WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  The Practical Advice in PCT Newsletter No. 01/2018 described how the applicant can request that the results of the search on an earlier application be taken into account by the ISA when drawing up the international search report.  What are the circumstances under which this will happen even where the applicant has not expressly made a request under PCT Rule 4.12?  Also, is there any action that can be taken if the applicant does not want the ISA to take into account the results of an earlier search?   

A:  It is recalled that on 1 July 2017, new PCT Rule 23bis entered into force and amendments to PCT Rules 12bis and 41 were made in relation to the transmittal to, and use by the ISA of earlier search and classification results.  As a consequence of these changes, which apply to international applications filed on or after 1 July 2017, receiving Offices (ROs) are, under certain circumstances, required to forward a copy of the earlier search and classification results in respect of earlier applications to the ISA, irrespective of whether the applicant has requested an earlier search to be taken into account by the ISA.  

Where an international application claims priority of an earlier application and the applicant did not request the ISA to take into account the results of the earlier search (either by selecting the appropriate options when using ePCT‑Filing, PCT‑SAFE, or any other PCT online filing software, or by making the corresponding indication in item 1 of Continuation of Box No. VII of the request form), the RO:

• is required to transmit to the ISA a copy of the earlier search and classification results that are available to it at the time of filing of the international application (unless such a copy is already available to the ISA) if the earlier application was filed with the same national or regional Office as that which is acting as RO, and that Office has carried out the search in respect of the earlier application (PCT Rule 23bis.2(a)); or
• may decide whether or not to transmit to the ISA a copy of the earlier search and classification results where the international application claims the priority of one or more earlier applications filed with an Office which is different from the one which is acting as the receiving Office, and that other Office has carried out an earlier search or has classified the earlier application, but the results of that earlier search and classification are nevertheless available to the RO, for example, from a digital library (PCT Rule 23bis.2(c)).

Please be aware, however, that Offices were given the opportunity to notify the International Bureau (IB) (before 14 April 2016) of the incompatibility with their applicable national law of new PCT Rule 23bis.2, and certain Offices did notify the IB of such incompatibility, as explained below.

1.      Notification of incompatibility under PCT Rule 23bis.2(b)

The Offices of certain States have, in accordance with PCT Rule 23bis.2(b), notified the IB that they may, on request of the applicant submitted together with the international application, decide not to transmit the results of an earlier search to the ISA.  Note that such a request not to transmit the earlier search results to the ISA may only be made if the RO with which the international application is filed has made a reservation under PCT Rule 23bis.2(b).  This concerns only the ROs of the following States¹:

DE    Germany

FI      Finland

SE    Sweden

(See also the list of PCT Reservations, Declarations, Notifications and Incompatibilities at: https://www.wipo.int/pct/en/texts/reservations/res_incomp.html)

If the applicant files with one of the above‑mentioned Offices, the RO may be requested not to transmit the earlier search results to the ISA by selecting the appropriate options when using ePCT‑Filing, PCT‑SAFE or any other PCT online filing software, or by marking the check-box in item 2.2 of the Continuation of Box No. VII of the request form.  Of the three States that have made a reservation under PCT Rule 23bis.2(b), the possibility for the applicant to request that the results of an earlier search not be transmitted to the ISA in this way principally concerns the RO of Germany, since Finland and Sweden have also notified the IB under PCT Rule 23bis.2(e) and therefore will not transmit these results to the IB without the express authorization from the applicant.

2.      Notification of incompatibility under PCT Rule 23bis.2(e)

T he Offices of certain States have, in accordance with PCT Rule 23bis.2(e), notified the IB that the transmission of copies of earlier search and classification results without the authorization of the applicant is not compatible with their national law. 

This concerns only the ROs of the following States¹:

AU    Australia

CH   Switzerland

CZ    Czechia

FI      Finland

HU   Hungary

IL      Israel

JP     Japan

NO   Norway

SE    Sweden

SG    Singapore

US    United States of America

(See also the list of PCT Reservations, Declarations, Notifications and Incompatibilities at: https://www.wipo.int/pct/en/texts/reservations/res_incomp.html)

This means that, if the international application is filed with the RO of one of the above‑mentioned States, and the applicant, when filing the international application, does not expressly authorize that Office to transmit the results of an earlier search to the ISA (by selecting the appropriate options when using ePCT‑Filing, PCT‑SAFE or any other PCT online filing software, or by marking the relevant check-box in item 2.3 of the Continuation of Box No. VII of the request form), the RO will not do so.

Note that, in respect of all ROs, where the earlier search was carried out in respect of an earlier international application, the priority of which is claimed in the current international application, and that earlier search was carried out by a different ISA than that which is selected in the current international application, the applicant would need to expressly authorize the RO to transmit the earlier search and classification results to that ISA by selecting the relevant option in ePCT‑Filing, PCT‑SAFE or any other PCT online filing software, or in the case of paper filings, by marking the second check-box in item 2.3 of Continuation of Box No. VII of the request form. 

Note also that where the international application claims priority of more than one earlier application, and where the applicant is entitled and wishes to either authorize the transmittal of the earlier search and classification results by the receiving Office to the ISA, or to request the RO not to transmit the results of the earlier search to the ISA, in respect of more than one earlier application, the relevant information must be provided for each earlier application concerned.  ePCT‑Filing, PCT‑SAFE or any other PCT online filing software provides for this, but in the case of paper filings, the relevant check-box in item 2.2 or 2.3 of the Continuation of Box No. VII of the request should be marked, and duplicates of this page that lists each priority claim concerned, marked “continuation sheet of item 2 of Continuation of Box No. VII”, should be attached to the request form.

It is recalled that, as far as the ISA’s obligation to take into account the results of an earlier search is concerned, even if the applicant has not requested the ISA to take into account the results of an earlier search under PCT Rule 4.12, where the international application claims the priority of an earlier application in respect of which a search has been carried out by the same Office that acts as ISA, the Authority is required, to the extent possible, to take the results of that earlier search into account when carrying out the international search.  Where the RO has transmitted to the ISA a copy of any earlier search or classification results, or where such a copy is otherwise available to it in a form and manner acceptable to it, for example, from a digital library, the ISA may take those results into account when carrying out the international search, but is not obliged to (PCT Rule 41.2).

As far as refunds or partial refunds of the search fee are concerned, although most ISAs, following a request by the applicant under PCT Rule 4.12, refund or partially refund the search fee where they have taken into account the results of an earlier search in carrying out the search, please be aware that where an ISA takes an earlier search into account under PCT Rule 41.2, that is, where the applicant has not expressly requested the ISA to do so, there is no provision under the PCT Regulations that would oblige an ISA to (partially) refund the search fee.

Further information can be found in the PCT Applicant’s Guide, International Phase, paragraphs 5.073B to 5.073D at:

https://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf

See also the Notes to the Request Form, Continuation of Box No. VII, item 2, at:

https://www.wipo.int/pct/en/forms/request/ed_request.pdf

1. Status on 1 February 2018.