| Software, Computer-Implemented |
Referenced Items (222, 223, 224, 225) |
(224) Guidance On Searching and Examining
PCT Applications Drawn to
Computer-Related Inventions
The following guidance should be applied when searching and examining
a PCT application drawn to a computer-related invention:
Chapter I (Form 210 Search Report)
Under Chapter I, Office personnel conduct an international search and
prepare an international search report on all subject matter searched
and examined in U.S. national applications. Routinely, such subject
matter includes inter alia computer-related inventions. Under the
Examination Guidelines for Computer-Related Inventions (Guidelines),
Office personnel conduct a complete examination, including a thorough
search of the prior art, for all U.S. national applications drawn to
computer-related inventions regardless of whether the claims recite
statutory subject matter. See 61 Fed. Reg. 7478 (Feb. 28, 1996); 1184 OG
87 (March 26, 1996). Thus, Office personnel must conduct an
international search, and prepare an international search report, on all
PCT applications drawn to computer-related inventions.1
Office personnel are reminded that, when completing Section C. of
the search report (Documents Considered To Be Relevant), the prior art
references should be categorized as either "A", "X" or "Y" based on the
claims read in light of the disclosure. Also, the citations should
indicate which claims are relevant to the reference.
Chapter II (Form 408 Written Opinion and Form 409 IPER)
Under Chapter II, Office personnel conduct a preliminary examination
and prepare an international preliminary examination report (IPER). In
the examination, Office personnel determine whether the claimed invention
satisfies the criteria for novelty, inventive step, and industrial
applicability. For PCT applications drawn to computer-related
inventions, Office personnel should use the Guidelines as an aid in
determining whether the claimed invention satisfies the criteria for
industrial applicability. Often, a claimed invention determined to be
non-statutory under the Guidelines will not satisfy the criteria for
industrial applicability because the claimed invention cannot be made or
used in the technological sense in any kind of industry. See PCT Article
33(4).
Office personnel are reminded, however, that written opinions and
IPERs should not cite U.S. statutes, regulations, or case law except
those which pertain to PCT. In the same manner, written opinions and
IPERs should not reference the Guidelines per se.
1 Accordingly, Item 1. of Box I. in the search report is not applicable.
However, in rare circumstances, Office personnel will be unable to
conduct an international search, e.g., it is impossible to determine the
subject matter of the PCT application. In that circumstance, Item 2. of
Box I. should be checked and explained, as it would be in a similar
circumstance for non-computer-related subject matter.
July 22, 1996 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1189 OG 58]
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