5.2 Exemptions from top-up search 

As a general rule, a top-up search will be conducted for all the claims forming the basis for the Chapter II examination, as indicated in boxes I and III of the WO/IPER.

A top-up search is not conducted on:

(a)subject-matter not searched by the ISA; 

(b)non-unity cases – inventions for which additional search fees were paid, but not additional examination fees; 

(c)subject-matter which, although not excluded from the search, is excluded from preliminary examination; 

In addition to what is mentioned in Rule 66.1ter PCT, the top-up search may be refused or limited by the EPO as IPEA:

(d)where amendments contain added matter; 

(e)where there is no letter explaining the basis for amendments and/or indicating what has been amended in the application; 

(f)where the EPO as ISA would not cite any documentary evidence as to the relevant state of the art (e.g. in case of "notorious knowledge" in the field of computer-implemented inventions). 

In case (d) above, the examiner will perform the top-up search based on either the previous set of application documents or the amended set, ignoring the added subject-matter. In case (e) above, the same applies to unsupported amendments (see GL/PCT‑EPO C‑III, 4).

Where a top-up search is made for some claims or part of claims, there is no indication of:

– which claims are not covered by the top-up search (this should be derivable from the indications in Sections I and III of the WO/IPER); or 

– why no or only a partial top-up search has been made.