What documents must be submitted when requesting consideration of an earlier search?
When requesting consideration of an earlier search in a PCT application, the applicant generally needs to submit certain documents. According to MPEP 1819, which cites PCT Rule 12bis.1(a):
“The applicant shall, subject to paragraphs (c) to (f), 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.”
Additionally, the International Searching Authority (ISA) may request the following documents:
- A copy of the earlier application
- A translation of the earlier application (if in a language not accepted by the ISA)
- A translation of the earlier search results (if in a language not accepted by the ISA)
- Copies of documents cited in the earlier search results
However, there are exceptions to these requirements, such as when the earlier search was carried out by the same Office acting as the receiving Office or the same ISA. In such cases, the applicant may not need to submit copies of certain documents.
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