Under the utilisation scheme (see Rule 141(1) and B‑XI, 9, as well as OJ EPO 2010, 410), for applications where a priority is claimed the applicant is expected to file a copy of the results of any search carried out by the office of first filing (for more details see A‑III, 6.12)
If the prior-art information of the office of first filing is made available before the search is completed, the search division checks these citations and evaluates their relevance to examination and in the definition of the search strategy.
Documents cited in the application under consideration are examined if they are cited as the starting point of the invention, as showing the state of the art, or as giving alternative solutions to the problem concerned, or when they are necessary for a correct understanding of the content of the application. However, when such citations clearly relate only to details not directly relevant to the claimed invention, they may be disregarded.
In the exceptional case that the application cites a document that is not published or otherwise not accessible to the search division, and the document appears essential to a correct understanding of the claimed invention to the extent that a meaningful search of at least part of it would not be possible without knowledge of the content of that document, the search division despatches an invitation under Rule 63 (see B‑VIII, 3) containing the following information:
In reply to this communication, the applicant can:
(a) either submit a copy of the document in question;
(b) or argue why the document in question is not essential for carrying out a meaningful search of the claimed invention, and/or indicate a part of the application whose subject-matter can be searched without knowing the content of the document in question.
If no copy of the document is received within the time limit according to Rule 63(1) and the applicant is unable to convince the search division in a timely response to the Rule 63(1) invitation that the document is not essential to facilitate a meaningful search, an incomplete search report or, where applicable, a declaration replacing the search report under Rule 63 is prepared (see B‑VIII, 3.2.1). This incomplete search report or declaration will be issued giving the following grounds:
(1) the non-availability of the document rendered the claimed invention insufficiently disclosed within the meaning of Art. 83; and
(2) the insufficient disclosure mentioned in (1) existed to such a degree that a meaningful search was not possible on at least part of the claimed invention (see B‑VIII, 3).
Where the applicant furnishes the document after the search report and the search opinion (if applicable, see B‑XI, 7) have been prepared, an additional search on that subject-matter originally excluded from the search may be carried out due to the correction of the deficiency which led to the incomplete search (see C‑IV, 7.2 C‑IV, 7.3).
However, applicants must be aware that information contained in documents referred to in the application can only be taken into account for sufficiency of disclosure pursuant to Art. 83 under the circumstances indicated in F‑III, 8.