6. Claims contravening Art. 123(2) or Art. 76(1)

If the claims on which the search is to be based were filed after the filing date or under Rule 58, they are not part of the application documents "as originally filed". Similarly, the supplementary European search on a Euro-PCT application is sometimes based on amended claims (see B‑III, 3.3.1). In either case, before starting the search, the search division checks whether or not these claims add any subject-matter that goes beyond what was in the application "as originally filed" (see also A‑III, 15). For Euro-PCT applications, this means the PCT application as originally filed.

If the claims contravene Art. 123(2), the search division will face one of the following situations:

(a)there are doubts about whether an objection can be raised (e.g. the amendment relies on common general knowledge and the search division is unsure whether the introduced term can be based on this) and/or the amendment does not significantly change the scope and subject-matter of the search: the search division then searches the claims as they are. 

(b)there are certain individual features in the claims that clearly contravene Art. 123(2): the search division then ignores these features when carrying out the search.

(c)there are substantial non-allowable amendments in the claims: the search division may then need to issue an invitation under Rule 63(1) before starting the search (see B‑VIII, 3(iv)). Depending on the reply to the invitation, it may issue a partial search report or even a declaration replacing the search report under Rule 63. In deciding what to include in the search and what to exclude from it, it refers to how the invention is defined in the description.

A similar problem can also arise when a divisional application is filed and the amended claims do not meet the requirements of Art. 76(1): the same criteria as described in steps (a) to (c) above are then applied.

In any case, the search opinion will include an objection under Art. 123(2) or Art. 76(1) and give the reasons for limiting the scope of the search.