PCT Rule 41
Taking into Account Results of Earlier Search
41.1 Taking into Account Results of Earlier Search
- (i) the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, the International Searching Authority shall, to the extent possible, take those results into account in carrying out the international search;
- (ii) the earlier search was carried out by another International Searching Authority, or by an Office other than that which is acting as the International Searching Authority, the International Searching Authority may take those results into account in carrying out the international search.
37 CFR 1.104 Nature of examination.
- (a) Examiner’s action.
- (3) An international-type search will be made in all national applications filed on and after June 1, 1978.
- (4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in § 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.
PCT Rule 4.12 provides that the applicant may request that the results of an earlier international, international-type or national search carried out by the same or another International Searching Authority or by a national Office be used in establishing an international search report on such international application.
See MPEP § 1819. An international-type search is conducted on all U.S. nonprovisional applications filed after June 1, 1978.
When specifically requested by the applicant, the examiner is required to prepare an international search report taking into account the results of an earlier search. The examiner can determine whether applicant has requested the ISA/US to use the results of an earlier search by inspecting Box No. VII of the PCT Request. Box No. VII of the Request also allows applicant to indicate that certain documents relating to the earlier search are either available to the Authority or are being transmitted thereto.
Where the applicant has requested the United States International Searching Authority (ISA/US) to take into account earlier search results from a foreign Office and where a copy of the earlier search results (and a translation into English where the search results are in a foreign language) and copies of the documents cited therein (other than copies of U.S. patents and U.S. patent application publications) have been provided, the examiner shall take into account such earlier search results. Where the earlier search results (including any required translation thereof) or any copies of the documents cited therein (other than copies of U.S. patents and U.S. patent application publications) have not been furnished and therefore are not of record in the file, whether the earlier foreign Office search results will be taken into account is at the examiner’s discretion.
It is emphasized that when taking into account the results of an earlier search, the examiner is not bound by the results of the earlier search. The process of taking into account earlier search results consists of a cursory review of the provided results, followed by a more comprehensive inspection of the cited references if warranted. The forms used in preparing the international search report do not provide for indicating either that the results of an earlier search have been taken into account or the extent to which the results of an earlier search have been taken into account and, accordingly, the examiner need not make such indications in the international search report.