6.1.9 Basis of the Search

Also in this Chapter:

• 6.1.1 Procedural Outline - PCT International Search

• 6.1.2 Introduction - International Searching​​​​​​​

• 6.1.3 Search Allocation and Preliminary Classification
• 6.1.4 Unity of Invention
• 6.1.5 Abstract and Title
• 6.1.6 Subjects to be Excluded from the Search
• 6.1.7 Claim Interpretation, Broad Claims, PCT Articles 5 and 6​​​​​​​
• 6.1.8 Search Strategy​​​​​​​
• 6.1.10 Non-Patent Literature
• 6.1.11 Search Procedure
• 6.1.12 Search Report and Notification Form Completion
• 6.1.13 Reissued, Amended or Corrected ISRs and ISOs
• 6.1.14 Priority Document
• 6.1.15 Foreign Patent Search Aids and Documentation
• 6.1.16 Assistance with Foreign Languages
• 6.1.17 Rule 91 Obvious Mistakes in Documents
• 6.1.18 Nucleotide and/or Amino Acid Sequence Listings
• 6.1.19 Annexes​​​​​​​

Key Legislation:

Regulations Under the PCT:

• Rule 4.18 Statement of Incorporation by Reference
• Rule 20.5 Missing Parts
• Rule 20.5bis(c) Erroneously Filed Elements and Parts
• Rule 20.6 Confirmation of Incorporation by Referenbce of Elements and Parts

​​​​​​​PCT ISPE Guidelines:

• para 15.10-15.11C Basis of the Search

Related Chapters:

• 6.1.17 Rule 91 Obvious Mistakes in Documents
• 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs

​​​​​​​There is no right to amend the application until after the international search has been established, consequently the international search must be carried out on the basis of the search copy of the application as transmitted to the International Searching Authority by the Receiving Office, except that obvious mistakes may be corrected (see 6.1.17 Rule 91 Obvious Mistakes in Documents ) [PCT/GL/ISPE/12 at paragraph 15.10].

Sheets marked with “Incorporated by Reference”

The application may contain later filed pages marked “INCORPORATED BY REFERENCE (Rule 20.6)”. These are pages containing missing parts or correct elements or parts which have been incorporated by reference from the priority document under Rules 4.18 and 20.6 by the Receiving Office. Such pages should be considered as originally filed and should be so indicated on the forms. In case the Examiner notices that the incorporated elements or parts were not completely contained in the priority document, then a corresponding remark is needed in item 5 of Box I of the ISO (see 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs). In such a case the search report may further include additional documents (“L”) which would be relevant if a re-dating of the application would be made [PCT/GL/ISPE/12 at paragraph 15.11].
If the examiner receives from the Receiving Office a notification of later filed pages (either marked “INCORPORATED BY REFERENCE (Rule 20.6)” as described above, or otherwise included in the international application following a change of the international filing date under Rule 20.5(c) or 20.5bis(c)) after the examiner has begun to draw up the ISR, the Examiner should still take these later filed pages into account.

Note that for the above scenario, PCT/GL/ISPE/12, Paragraphs 15.11A-15.11C provide for the examiner to issue an invitation to pay additional fees. However, this fee is not currently included in Australian Government’s ISA agreement with WIPO. Therefore, the examiner is not to issue an invitation to pay fees. If the agreement changes, this page will be updated.

Sheets marked with “Not to be Considered”

The file of the application may also contain sheets stamped “NOT TO BE CONSIDERED (RULE 20.5(e))”, “NOT TO BE CONSIDERED (RULE 20.5bis(e))”, or “NOT TO BE CONSIDERED (RULE 20.7)”. This means that these sheets were not allowed by the Receiving Office under the relevant provisions (for formal or substantive reasons) or that the applicant has withdrawn those parts in order to avoid re-dating of the application. Such sheets thus do not belong to the application documents and should be ignored for search and examination [PCT/GL/ISPE/12 at paragraph 15.11].

Sheets marked with “Erroneously Filed”

The application may also contain sheets stamped “ERRONEOUSLY FILED (RULE 20.5bis)”. These are the sheets that were erroneously filed by the applicant and have been superseded by the sheets marked “INCORPORATED BY REFERENCE (Rule 20.6)”, but remain in the international application pursuant to Rule 20.5bis(d). These sheets usually need not be taken into account for search and examination.