Are there any exceptions to submitting copies of earlier search results or applications?
Yes, there are several exceptions to the requirement of submitting copies of earlier search results or applications when requesting consideration of an earlier search in a PCT application. According to MPEP 1819, which cites PCT Rule 12bis.1, the following exceptions apply:
- Same Office Exception:
“Where the earlier search was carried out by the same Office as that which is acting as the receiving Office, the applicant may, instead of submitting the copies referred to in paragraphs (a) and (b)(i) and (iv), indicate the wish that the receiving Office prepare and transmit them to the International Searching Authority.”
- Same ISA Exception:
“Where the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, no copy or translation referred to in paragraphs (a) and (b) shall be required to be submitted under those paragraphs.”
- Substantially Same Application Exception:
“Where the request contains a statement under Rule 4.12(ii) to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language, no copy or translation referred to in paragraphs (b)(i) and (ii) shall be required to be submitted under those paragraphs.”
- Availability Exception:
“Where a copy or translation referred to in paragraphs (a) and (b) is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library or in the form of the priority document, and the applicant so indicates in the request, no copy or translation shall be required to be submitted under those paragraphs.”
These exceptions can simplify the process for applicants and reduce redundant document submissions in certain situations.
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