1.3 Documents cited or supplied by the applicant 

Under the utilisation scheme (see Rule 141(1) and B‑XI, 9, as well as OJ EPO 2010, 410), applicants whose application claims a priority are 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 found by the office of first filing is made available before the search has been completed, the search division will check the citations and assess whether they are relevant for examination and for defining the search strategy.

The search division will also look at documents cited in the application if they are referred to as the starting point of the invention, as showing the state of the art or as providing alternative solutions to the problem concerned or if the application's content cannot be properly understood without them. But it can disregard them if they clearly relate only to details not directly relevant to the claimed invention.

In the exceptional case that the application cites a document that has not been published or is otherwise unavailable to the search division, and it appears to be so essential to properly understanding the claimed invention that a meaningful search on at least part of it would not be possible without knowing what is in it, the search division will send an invitation under Rule 63 (see B‑VIII, 3) that specifies:

(i)which document is needed 

(ii)why it is needed 

(iii)what will happen if it is not submitted in time (see below). 

The applicant can respond by:

(a) either submitting a copy of the document 

(b) or arguing why the document is not needed for a meaningful search and/or indicating a part of the application whose subject-matter can be searched without knowing what is in the document. 

If the applicant does not submit a copy of the document ‒ or convince the search division that it is not needed for a meaningful search ‒ within the time limit under Rule 63(1), the search division will issue a partial search report or, where applicable, a declaration replacing the search report under Rule 63 (see B‑VIII, 3.2.1) on the following grounds:

(1) because the document was not available, the claimed invention had to be regarded as insufficiently disclosed within the meaning of Art. 83 and

(2) the invention was so insufficiently disclosed that it was impossible to carry out a meaningful search on at least part of it (see B‑VIII, 3).

If the applicant submits the document after the search report and the search opinion (if applicable ‒ see B‑XI, 7) have been drawn up, the examining division may later carry out an additional search on the originally excluded subject-matter in view of the correction of the deficiency which led to the incomplete search (see C‑IV, 7.3).

However, applicants should bear in mind that information in documents referred to in their application can only be taken into account for sufficiency of disclosure under Art. 83 in the circumstances described in F‑III, 8.