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Guidelines for Examination

 
 
Table of Contents - Guidelines for Examination
Part B Guidelines for Search
Chapter II – General
4. Search report
4.3 Supplementary European searches
4.3.2 A supplementary European search report is required
4.3.2
A supplementary European search report is required 

According to decisions taken by the Administrative Council, a supplementary European search report including a search opinion pursuant to Rule 62 is drawn up (and the search fees reduced in cases (i) to (iii)) in respect of an international application for which:

(i)
the patent office of the USA, Japan, China, Australia, Russia or Korea was the International Searching Authority (OJ EPO 2005, 548; OJ EPO 2010, 133 and 141);
(ii)
the Swedish, Austrian or Spanish Patent Office was the International Searching Authority and where the international application was filed on or after 1 July 2005 and also where the International Searching Authority was the patent office of Finland and the international application was filed on or after 1 April 2005 or where the Nordic Patent Institute was the International Searching Authority (see OJ EPO 2005, 422).
(iii)
a supplementary international search report was drawn up by one of the European International Searching Authorities referred to in (ii) (OJ EPO 2009, 595; OJ EPO 2010, 316).
(iv)
an international search report was drawn up by an International Searching Authority other than one of those mentioned in points (i) to (iii) and other than the EPO.

For the applications mentioned under (i) to (iv), the supplementary European search is carried out in all the search documentation of the EPO. It is left to the Search Division's judgment whether a limitation as to the search documents is chosen. No precise limits can at present be set to these supplementary European searches since the documentation and search practice of these International Searching Authorities have not been fully harmonised in respect of the EPO.

As a general rule, the EPO should avoid any superfluous work and duplication of work and should rely on the efficiency and quality of the international searches to the largest extent possible. The EPO as designated Office requests the International Searching Authority or the Supplementary International Searching Authority to supply, together with the international search report, copies of the documents cited therein (Art. 20(3) PCT, see also Rule 44.3(a) PCT or Rule 45bis.7(c) PCT). When documents are cited that are not in one of the official languages of the EPO and the Search Division needs a translation into one of these languages, it should provide this itself (e.g. a patent family member in an official language of the EPO or, alternatively, an abstract of the document in an official language of the EPO, see B-VI, 6.2), unless it is able to obtain it from any other source, e.g. the applicant or the International Searching Authority.

The Search Division should consider the opinions on patentability expressed by the ISA, SISA and/or IPEA, whether contained (implicitly) in the search report or (explicitly) in the written opinion accompanying the search report. The Search Division is nevertheless free to deviate from any or all of these opinions when performing a supplementary European search and when preparing the search opinion.