1843.02 Certain Subject Matter Need Not Be Searched [R-07.2022]
PCT Rule 39
Subject Matter under Article 17(2)(a)(i)
39.1 Definition
No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:
- (i) scientific and mathematical theories,
- (ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
- (iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,
- (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
- (v) mere presentations of information,
- (vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.
PCT Rule 66
Procedure Before the International Preliminary Examining Authority
66.1 Basis of the International Preliminary Examination
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- (e) Claims relating to inventions in respect of which no international search report has been established need not be the subject of international preliminary examination.
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PCT Rule 67
Subject Matter Under Article 34(4)(a)(i)
67.1 Definition
No International Preliminary Examining Authority shall be required to carry out an international preliminary examination on an international application if, and to the extent to which, its subject matter is any of the following:
- (i) scientific and mathematical theories,
- (ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
- (iii) schemes, rules, or methods of doing business, performing purely mental acts, or playing games,
- (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
- (v) mere presentations of information,
- (vi) computer programs to the extent that the International Preliminary Examining Authority is not equipped to carry out an international preliminary examination concerning such programs.
The USPTO has declared that it will search and examine, in international applications, all subject matter searched and examined in U.S. national applications. However under PCT Rules 39, 43bis.1(b), 66.1(e) and 67.1, no International Searching Authority is required to perform an international search or to establish a written opinion concerning novelty, inventive step and industrial applicability where the international application relates to any of the following subject matters:
- (A) Scientific and mathematical theories;
- (B) Plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes;
- (C) Schemes, rules or methods of doing business, performing purely mental acts or playing games;
- (D) Methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods;
- (E) Mere presentation of information; and
- (F) Computer programs to the extent the said Authority is not equipped to search prior art concerning such programs.
See PCT Rule 39. In addition, the examiner is not required to search the international application, to the extent that a meaningful search cannot be carried out, in certain cases where a nucleotide and/or amino acid sequence listing is not furnished in the required form, language and manner. See Administrative Instructions Section 513(c). However, the U.S. Patent and Trademark Office has declared that it will search and examine all subject matter searched and examined in U.S. national applications.
The applicant considering the filing of an international application may be well advised not to file one if the subject matter of the application falls into one of the above mentioned areas. If the applicant still does file, the International Searching Authority may declare that it will not establish an international search report. Accordingly, applicant should take into consideration which International Searching Authority (e.g., European Patent Office) is selected to conduct the international search. It is to be noted, nevertheless, that the lack of the international search report in such case will not have, in itself, any influence on the validity of the international application and the latter’s processing will continue, including its communication to the designated Offices.