1856 Supplementary International Searches [R-10.2019]
PCT Rule 45bis
Supplementary International Searches
45bis.1 Supplementary Search Request
- (a) The applicant may, at any time prior to the expiration of 22 months from the priority date, request that a supplementary international search be carried out in respect of the international application by an International Searching Authority that is competent to do so under Rule 45bis.9. Such requests may be made in respect of more than one such Authority.
- (b) A request under paragraph (a)
(“supplementary search request”) shall be submitted to the International
Bureau and shall indicate:
- (i) the name and address of the applicant and of the agent (if any), the title of the invention, the international filing date and the international application number;
- (ii) the International Searching Authority that is requested to carry out the supplementary international search (“Authority specified for supplementary search”); and
- (c) The supplementary search request shall,
where applicable, be accompanied by:
- (i) where neither the language in which the international application was filed nor that in which a translation (if any) has been furnished under Rule 12.3 or 12.4 is accepted by the Authority specified for supplementary search, a translation of the international application into a language which is accepted by that Authority;
- (ii) preferably, a copy of a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, if required by the Authority specified for supplementary search.
- (d) Where the International Searching Authority has found that the international application does not comply with the requirement of unity of invention, the supplementary search request may contain an indication of the wish of the applicant to restrict the supplementary international search to one of the inventions as identified by the International Searching Authority other than the main invention referred to in Article 17(3)(a).
- (e) The supplementary search request shall be
considered not to have been submitted, and the International Bureau
shall so declare:
- (i) if it is received after the expiration of the time limit referred to in paragraph (a); or
- (ii) if the Authority specified for supplementary search has not stated, in the applicable agreement under Article 16(3)(b), its preparedness to carry out such searches or is not competent to do so under Rule 45bis.9(b).
45bis.2 Supplementary Search Handling Fee
- (a) The supplementary search request shall be subject to the payment of a fee for the benefit of the International Bureau (“supplementary search handling fee”) as set out in the Schedule of Fees.
- (b) The supplementary search handling fee shall be paid in the currency in which the fee is set out in the Schedule of Fees or in any other currency prescribed by the International Bureau. The amount in such other currency shall be the equivalent, in round figures, as established by the International Bureau, of the amount as set out in the Schedule of Fees, and shall be published in the Gazette.
- (c) The supplementary search handling fee shall be paid to the International Bureau within one month from the date of receipt of the supplementary search request. The amount payable shall be the amount applicable on the date of payment.
- (d) The International Bureau shall refund the supplementary search handling fee to the applicant if, before the documents referred to in Rule 45bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rule 45bis.1(e).
45bis.3 Supplementary Search Fee
- (a) Each International Searching Authority carrying out supplementary international searches may require that the applicant pay a fee (“supplementary search fee”) for its own benefit for carrying out such a search.
- (b) The supplementary search fee shall be collected by the International Bureau. Rules 16.1(b) to (e) shall apply mutatis mutandis.
- (c) As to the time limit for payment of the supplementary search fee and the amount payable, the provisions of Rule 45bis.2(c) shall apply mutatis mutandis.
- (d) The International Bureau shall refund the supplementary search fee to the applicant if, before the documents referred to in Rule 45bis.4(e)(i) to (iv) are transmitted to the Authority specified for supplementary search, the international application is withdrawn or considered withdrawn, or the supplementary search request is withdrawn or is considered not to have been submitted under Rules 45bis.1(e) or 45bis.4(d).
- (e) The Authority specified for supplementary search shall, to the extent and under the conditions provided for in the applicable agreement under Article 16(3)(b), refund the supplementary search fee if, before it has started the supplementary international search in accordance with Rule 45bis.5(a), the supplementary search request is considered not to have been submitted under Rule 45bis.5(g).
