Quick Navigation

Print
 

Guidelines for Examination

 
 
Table of Contents - Guidelines for Examination
Part B Guidelines for Search

Part B

Guidelines for Search

 

Contents
Chapter I – Introduction
1.
Purpose of Part B
2.
Search Division
2.1
Consultation with other examiners
2.2
Search Division consisting of more than one examiner
Chapter II – General
1.
Search and substantive examination
2.
Objective of the search
3.
Search documentation
4.
Search report
4.1
European searches
4.2
Additional European searches
4.3
Supplementary European searches
4.3.1
Dispensing with the supplementary European search report
4.3.2
A supplementary European search report is required
4.3.3
Application documents for the supplementary European search report
4.4
International (PCT) searches
4.5
International-type searches
4.6
Searches on national applications
Chapter III – Characteristics of the search
1.
Opinions of the Search Division
1.1
Opinions in relation to the search report
1.2
Opinions on matters relating to the limitation of the search
2.
Scope of the search
2.1
Completeness of the search
2.2
Effectiveness and efficiency of the search
2.3
Search in analogous fields
2.4
Search on the internet
3.
The subject of the search
3.1
Basis for the search
3.2
Interpretation of claims
3.2.1
Claims with explicit references to the description or drawings
3.3
Amended claims or missing parts (Rule 56)
3.3.1
General considerations
3.3.2
Specific rules applicable to Euro-PCT applications
3.4
Abandonment of claims
3.5
Anticipation of amendments to claims
3.6
Broad claims
3.7
Independent and dependent claims
3.8
Search on dependent claims
3.9
Combination of elements in a claim
3.10
Different categories
3.11
Subject-matter excluded from search
3.12
Lack of unity
3.13
Technological background
Chapter IV – Search procedure and strategy
1.
Procedure prior to searching
1.1
Analysis of the application
1.2
Formal deficiencies
1.3
Documents cited or supplied by the applicant
2.
Search strategy
2.1
Subject of the search; restrictions
2.2
Formulating a search strategy
2.3
Carrying out the search; types of documents
2.4
Reformulation of the subject of the search
2.5
Closest prior art and its effects on the search
2.6
End of search
3.
Procedure after searching
3.1
Preparation of the search report
3.2
Documents discovered after completion of the search
3.3
Errors in the search report
Chapter V – Preclassification (routing) and official classification of European patent applications
1.
Definitions
2.
Preclassification (routing and distribution)
3.
Incorrect preclassification
4.
Official classification of the application
5.
Classification of late-published search reports
6.
Classification when the scope of the invention is not clear (e.g. a partial search)
7.
Classification in cases of a lack of unity of invention
8.
Verification of official classification
Chapter VI – The state of the art at the search stage
1.
General
2.
State of the art – oral disclosure, etc.
3.
Priority
4.
Conflicting applications
4.1
Potentially conflicting European and international applications
4.2
National earlier rights
5.
Date of reference for documents cited in the search report; filing and priority date
5.1
Verification of claimed priority date(s)
5.2
Intermediate documents
5.3
Doubts as to the validity of the priority claim; extension of the search
5.4
Documents published after the filing date
5.5
Non-prejudicial disclosures
5.6
Matters of doubt in the state of the art
6.
Contents of prior-art disclosures
6.1
General remark
6.2
Citation of documents corresponding to documents not available or not published in one of the official EPO languages
6.3
Conflict between abstract and source document
6.4
Insufficient prior art disclosures
7.
Internet disclosures - technical journals
Chapter VII – Unity of invention
1.
General remarks
1.1
Partial European search report
1.2
Invitation to pay further search fees
1.3
Documents relevant only to other inventions
1.4
Assessment and possible review of the unity requirement
2.
Procedures in cases of lack of unity
2.1
Request for refund of further search fee(s)
2.2
Complete search despite of lack of unity
2.3
Supplementary European search
3.
Lack of unity and Rule 62a or Rule 63
