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Date Published

Generally the applicant should be given the opportunity to comment on the proposed search strategy in the circumstances of a restricted search due to broad claims and/or article 5/6 issues. This is an opportunity to correct any misinterpretations or to focus attention on the true nature of the inventive concept. It is not a mechanism to negotiate the search strategy and responsibility for determining the search strategy and any findings in relation to descriptive support remains with the examiner and 3 person search strategy team. The procedure to be followed is set out below.

Where in consultation with the search strategy team, the examiner considers that because of a clear non-compliance with the requirements of descriptive support, clarity or other requirements of the PCT, a meaningful search is not possible in relation to some or all of the claims, the following procedure should be followed:

  • The examiner, in consultation with the search strategy team, prepares a draft notification using PCT form 224 (“Communication in cases for which no other form is applicable”) briefly setting out the finding in relation to non-compliance with the PCT, the intention to limit the search to subject matter that may reasonably be searched noting the principles identified in Claims Lacking Clarity and Multitudinous Claims above and inviting comments within 7 days of dispatch.

Annex D.2 shows the level of detail required (using PERP code T1).

  • Examiners should telephone the attorney/applicant to advise that they intend to limit the search and that an informal invitation to comment will be sent to them. If the attorney wishes to immediately discuss the matter in detail the examiner should summarise the issues and note the comments made and may amend the notification accordingly or determine that no further opportunity to comment is required. A file note should be made in relation to all communications with the applicant or attorney.
  • The finalised informal invitation to comment is sent to the PCT Unit by clicking SUBMIT and dispatched to the attorney by the PCT unit
  • If a response is not received within 7 days, examiners are to proceed with a search based on the limited subject matter identified. Extensions will generally not be granted. However, if the applicant or attorney clearly requires further time to comment, for example, because the applicant is uncontactable and the attorney is unable to proceed without instruction, a further period may be allowed but the total period for comment should not exceed 14 days unless in exceptional circumstances
  • Where comments are received, the examiner and search strategy team will reconsider their finding on non-compliance and the proposed search strategy and proceed accordingly. The examiner is not required to respond to any comments provided or to further justify the search carried out. However Box VIII of the ISO should indicate the nature and reason for the limitation on the search and opinion.
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