4. Consequences of a restriction of the search
4.1 Submissions prompted by a restriction of the search or a declaration that no search is possible
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A revised version of this publication entered into force. |
If the search covered only some claims or part of one or more claims (see GL/PCT‑EPO B‑VIII), only the subject-matter which has been searched - as indicated in the ISR (GL/PCT‑EPO B‑X, 8) and/or in the WO‑ISA (GL/PCT‑EPO B‑XI, 6) - can be the object of the international preliminary examination. It should always be made clear which claims have been examined.
After a restriction of the search, either because subject-matter is excluded from the search or because a meaningful search is not possible, or after a declaration that no search at all is possible, the applicant's reply may, at subsequent stages of the procedure, challenge the ISA's findings.
However, the IPEA has no responsibility for actions taken by the ISA, and there is no provision in the PCT for an IPEA review of, or for an appeal against, such an ISA decision.
Any written arguments from the applicant relating to the completeness of the search are not to be treated as a communication with the IPEA, unless the applicant's reply contains a complaint against the findings at the search stage when the EPO acted as ISA (see GL/PCT‑EPO C‑IX, 4).
If the reply to the WO‑ISA contains arguments challenging the findings at the search stage related to the restriction of the search, the examiner will mention in the WO‑IPEA or IPER (under Section III) that the findings of the ISA cannot be reviewed by the IPEA.
Art. 17(2)(a)(i) and (ii)
If the applicant phones the examiner to discuss the issue orally, the examiner will inform the applicant that this is a matter which is the responsibility of the ISA under Chapter I of the PCT and that the procedure before the ISA is closed.
If the reply contains amended claims introducing unsearched matter, the applicant will be informed in the IPER (under Section III) that an opinion cannot be given for unsearched matter.
As explained in GL/PCT‑EPO B‑VIII, 1, an additional search may be made after entry into the European phase, in the examination phase, if the reasons for restricting the search can be overcome (see also GL/EPO C‑IV, 7.3 GL/EPO C‑IV, 7.2). This additional search is at no additional cost to the applicant.