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6.1.6 Subjects to be Excluded from the Search

Date Published

PCT Article 17(2)(a)

The said Authority shall so declare and shall notify the applicant and the International Bureau that no international search report will be established if the International Searching Authority considers:

  • that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search; or
  • that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out.

The regulation referred to in PCT Art 17(2)(a)(i) is PCT Rule 39.1. Therefore the first requirement for a declaration to be issued is that the subject matter must be as defined in PCT Rule 39.1.

PCT Rule 39.1 Definition

No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:

  • scientific and mathematical theories;
  • plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes;
  • schemes, rules or methods of doing business, performing purely mental acts or playing games;
  • methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods;
  • mere presentations of information; or
  • computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.

Even though PCT Rule 39.1 defines the subject matter an ISA is not required to search, ISA/AU will nevertheless search such subject matter if it is searched under the Australian national grant procedures—see Annex C of the Agreement below.

In such cases, there may be instances where the substance of the claimed invention is such that there is a high likelihood of patentability issues arising in national prosecution. In these instances, a comment should be provided in Box VIII of the ISO (for example, see PERPs T60-T61). It is noted however that such comments are only appropriate when neither the claims nor the entire description, from which an amendment to the claims is possible, contain material that is considered patent eligible under Australian law.

Agreement with WIPO (IB)

Agreement between the Government of Australia and the International Bureau of the World Intellectual Property Organization in relation to the functioning of the Australian Patent Office as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty (as in force from January 1, 2019)* can be accessed at:


Annex C Subject Matter Not Excluded from Search or Examination

The subject matter set forth in Rule 39.1 or 67.1 which, under Article 4 of the Agreement, is not excluded from search or examination, is the subject matter which is searched or examined under Australian national grant procedure.

Effect of Annex C of the Agreement with WIPO (IB)

As far as ISA/AU is concerned, the "excluded subject matter" must be defined under PCT Rule 39.1 and must be such that it will not be searched or examined under Australian national grant procedures. Further information about PCT Rule 39.1 is provided in Chapter 9 of the International Search and Preliminary Examination (ISPE) Guidelines issued by WIPO. Further information about the subject matter not searched or examined under the Australian national grant procedures is provided in 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture).

Discussion and confirmation

Where the examiner considers that any of the claims of an international application are directed to the matter defined in PCT Rule 39.1 and would not be searched under national grant procedures (see 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture)), then this must be discussed with a senior examiner and be confirmed by the supervising examiner. The procedure then differs depending upon whether the subject matter of the entire international application is "excluded subject matter" (and therefore no search will be carried out) or whether a search report will be established in relation to the international application.

Where a declaration Article 17(2)(a)(i) is issued …

If it is decided the international application is directed to "excluded subject matter" and that no search is to be carried out:

  • The examiner will complete form PCT/ISA/203 (Declaration of Non-Establishment of International Search Report, see Annex D.1);
  • The examiner will submit the completed form and case file for supervision by the supervising examiner;
  • The supervising examiner is the "Authorised Officer" for this declaration;
  • The relevant Assistant General Manager must be notified by the supervising examiner before the declaration is despatched;
  • A partial refund of $1500 of the search fee in accordance with the guidelines in Annex S must also be actioned. The form used for this is PCT/ISA/213 (Notification for Refund of Search Fee); and
  • An ISO must also always be completed and despatched with the declaration.

Where a declaration under PCT Article 17(2)(a)(i) is not issued

If it is decided that it is not appropriate to issue a declaration under PCT Art 17(2)(a)(i), a search must be performed in relation to the subject matter that is not "excluded subject matter". The usual procedures for the ISR and ISO are to be followed in this case.

Amended Reasons

Amended Reason Date Amended

Published for testing

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