PCT Rule 12bis — Submission by the Applicant of Documents Relating to Earlier — MPEP Index – BlueIron IP
PCT Rule 12bis Submission by the Applicant of Documents Relating to Earlier
Source: Patent Cooperation Treaty (PCT)BlueIron Update:
This page consolidates MPEP guidance interpreting PCT Rule 12bis, including 2 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
This section outlines the requirement for applicants to submit documents relating to an earlier search, ensuring that the International Searching Authority considers these results.
What this section covers
- The section covers the submission of documents related to an earlier search by the applicant under MPEP PCT Rule 12bis.
Key obligations
- Applicants must request the International Searching Authority to consider earlier search results under Rule 4.12.
- Compliance with Rule 12bis.1 is required for the submission of earlier search results.
- The earlier search results must be relevant and up-to-date to meet the requirements of Rule 12bis.
Practice notes
- Applicants should carefully review and select the most relevant earlier search results for submission to ensure compliance.
- Submitting outdated or irrelevant earlier search results may not be considered by the International Searching Authority, leading to potential delays.
Official MPEP § 12bis — Submission by the Applicant of Documents Relating to Earlier
Source: USPTOLast Modified: 10/30/2024 08:50:22
Rule 12 bis Submission by the Applicant of Documents Relating to Earlier Search
12 bis.1 Furnishing by the Applicant of Documents Related to Earlier Search in Case of Request under Rule 4.12
- (a) Where the applicant has, under Rule 4.12 , requested the International Searching Authority to take into account the results of an earlier search carried out by the same or another International Searching Authority or by a national Office, the applicant shall, subject to paragraphs (b) to (d), submit to the receiving Office, together with the international application, a copy of the results of the earlier search, in whatever form (for example, in the form of a search report, a listing of cited prior art or an examination report) they are presented by the Authority or Office concerned.
- (b) 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 copy referred to in paragraph (a), indicate the wish that the receiving Office prepare and transmit it to the International Searching Authority. Such request shall be made in the request and may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee.
- (c) 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 referred to in paragraph (a) shall be required to be submitted under that paragraph.
- (d) Where a copy referred to in paragraph (a) is available to the receiving Office or the International Searching Authority in a form and manner acceptable to it, for example, from a digital library, and the applicant so indicates in the request, no copy shall be required to be submitted under that paragraph.
12 bis.2 Invitation by the International Searching Authority to Furnish Documents Related to Earlier Search in Case of Request under Rule 4.12
- (a) The International Searching Authority may,
subject to paragraphs (b) and (c), invite the applicant to furnish to it,
within a time limit which shall be reasonable under the circumstances:
- (i) a copy of the earlier application concerned;
- (ii) where the earlier application is in a language which is not accepted by the International Searching Authority, a translation of the earlier application into a language which is accepted by that Authority;
- (iii) where the results of the earlier search are in a language which is not accepted by the International Searching Authority, a translation of those results into a language which is accepted by that Authority;
- (iv) a copy of any document cited in the results of the earlier search.
- (b) 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, or where a copy or translation referred to in paragraph (a) 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, no copy or translation referred to in paragraph (a) shall be required to be submitted under that paragraph.
- (c) 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 (a)(i) and (ii) shall be required to be submitted under those paragraphs.