PATENT COOPERATION TREATY (PCT) - wipo.int

1 E PCT/GL/ISPE/7 ORIGINAL: ENGLISH DATE: June 25, 2018 PATENT COOPERATION TREATY (PCT) PCT INTERNATIONAL SEARCH AND PRELIMINARY EXAMINATION GUIDELINES (Guidelines for the Processing by International Searching and Preliminary Examining Authorities of International Applications Under the PATENT COOPERATION TREATY ) as in force from July 1, 2018 1. This document contains the text, as in force from July 1, 2018 of the PCT International Search and Preliminary Examination Guidelines, established by the International Bureau of wipo after consultation with the International Searching and Preliminary Examining Authorities under the PCT. 2. The Guidelines replace the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/6), as in force from July 1, 2017. PCT/GL/ISPE/7 Page 2 PCT INTERNATIONAL SEARCH AND PRELIMINARY EXAMINATION GUIDELINES (as in force from July 1, 2018) TABLE OF CONTENTS PART I INTRODUCTION AND OVERVIEW Paragraphs Chapter 1 Introduction Purpose and Status of These Guidelines Arrangement and Terminology of These Guidelines Overview of International Application Process The International Phase The National (or Regional)

2 Phase The International Authorities Flowchart of Typical International Application Processing Chapter 2 Overview of the International Search Stage Objectives Preliminary Matters Receipt of Search Copy from Receiving Office Acknowledgement and Allocation by the International Searching Authority The International Search Process Time Limit for Establishing International Search Report Transmittal of the International Search Report, Written Opinion, etc. Options Open to the Applicant Further Processing of the International Search Report and Written Opinion Confidential Treatment Publication of the Search Report and Making Available of the Written Opinion of the International Searching Authority International Preliminary Report on Patentability (Chapter 1 of the PCT) (When no Demand Is Filed Copies of Documents Cited in Search Report Supplementary International Searches International-Type Searches Chapter 3 Overview of the International Preliminary Examination Stage Introduction Preliminary Matters Filing of Demand Checking of Demand and Notification of Receipt Commencement of International Preliminary Examination The International Preliminary Examination Process Basis of the Written Opinion or International Preliminary Examination Report PCT/GL/ISPE/7 Page 3 Further Consideration Nature of the International Preliminary Examination Report Time Limit for Establishing the International Preliminary Examination Report Transmittal of the International Preliminary Examination Report Further Processing of the International Preliminary Examination Report Confidential)

3 Treatment Making Available of the International Preliminary Examination Report Transmission of the International Preliminary Examination Report to Elected Offices Translation of International Preliminary Examination Report Copies of Documents Cited in International Preliminary Examination Report PART II THE INTERNATIONAL APPLICATION Chapter 4 Content of the International Application (Other Than the Claims) General Description Technical Field Background Art Disclosure of Invention Brief Description of Drawings Best Mode for Carrying Out the Invention Structure and Function Sufficiency Industrial Applicability Nucleotide and/or Amino Acid Sequence Listings Deposit of Biological Material - References to Deposited Microorganisms or Other Biological Material as Part of the Description Requirements as to the Language of Sheets Containing References to Deposited Microorganisms or Other Biological Material General Drawings Expressions, Etc.

4 , Not to Be Used Appendix to Chapter 4 Background Art Chapter 5 Claims General Form and Content of Claims Kinds of Claim Categories Independent and Dependent Claims Interpretation of Claims Use Claims Preamble Open and Closed Claims Means-Plus-Function Claims Product-by-Process Claims Product and Apparatus Limitations in Process Claims Inconsistency Between Claims and Description PCT/GL/ISPE/7 Page 4 Clarity Clarity of Relative Terms Clarity of Other Terms Conciseness, Number of Claims Support in Description Clear and Complete Disclosure of Claimed Invention Sufficiency Commensurate with the Claims Relationship of Claims to Disclosure Appendix to Chapter 5 Multiple Dependent Claims Interpretation of Claims Use Claims Product by Process Claims Conciseness Chapter 6 Priority The Right to Priority Determining Priority Dates Claiming Priority Chapter 7 Classification of International Applications Definition Definitive Classification of the International Application Multiple Classifications Classification of Disclosure as Filed Amended Classification in the Case of Later Published International Search Report Classification When Scope Is Obscure Lack of Unity of Invention Classification of International Applications Excluded from International Search Chapter 8 Rule 91

5 Obvious Mistakes in Documents Mistakes that Cannot be Rectified Under Rule 91 Missing Elements or Sheets Correction of Priority Claims Transmittal to Another Authority of a Request for Rectification Invitation to the Applicant to Request Rectification Submission and Processing of a Request for Rectification Authorization and Effect of Rectifications Effective Date of Rectification 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 Excluded Subject Matter Scientific and Mathematical Theories PCT/GL/ISPE/7 Page 5 Plant or Animal Varieties or Essentially Biological Processes for the Production of Plants and Animals, Other Than Microbiological Processes Schemes, Rules or Methods of Doing Business, Performing Purely Mental Acts or Playing Games Methods for Treatment of the Human or Animal Body by Surgery or Therapy.

