How does the USPTO handle earlier search results from foreign offices in PCT applications?

The United States Patent and Trademark Office (USPTO), when acting as the International Searching Authority (ISA/US), handles earlier search results from foreign offices in PCT applications as follows:

1. If the applicant has requested the ISA/US to consider earlier foreign search results.
2. If a copy of the earlier search results and an English translation (if necessary) are provided.
3. If copies of cited documents (except U.S. patents and U.S. patent application publications) are provided.

MPEP 1852 states:

“Where the applicant has requested the United States International Searching Authority (ISA/US) to take into account earlier search results from a foreign Office and where a copy of the earlier search results (and a translation into English where the search results are in a foreign language) and copies of the documents cited therein (other than copies of U.S. patents and U.S. patent application publications) have been provided, the examiner shall take into account such earlier search results.”

If the required documents are not provided, the examiner has discretion on whether to consider the earlier foreign office search results. The examiner is not bound by the results of the earlier search but uses them as a starting point for the international search.

To learn more:

• USPTO
• Foreign Search Results
• PCT Applications
• International Searching Authority
• Patent Examination