45bis.4 Checking of Supplementary Search Request; Correction of Defects; Late Payment of Fees; Transmittal to Authority Specified for Supplementary Search
- (a) Promptly after receipt of a supplementary search request, the International Bureau shall check whether it complies with the requirements of Rule 45bis.1(b) and (c)(i) and shall invite the applicant to correct any defects within a time limit of one month from the date of the invitation.
- (b) Where, by the time they are due under Rules 45bis.2(c) and 45bis.3(c), the International Bureau finds that the supplementary search handling fee and the supplementary search fee have not been paid in full, it shall invite the applicant to pay to it the amount required to cover those fees, together with the late payment fee under paragraph (c), within a time limit of one month from the date of the invitation.
- (c) The payment of fees in response to an invitation under paragraph (b) shall be subject to the payment to the International Bureau, for its own benefit, of a late payment fee whose amount shall be 50% of the supplementary search handling fee.
- (d) If the applicant does not furnish the required correction or does not pay the amount in full of the fees due, including the late payment fee, before the expiration of the time limit applicable under paragraph (a) or (b), respectively, the supplementary search request shall be considered not to have been submitted and the International Bureau shall so declare and shall inform the applicant accordingly.
- (e) On finding that the requirements of
Rule 45bis.1(b) and
(c)(i), 45bis.2(c) and
45bis.3(c) have been complied
with, the International Bureau shall promptly, but not before the date
of receipt by it of the international search report or the expiration of
17 months from the priority date, whichever occurs first, transmit to
the Authority specified for supplementary search a copy of each of the
following:
- (i) the supplementary search request;
- (ii) the international application;
- (iii) any sequence listing furnished under Rule 45bis.1(c)(ii); and
- (iv) any translation furnished under Rule 12.3, 12.4 or 45bis.1(c)(i) which is to be used as the basis of the supplementary international search;
and, at the same time, or promptly after their later receipt by the International Bureau:
- (v) the international search report and the written opinion established under Rule 43bis.1;
- (vi) any invitation by the International Searching Authority to pay additional fees referred to in Article 17(3)(a); and
- (vii) any protest by the applicant under Rule 40.2(c) and the decision thereon by the review body constituted in the framework of the International Searching Authority.
- (f) Upon request of the Authority specified for supplementary search, the written opinion referred to in paragraph (e)(v) shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility of the International Bureau. The International Bureau shall transmit a copy of the translation to that Authority within two months from the date of receipt of the request for translation, and shall at the same time transmit a copy to the applicant.
45bis.5 Start, Basis and Scope of Supplementary International Search
- (a) The Authority specified for supplementary search shall start the supplementary international search promptly after receipt of the documents specified in Rule 45bis.4(e)(i) to (iv), provided that the Authority may, at its option, delay the start of the search until it has also received the documents specified in Rule 45bis.4(e)(v) or until the expiration of 22 months from the priority date, whichever occurs first.
- (b) The supplementary international search shall be carried out on the basis of the international application as filed or of a translation referred to in Rule 45bis.1(b)(iii) or 45bis.1(c)(i), taking due account of the international search report and the written opinion established under Rule 43.1 where they are available to the Authority specified for supplementary search before it starts the search. Where the supplementary search request contains an indication under Rule 45bis.1(d), the supplementary international search may be restricted to the invention specified by the applicant under Rule 45bis.1(d) and those parts of the international application which relate to that invention.
- (c) For the purposes of the supplementary international search, Article 17(2) and Rules 13ter.1, 33 and 39 shall apply mutatis mutandis.
- (d) Where the international search report is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may exclude from the supplementary search any claims which were not the subject of the international search.
- (e) Where the International Searching Authority has made the declaration referred to in Article 17(2)(a) and that declaration is available to the Authority specified for supplementary search before it starts the search under paragraph (a), that Authority may decide not to establish a supplementary international search report, in which case it shall so declare and promptly notify the applicant and the International Bureau accordingly.
- (f) The supplementary international search shall cover at least the documentation indicated for that purpose in the applicable agreement under Article 16(3)(b).
