6.1.7.2.1 Introduction Broad Claims

Date Published

Also in this Chapter:

Key Legislation:

Patent Cooperation Treaty (PCT):

Regulations under the PCT:

  • Rule 33.3 Orientation of the International Search

PCT ISPE Guidelines:

  • Chapter 9 Exclusions from, and Limitations of, International Search and International Preliminary Examination

Introduction

An International Search Authority (ISA) is not required to conduct a search when a meaningful search cannot be carried out. This can result from when the description, claims, or drawings fail to comply with the prescribed requirements of the PCT, such as clarity or descriptive support (in addition to excluded subject matter). The term ‘meaningful search’ means a search that (within reason) is complete enough to determine whether the claimed invention complies with the substantive requirements:

  • Novelty, inventive step, and industrial applicability requirements

  • 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.

No meaningful search can be carried out

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.

In addition, 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. 

Examination practice

Since no claim can be meaningfully searched at all and no likely amendment can be determined to overcome the non-compliance, the ISA makes a declaration in accordance with Article 17(2)(a)(ii). The declaration is reported in Box II of the International Search Report (ISR) and Box III of the International Search Opinion (ISO).

However, when only some of the claims cannot be meaningfully searched at all, the ISA makes an indication in the ISR in accordance with Article 17(2)(b) to this effect. The ISA searches the other claims as usual.

When a meaningful search can be carried out

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 the ISA must carry out such a search 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.

Determining the extent of the search

The ISA should carry out the search 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

  • Directed to the inventive concept

  • Reasonably expected to be directed in the claims after amendment, taking into account the description and drawings and the relevant common general knowledge.

See also: Article 6, Article 15(3), Rule 33.3, PCT/GL/ISPE/12 at Chapter 9, and 6.1.8.4 Search Considerations.

Examination practice

In practice this may mean that either:

  • Only supported claims are searched.

  • 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. Examiners should refer 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, or descriptive support).

Amended Reasons

Amended Reason Date Amended

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