Upon filing the international patent application, an international search is conducted on the basis of the claims, with due regard to the description and the drawings (if any) to discover relevant prior art for the invention. The international search (IS) is carried out by an International Searching Authority (ISA) for the international patent application filed with a Receiving Office (RO). Each receiving Office (except the International Bureau as receiving office) specifies one or more International Searching Authorities as competent to carry out international searches on international applications filed with it. For some receiving offices, different International Searching Authorities are competent depending on the language in which the international application is filed or, where the international application is filed in a language accepted by the receiving Office but not by the International Searching Authority, translated. In case several International Searching Authorities are specified as competent by the receiving Office, the applicant may choose between them (subject to any such language restriction).
The international search will usually be carried out on the basis of the application containing the correct elements or parts (complete application). In case if the application contains certain incorrect or missing parts, they will not be considered for the purpose of international search. If the International Searching Authority considers that the description, the claims or the drawings fail to comply with the prescribed requirements to such an extent that a meaningful search cannot be carried out, it may declare that it will not establish a search report.
The ISA approves the title and abstract of the application and ensures that the application relates to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept. However, the ISA is not required to perform an international search on claims which relate to any of the following subject matter:
- scientific and mathematical theories,
- plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
- schemes, rules or methods of doing business, performing purely mental acts or playing games,
- methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
- mere presentation of information, and
- computer programs
to the extent that the Authority is not equipped to search prior art concerning such programs. If the International Searching Authority is not required to search any of the claims, it may declare that it will not establish an international search report. However, the lack of an international search report in such a case does not, in itself, have any influence on the validity of the international application.
The international search report contains, among other things, the citation of the documents considered relevant, the classification of the subject matter of the invention and an indication of the fields searched as well as any electronic database searched. Further, the ISA provides a preliminary and nonbinding written opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable.
International Preliminary Examining Authority (IPEA)
The international preliminary examination is an optional part of the processing of an international patent application to obtain a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. It is carried out by an IPEA at the request of the applicant for use before the “elected” Offices. The international preliminary report on patentability gives the applicant the opportunity to evaluate the chances of obtaining patents in elected Offices before incurring the expense and trouble of entering the national phase. Moreover, the result that the national phase in each elected State is normally delayed until the expiration of 30 months from the priority date due to such an examination demand provided that the demand is submitted before the expiration of 19 months from the priority date.