- (g) If the Authority specified for supplementary search finds that carrying out the search is entirely excluded by a limitation or condition referred to in Rule 45bis.9(a), other than a limitation under Article 17(2) as applicable by virtue of Rule 45bis.5(c), the supplementary search request shall be considered not to have been submitted, and the Authority shall so declare and shall promptly notify the applicant and the International Bureau accordingly.
- (h) The Authority specified for supplementary search may, in accordance with a limitation or condition referred to in Rule 45bis.9(a), decide to restrict the search to certain claims only, in which case the supplementary international search report shall so indicate.
45bis.6 Unity of Invention
- (a) If the Authority specified for
supplementary search finds that the international application does not
comply with the requirement of unity of invention, it shall:
- (i) establish the supplementary international search report on those parts of the international application which relate to the invention first mentioned in the claims (“main invention”);
- (ii) notify the applicant of its opinion that the international application does not comply with the requirement of unity of invention and specify the reasons for that opinion; and
- (iii) inform the applicant of the possibility of requesting, within the time limit referred to in paragraph (c), a review of the opinion.
- (b) In considering whether the international application complies with the requirement of unity of invention, the Authority shall take due account of any documents received by it under Rule 45bis.4(e)(vi) and (vii) before it starts the supplementary international search.
- (c) The applicant may, within one month from the date of the notification under paragraph (a)(ii), request the Authority to review the opinion referred to in paragraph (a). The request for review may be subjected by the Authority to the payment to it, for its own benefit, of a review fee whose amount shall be fixed by it.
- (d) If the applicant, within the time limit
under paragraph (c), requests a review of the opinion by the Authority
and pays any required review fee, the opinion shall be reviewed by the
Authority. The review shall not be carried out only by the person who
made the decision which is the subject of the review. Where the
Authority:
- (i) finds that the opinion was entirely justified, it shall notify the applicant accordingly;
- (ii) finds that the opinion was partially unjustified but still considers that the international application does not comply with the requirement of unity of invention, it shall notify the applicant accordingly and, where necessary, proceed as provided for in paragraph (a)(i);
- (iii) finds that the opinion was entirely unjustified, it shall notify the applicant accordingly, establish the supplementary international search report on all parts of the international application and refund the review fee to the applicant.
- (e) On the request of the applicant, the text of both the request for review and the decision thereon shall be communicated to the designated Offices together with the supplementary international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22.
- (f) Paragraphs (a) to (e) shall apply mutatis mutandis where the Authority specified for supplementary search decides to restrict the supplementary international search in accordance with the second sentence of Rule 45bis.5(b) or with Rule 45bis.5(h), provided that any reference in the said paragraphs to the “international application” shall be construed as a reference to those parts of the international application which relate to the invention specified by the applicant under Rule 45bis.1(d) or which relate to the claims and those parts of the international application for which the Authority will carry out a supplementary international search, respectively.
45bis.7 Supplementary International Search Report
- (a) The Authority specified for supplementary search shall, within 28 months from the priority date, establish the supplementary international search report, or make the declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45bis.5(c) that no supplementary international search report will be established.
- (b) Every supplementary international search report, any declaration referred to in Article 17(2)(a) as applicable by virtue of Rule 45bis.5(c) and any declaration under Rule 45bis.5(e) shall be in a language of publication.
- (c) For the purposes of establishing the supplementary international search report, Rules 43.1, 43.2, 43.5, 43.6, 43.6bis, 43.8 and 43.10 shall, subject to paragraphs (d) and (e), apply mutatis mutandis. Rule 43.9 shall apply mutatis mutandis, except that the references therein to Rules 43.3, 43.7 and 44.2 shall be considered non-existent. Article 20(3) and Rule 44.3 shall apply mutatis mutandis.
- (d) The supplementary international search report need not contain the citation of any document cited in the international search report, except where the document needs to be cited in conjunction with other documents that were not cited in the international search report.