6 Diagnostic Methods Practiced on the Human or Animal Body Mere Presentations of Information Computer Programs, to the Extent That the Authority is not Equipped to Carry Out Search or Preliminary Examination on Such Programs General Considerations in Assessing the Nature of the Subject Matter Form of Claims Excluded Matter in Only Some Claims Cases of Doubt Extent of Search and Preliminary Examination in Certain Situations Examples Where Search or Preliminary Examination Possible, with an Indication in the Written Opinion Examples of Exceptional Situations Where no Search at All is Possible for All or Some of the Claims Non-Prior-Art Issues Industrial Applicability Informal Clarification Unclear Claims Perpetual Motion Sequence Listings Declaration of Non-Establishment of International Search Report Multiple Dependent Claims Supplementary International Search Appendix to Chapter 9 Excluded Subject Matter Regarding Schemes, Rules or Methods of Doing Business.

7 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 Illustrations of Particular Situations Combinations of Different Categories of Claims Markush Practice Intermediate and Final Products Examples Concerning Unity of Invention Claims in Different Categories Claims in the Same Category Markush Practice Intermediate/Final Product Biotechnological Inventions Process at the International Search Stage Invitation to Pay Additional Fees Search of Additional Inventions Without Payment of Fees Protest Procedure Process at the International Preliminary Examination Stage PCT/GL/ISPE/7 Page 6 Protest Procedure Process at the Supplementary International Search Stage Review of Opinion Chapter 11 Prior Art Prior Art Generally Date of Disclosure Relevant Date for International Search Report Purposes Relevant Date for Written Opinion and International Preliminary Examination Purposes Documents Casting Doubt on Priority Claim Made in the International Application Documents Not Within the Prior Art Which May Nevertheless Be Relevant Later Published PATENT Applications (for Purposes of the International Search Report) Later Published PATENT Applications (for Purposes of International Preliminary Examination)

8 Copending Applications, Including Those Filed on the Same Date Documents Relevant to Understanding the Invention Form of Disclosure Availability of Written Disclosures to the Public Disclosure on the Internet Disclosure Made on the Web Sites of Trusted Publishers Disclosure Made on Web Sites of Unknown Reliability Differences Between PATENT and Non- PATENT Citations Documents Reproducing an Earlier Oral Description Difficulty in Establishing Date of a Document Relevant Date in Relation to Individual Claims or Parts of Claims Chapter 12 Novelty Meaning of Novelty Considerations in Determining Novelty Methodology Inherent or Implicit Disclosure Interpretation of Claims Combining Documents Alternatives Generic vs. Specific Disclosures Ranges Appendix to Chapter 12 Chapter 13 inventive step Meaning of inventive step Considerations in Determining inventive step What Is Obvious ?

9 Light of Later Knowledge Invention as a Whole; Combination of Known or Obvious Elements Assessing the Contribution Against the Prior Art The Person Skilled in the Art Combining Teachings Examples PCT/GL/ISPE/7 Page 7 Other considerations Ex Post Facto Analysis Technical Value, Long-Felt Needs Commercial Success Dependent Claims 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 Methodology Appendix to Chapter 14 Utility Specific, or Particular, Utility Substantial, or Practical Real World Utility Credible Utility Industrial Applicability Special Purpose Clear and Complete Disclosure Possibility of Realizing the Special Purpose Date at Which Requirements Must Be Met PART IV THE INTERNATIONAL SEARCH Chapter 15 The International Search Objective of the International Search and Supplementary International Search Non-Written Disclosures Geographical Location, Language.

10 Age and Manner of Disclosure The Examiner Basis of the Search Scope of the International Search Orientation and Subject of the International Search Analysis of the Claims Inventions for Which No Fees Have Been Paid Full Coverage Speculative Claims Dependent Claims Search of Particular Claim Types and Features Combination of Elements Different Categories of Claim Cases Where No Meaningful Search Is Possible Obvious Mistakes and Expressions, Etc., Not to be Used (Rule 9) Information Meeting the Criteria of Rule (l) Access to the File held by the International Searching Authority Search Strategy Preliminary Steps Abstract and Title Classification Publication Prior to Search PCT/GL/ISPE/7 Page 8 Search Statement Field of Search Analogous Fields Conducting the Search Security of Searching Using the Internet No Documents Found Stopping Search Recording the Search Evaluating the Prior Art Matters of Doubt Regarding Relevant Prior Art Excluded Subject Matter Selection of Citations and Identifying Most Relevant Portions Procedure After Searching Preparation of the International Search Report Amended International Search Reports Receipt of Misdirected Article 19 Amendments Supplementary International Search Requesting Supplementary International Search Receipt of the Request for Supplementary