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1843 MANUALOF PATENT EXAMIN1NG PROCEDURE
does not involve an inventive step (i.e., that it is or is
not obvious), and if the making available to the public
occurred prior to the international filing date. For further
details, see PCT Rnle 33. The international
search is made on the basis of the claims, with due
regard to the description and the drawings (if any)
contained in the international application (pCT Article
15(3). Categories of relevant prior art as
described in PCT Rule 33.1 are indicated in the search
report under the section "Documents Considered To
Be Relevant." The various letter designations are
defined on the search report form (see PCT/ISN21O).
It is pointed out, for example, that:
(A) A category X reference defeats novelty or
defeats inventive step when the reference is considered
alone;
(B) A category Y reference is said t() defeat or
refute inventive step when combined with one or
more other such references - the combination being
obvious to a person skilled in the art;
(C) A category A reference is one showing the
general state of the art but would not be considered to
be of particular relevance;
(0) A category E reference is an earlier document
which is published on or after the international filing
date;
(E) A category P reference is a document published
prior to the international filing date but later
than the claimed priority date (commonly called an
intervening reference).
These are the most commonly used categories of
references;
The examiner should not view these categories
strictly in the sense that they have a direct comparison
to U.S. application of prior art references, for example,
a category X reference defeats novelty and in that
sense, it is closely analogous to U.S. consideration of
35 U.S.c. 102 prior art. However, a category X referencecan
a1sodefeatinventive step which is analogous
to U.S. consideration of 35 U,S,c. 103 prior art.
DOCUMENTS SEARCHED BY THE INTERNA­
TIONAL SEARCHING AUTHORITY
The International Searching Authority must
endeavor to discover as much ofthe relevant prior art
as its facilities permit (pCT Article 15(4», and, in any
August2001
1800-48
case, must consult the so-called "minimum documentation"
(PCT Rule 34).
CERTAIN SUBJECT MATTER NEED NOT BE
SEARCHED
The USPTO has declared that it will search and
examine, in international applications, all subject matter
searched and examined in U'S. national applications.
However under PCT Rule 39, 11.0 International
Searching Authority is required to perforiIJ. an international
search where the international application
relates to any of the following subjectmatters:
(A) Scientific and mathematical theories;
(B) Plant or animal varieties of essentially biological
processes for the production of plants and animals,
other than microbiological processes and the
products of such processes; .
(C) Schemes, rules or methods of doing business,
performing purely mental acts or playing games;
(0) Methods for treatment of the human or animal
body by surgery or therapy, as well as diagnostic
methods;
(E) Mere presentation of information; and
(F) Computer programs to the extent that it, the
said Authority is not equipped to. search prior art
(pCT Article 17(2)(a)(i) and PCT Rule 39).
The applicant considering the filing of an international
application may be well advised not to file one
ifthe subject matter of the application falls into one of
the above mentioned areas. If he or she still does file,
the International Searching Authority may declare
that it will not establish an international search report.
Accordingly, applicant should take into consideration
which International Searching Authority (e.g., European
Patent Office) he or she selects to conduct the
international search. It is to be noted, nevertheless,
that the lack of the international search report in such
case will not have, in itself, any influence on the
validity of the international application and the latter's
processing will continue, including its communication
to the designated Offices.
The USPTO has declared that it will search and
examine, in international applications, all subject matter
.searched and examined in U.S. national applications.