In addition to excluded subject matter, an ISA is not required to conduct a search where the description, claims or drawings fail to comply with the prescribed requirements of the PCT, such as clarity or descriptive support, to the extent that a meaningful search cannot be carried out. The term “meaningful search” means a search that within reason is complete enough to determine whether the claimed invention complies with the substantive requirements, that is, the novelty, inventive step, and industrial applicability requirements, and/or the sufficiency, support and clarity requirements of Articles 5 and 6.

In most cases the description, claims and drawings will be understood sufficiently for at least a limited search to be conducted.

A finding of “no meaningful search” should be limited to exceptional situations in which no search at all is possible for a particular claim, for example, where the description, the claims, or the drawings are totally unclear.

These examples relate to exceptional situations where, due to non-compliance of the application with the prescribed requirements, all or some of the claims cannot be meaningfully searched at all. The following is an example:

Claim 1: “My invention is worth a million dollars.”

Claim 1 is the only claim in the application. The description does not provide sufficient information about the invention to determine the subject matter to which the claim might reasonably be expected to be directed after it had been amended.

Since no claim can be meaningfully searched at all, since no likely amendment can be determined to overcome the non-compliance, the International Searching Authority makes a declaration in accordance with Article 17(2)(a)(ii) (Box II of the International Search Report, Box III of the Opinion). When only some of the claims cannot be meaningfully searched at all, however, an indication is made in the international search report in accordance with Article 17(2)(b) to this effect whereas the other claims will be searched as usual.

For cases where a meaningful search of all or some of the claims is possible, for example by taking into account a likely amendment to overcome the non-compliance, then such a search must be carried out along the procedural lines set out at 6.1.8.4 Search Considerations (see also 4.4.2.3 Broad Claims, 6.1.7.2.2 Types of Broad Claims, and Annex H). This is the case for broad claims which may or may not be considered to be fully supported by the description.

The search should be performed recognizing that the non-compliance may have to be taken into account for determining the extent of the search. In other words, it is appropriate to limit the search to matter that is supported by the description and is directed to the inventive concept and to which the claims would be reasonably expected to be directed after amendment, taking into account the description and drawings and the relevant common general knowledge. [Article 6, Article 15(3), Rule 33.3, PCT/GL/ISPE/12 at Chapter 9; see also 6.1.8.4 Search Considerations.]

In practice this may mean that only supported claims are searched or that the claims are searched to the extent to which they are supported, with additional limitations drawn from the description of the inventive concept and embodiments as appropriate. Examiners should however be cautious of unduly limiting the scope of the search by focussing only on particular preferred embodiments. Reference should be made to the examples in Chapter 9 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/12).

The extent of the search should be clearly indicated by specifying the keywords, sequences or sub-structures used in the ISR under “B. FIELDS SEARCHED” (see 6.1.12.4 Fields Searched). Additional comment under Box VIII in the ISO as to the extent of the search is unnecessary, unless such comment is made in the context of comments on Articles 5/6 (sufficiency, clarity, descriptive support).