 8. Search Process Documentation 21.26
- 9. Internal Review 21.27 – 21.30
- 10. Reporting arrangements 21.31 – 21.32
- Future Developments
PART VIII CLERICAL AND ADMINISTRATIVE PROCEDURES
Chapter 22 Clerical and Administrative Procedures
- Receipt of the Demand 22.01
- Determination of Competent International Preliminary Examining Authority and Marking of the Demand 22.02 – 22.05
- Identification of the International Application 22.06
- Applicant’s Entitlement to File a Demand
- Change in the Applicant 22.10
- Election of States 22.11
- Check of Particulars Affecting the Date of Receipt 22.12 – 22.13
- Checking Whether Demand Is Timely Filed 22.14 – 22.15
- Establishing the International Preliminary Examining Authority File 22.16 – 22.19
- Transmittal of the Demand to the International Bureau 22.20 – 22.23
- Certain Defects in the Demand 22.24 – 22.26
- Language 22.27
- Signature 22.28 – 22.32
- Indications Concerning the Applicant 22.33 – 22.34
- Indications Concerning the Agent 22.35 – 22.36
- Invitation to Correct Defects in the Demand 22.37 – 22.41
- Payment and Refund of Fees 22.42 – 22.48
- Transfer of Handling Fees to the International Bureau 22.49
- Use of Facsimile Machine, Telegraph, Teleprinter, Etc. 22.50 – 22.51
- Irregularities in the Mail Service 22.52
- Excuse of Delay in Meeting Time Limits 22.52A – 22.52D
- Extension of Time Limits Under Rule 82quater.3 22.52E – 22.52H
- Computation of Time Limits 22.53
- Amendments Under Article 19 22.54
- Response to the Written Opinion 22.55 – 22.57
- Transmittal of the International Preliminary Examination Report and Related Documents 22.58
- Withdrawal of the Demand or All Elections 22.59
- Processing of Nucleotide and/or Amino Acid Sequence Listings Furnished Specifically for the Purposes of International Search or Preliminary Examination 22.60 – 22.61