4.2.2 Reply filed in time 

If applicants reply to the invitation under Rule 62a(1) in time by indicating an independent claim in a particular category that they want to have searched, the search division will carry out the search based on this claim.

It is also open to applicants to indicate more than one independent claim in the same category if these claims fall within the exceptions in Rule 43(2) (see F‑IV, 3.2). However, if the search division then finds that the indicated independent claims do not in fact fall within these exceptions, it will search only the one that comes first in numerical order.

Example

An invitation under Rule 62a(1) is sent for an application that contains independent product claims 1, 10 and 15. The applicant replies that independent product claims 10 and 15 fall within the exceptions in Rule 43(2) and indicates that these two claims should be searched. The search division disagrees, and so only claim 10 is searched.

See B‑VIII, 3.2.2 for the procedure followed where the applicant tries to file amendments.

Instead of indicating the independent claim or claims to be searched, applicants can reply to the invitation under Rule 62a(1) by simply arguing why they believe that the claims comply with Rule 43(2) (i.e. why the multiple independent claims in the same category fall within one or more of the exceptions in Rule 43(2)). If the search division is convinced by the applicant's arguments, it will issue a search report based on all the claims, and the consequences a limited search has at the examination stage will not apply. But if it is not convinced, it will issue a search report based only on the first independent claim in the category. The examining division has final responsibility for deciding whether an invitation under Rule 62a was appropriate.

Applicants can also reply to an invitation under Rule 62a by arguing against the findings there and ‒ as a main request ‒ asking the search division to search all the claims as filed and ‒ as an alternative, in case the search division is still not convinced ‒ indicating the independent claims they would like to have searched (see also H‑III, 3.2).

The procedure where applicants phone the search division to enquire about the course of action after an invitation under Rule 62a has been sent is as described above for the invitation under Rule 63 (see B‑VIII, 3.2.2).