6.1.7.5 Procedure for Informal Communication with the Applicant

Also in this Chapter:

• 6.1.7.1 Claim Interpretation According to the PCT Guidelines

• 6.1.7.2 Broad Claims

• 6.1.7.3 PCT Articles 5 and 6

• 6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims​​​​​​​

Key Legislation:

Patent Cooperation Treaty (PCT):

• Article 5 The Description

• Article 6 The Claims

Related Chapters:

• 6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims

• Annex D

• RIO - Create Correspondence Task

On this Page

• Introduction

• Procedure

  • Prepare a PCT/ISA/224 notification

  • Contact the applicant

  • Send the invitation

  • Allow time for the applicant to respond

  • Consider the applicant’s response

Introduction

Generally, the applicant should be given the opportunity to comment on the proposed search strategy of a restricted search (due to broad claims and/or Article 5/6 issues). This is an opportunity for the applicant to correct any misinterpretations or to focus attention on the true nature of the inventive concept. The opportunity to comment is not a mechanism to negotiate the search strategy. Responsibility for determining the search strategy and any findings in relation to descriptive support remains with the examiner and 3-person search strategy team.

Procedure

The following procedure applies when the examiner (in consultation with the search strategy team), considers that the following criteria apply:

• That there is 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.

1. Prepare a PCT/ISA/224 notification

The examiner — in consultation with the search strategy team — prepares a draft notification using form PCT/ISA/224 ('Communication in cases for which no other form is applicable,' see RIO for Patents Manual (Create Correspondence Task)). This notification briefly sets 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 6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims

• An invitation for comments within 7 days of dispatch

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

2. Prepare a PCT/ISA/224 notification

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 either 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.

3. Send the invitation

The finalised informal invitation to comment is dispatched to the attorney by clicking Submit Task.

4. Allow time for the applicant to respond

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 a further period may be allowed. For example, this may occur because the applicant is uncontactable and the attorney is unable to proceed without instruction. The total period for comment should not exceed 14 days unless in exceptional circumstances. 

5. Consider the applicant’s response

If 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.