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 9 Exclusions from, and Limitations of, International Search and International Preliminary Examination

General Considerations in Assessing the Nature of the Subject Matter

Form of Claims

9.16 In considering whether subject matter under Rule 39 or 67 is present, there are two general points the examiner bears in mind. Firstly, he disregards the form or kind of claim and concentrates on the content in order to identify the subject matter. The first point is illustrated by the examples given in paragraph 9.15, which illustrate different ways of claiming a computer program. Secondly, any exclusion applies only to the extent that the international application relates to the excluded subject matter. This is illustrated, for instance, by a gramophone record distinguished solely by the music recorded thereon whereas if the form of the groove were modified so that the record, when used with an appropriate pickup mechanism, functioned in a new way (as in the first stereo record), the claimed subject matter could undergo international search and preliminary examination. For the application of Rules 39 and 67, the examiner should not apply the relevant criteria more restrictively than he would in the case of national applications.

Excluded Matter in Only Some Claims

Articles 17(2)(b), 34(4)(b)

9.17 Where the subject matter of only some of the claims is a subject excluded from the search and preliminary examination, this is indicated in the international search report, written opinion and the international preliminary examination report. Search and preliminary examination are, of course, made in respect of the other claims.

Cases of Doubt

9.18 In cases of doubt as to whether subject matter covered by a claim constitutes excluded subject matter, the Authority carries out the search or preliminary examination to the extent that this is possible using the available documentation.