Chapter VIII – Subject-matter to be excluded from the search
1.
General remarks
2.
Considerations relating to certain technical fields
2.1
Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body
2.2
Computer-implemented inventions and business methods
3.
No meaningful search possible
3.1
Invitation to indicate subject-matter for search
3.2
Reply to the invitation under Rule 63(1)
3.2.1
Failure to reply in time or no reply
3.2.2
Reply in time
3.3
The content of the extended European search report (EESR)
3.4
Applications to which Rule 63 applies which also lack unity
4.
More than one independent claim per category (Rule 62a)
4.1
Invitation to indicate which independent claim to search
4.2
Reply to the invitation under Rule 62a(1)
4.2.1
Failure to reply in time
4.2.2
Reply filed in time
4.3
The content of the extended European search report (EESR)
4.4
Cases under Rule 62a where claims fees are not paid
4.5
Applications to which Rule 62a applies which also lack unity
4.6
Treatment of dependent claims under Rule 62a
5.
Invitation under both Rule 62a(1) and Rule 63(1)
6.
Claims contravening Art. 123(2) or Art. 76(1)
Chapter IX – Search documentation
1.
General
1.1
Organisation and composition of the documentation available to the Search Divisions
1.2
Systematic access systems
2.
Patent documents arranged for systematic access
2.1
PCT minimum documentation
2.2
Unpublished patent applications
2.3
Search reports
2.4
Patent family system
3.
Non-patent literature arranged for systematic access
3.1
Periodicals, records, reports, books, etc.
4.
Non-patent literature arranged for library-type access
4.1
Composition
5.
Access to EPO documentation for the national patent offices
Chapter X – Search report
1.
General
2.
Different types of search reports drawn up by the EPO
3.
Form and language of the search report
3.1
Form
3.2
Language
3.3
Account of the search
4.
Identification of the patent application and type of search report
5.
Classification of the patent application
6.
Areas of technology searched
7.
Title, abstract and figure(s) to be published with the abstract (as indicated on supplemental sheet A)
8.
Restriction of the subject of the search
9.
Documents noted in the search
9.1
Identification of documents in the search report
9.1.1
Bibliographic elements
9.1.2
"Corresponding documents"
9.1.3
Languages of the documents cited
9.1.4
Supplementary European search report
9.2
Categories of documents (X, Y, P, A, D, etc.)
9.2.1
Particularly relevant documents
9.2.2
Documents defining the state of the art and not prejudicing novelty or inventive step
9.2.3
Documents which refer to a non-written disclosure
9.2.4
Intermediate documents
9.2.5
Documents relating to the theory or principle underlying the invention
9.2.6
Potentially conflicting patent documents
9.2.7
Documents cited in the application
9.2.8
Documents cited for other reasons
9.3
Relationship between documents and claims
9.4
Identification of relevant passages in prior art documents
10.
Authentication and dates
11.
Copies to be attached to the search report
11.1
General remarks
11.2
Electronic version of document cited
11.3
Patent family members; the "&" sign
11.4
Reviews or books
11.5
Summaries, extracts or abstracts
12.
Transmittal of the search report and search opinion
Chapter XI – The search opinion
1.
Search opinion is part of the EESR
1.1
The search opinion
1.2
Position of the Examining Division
2.
Basis of the search opinion
2.1
Applications containing missing parts of description and/or drawings filed under Rule 56 EPC or Rule 20 PCT
2.2
Applications containing claims filed after the accorded date of filing
3.
Analysis of the application and content of the search opinion
3.1
The examiner's dossier
3.2
Reasoned objections
3.3
Comments and amendments in response to the search opinion
3.4
Extent of first analysis
3.5
Contribution to the known art
3.6
EPC requirements
3.7
Examiner's approach
3.8
Making suggestions
3.9
Positive opinion
4.
Priority claim and the search opinion
4.1
Use of "P" and "E" documents in the search opinion
5.
Unity in relation to the search opinion
6.
The search opinion in cases of a limitation of the search
7.
No search opinion is issued
8.
Reaction to the extended European search report (EESR)
9.
Art. 124 and the utilisation scheme