7. Search-related issues in examination
7.3 7.2 Additional searches during examination
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A revised version of this publication entered into force. |
An additional search will sometimes be required either at the first stage of amendment or subsequently. This may arise for a number of reasons.
An additional search may be necessary:
(i)where a partial search taking the place of the search report under Rule 63 has been issued at the search stage after an invitation under Rule 63(1) (see B‑VIII, 3, B‑VIII, 3.1 and B‑VIII, 3.2), and subsequently the deficiencies which rendered a meaningful search impossible under Rule 63 have been corrected by amendment complying with Rule 137(5) (see H‑IV, 4.1.1 H‑II, 6.1) or successfully refuted by the applicant;
(ii)where a declaration that a meaningful search was not possible took the place of the search report under Rule 63, and the applicant successfully refuted the objections;
(iii)where the applicant successfully argues that a plurality of independent claims in the same category, which led to a limitation of the search report in accordance with Rule 62a (see B‑VIII, 4.1 and B‑VIII, 4.2), is in fact allowable according to the exceptions provided for in Rule 43(2) (see F‑IV, 3.2);
(iv)where a particular part of the application has not been searched because of an objection of lack of unity of invention, and the arguments put forward by the applicant have convinced the examining division that unity is given;
(v)where the claims have been so amended that their scope is no longer covered by the original search;
(vi)where a search report under Rule 61 was issued containing no prior art documents because the technical features were found to be notorious (see B‑VIII, 2.2.1) and the examining division does not share this opinion;
(vii)where no prior art document was cited for features which were considered to be part of the common general knowledge and the examining division does not share this opinion or the common general knowledge is challenged by the applicant (see G‑VII, 2 and G‑VII, 3.1);
(viii)exceptionally, where the applicant states that a mistake was made in the acknowledgement of prior art (see G‑VII, 5.1) or the examiner believes that material relevant to obviousness might be found in technical fields not taken into account during the search;
(ix)where the applicant has introduced a new priority claim after the date of filing (see C‑III, 6).
If the application has been filed under the PCT, the search report will be the international search report made under the PCT, which will be accompanied by a supplementary European search report, unless the Administrative Council has decided that a supplementary report is to be dispensed with (see E‑IX, 3.2). Both of these reports will have to be considered by the examiner when deciding whether any additional search is required.
In the case of a Euro-PCT application for which the EPO acting as ISA or SISA issued an incomplete search report or a declaration of no search (see PCT‑EPO Guidelines, B‑VIII, 1), an additional search may be necessary if the deficiencies underlying the limitation of the search have been corrected by amendment or successfully refuted by the applicant (see B‑II, 4.2 (ii)). Otherwise, the examining division will object to claims relating to subject-matter that was not searched by the EPO acting as ISA, referring to the EPC provision invoked for the limitation of the search, e.g. Art. 84 EPC. Rule 137(5), second sentence, cannot be invoked in that context.
For searches under Rule 164(2) see C‑III, 3.1 C‑III, 2.3.