- (e) The supplementary international search
report may contain explanations:
- (i) with regard to the citations of the documents considered to be relevant;
- (ii) with regard to the scope of the supplementary international search.
45bis.8 Transmittal and Effect of the Supplementary International Search Report
- (a) The Authority specified for supplementary search shall, on the same day, transmit one copy of the supplementary international search report or the declaration that no supplementary international search report shall be established, as applicable, to the International Bureau and one copy to the applicant.
- (b) Subject to paragraph (c), Article 20(1) and Rules 45.1, 47.1(d) and 70.7(a) shall apply as if the supplementary international search report were part of the international search report.
- (c) A supplementary international search report need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if it is received by that Authority after it has begun to draw up that opinion or report.
45bis.9 International Searching Authorities Competent to Carry Out Supplementary International Search
- (a) An International Searching Authority shall be competent to carry out supplementary international searches if its preparedness to do so is stated in the applicable agreement under Article 16(3)(b), subject to any limitations and conditions set out in that agreement.
- (b) The International Searching Authority carrying out the international search under Article 16(1) in respect of an international application shall not be competent to carry out a supplementary international search in respect of that application.
- (c) The limitations referred to in paragraph (a) may, for example, include limitations as to the subject matter for which supplementary international searches will be carried out, other than limitations under Article 17(2) as applicable by virtue of Rule 45bis.5(c), limitations as to the total number of supplementary international searches which will be carried out in a given period, and limitations to the effect that the supplementary international searches will not extend to any claim beyond a certain number of claims.
The supplementary international search (SIS) is an optional service that allows additional searches to be performed by a Supplementary International Searching Authority (SISA) during the international phase, in addition to the search performed by the main International Searching Authority (ISA). Requesting supplementary international search reduces the risk of new prior art being cited in the national phase. The increasing diversity of prior art in different languages and different technical fields means that the Authority carrying out the main international search is not always capable of discovering all of the relevant prior art. Requesting one or more supplementary international searches, during this early phase of the patent prosecution, expands both the linguistic and technical scope of the search. In addition, it may also be possible to have the supplementary search carried out in a State where an applicant is likely to enter the national phase later on.
Only an ISA that has stated its preparedness to carry out supplementary international searches (see the Annex SISA of the Applicant’s Guide at www.wipo.int/pct/en/appguide/index.jsp) and which is not the ISA that carried out the main international search, can be requested to carry out a SIS. The Authorities prepared to offer supplementary international searches may specify any limitations and conditions on this service in their agreement with the IB (see www.wipo.int/pct/en/access/ isa_ipea_agreements.html). These limitations may include limitations as to the subject matter for which supplementary searches will be carried out, beyond those limitations that can be evoked in respect of the main international search, and limitations as to the total number of supplementary international searches which will be carried out in a given period.
The SIS will be carried out on the application as filed (amendments under PCT Article 19 and/or 34 will not be considered) and will only cover one invention or group of inventions having unity of invention – there is no option for paying additional fees for the searching of multiple inventions. However, if the main ISA has identified a lack of unity before SIS is requested, the latter can be requested to concentrate on an invention which is not necessarily the first one claimed (PCT Rule 45bis.1(d)). If not established in English, the resulting supplementary international search report will be translated into English by the IB.
In many cases, requests for supplementary search will be filed once the applicant has received the main international search report. In any event, the applicant must file a request for a SIS prior to the expiration of 22 months from the priority date. If the request is received after the expiration of this time limit, it will be considered not to have been submitted and there are no provisions to extend this time limit. The requests for SIS must be submitted directly to the IB and not to an individual SISA. There is a supplementary search handling fee to cover the costs of the IB and a supplementary search fee set by each SISA. These fees must be paid to the IB in Swiss francs within one month of filing the request for SIS. Applicants from certain States may be eligible for a 90% reduction in the supplementary search handling fee.
