To: Applicants, Patent Attorneys, Attorneys
From: Dr. Meir Noam, Commissioner of Patents, Designs and Trademarks
Re: Using Previous Prior Art Searches for International Applications
1. In order to improve the service provided to the users, the patent authorities´s examinaers will prepare, to the request of the applicant, in addition to the examination report, a search report in Hebrew language in a form similar to the search reports prepared by the international search authorities, which will be enclosed to the exmination report. This service will be provided for each application filed in Israel as a first application.
2. As part of the amendments to the PCT convention, entered into force on July 1, 2008, the applicant is allowed to request the International Searce Authority (ISA), when performing the international search, to take into account the results of any previous search conducted by that authority, another international search authority, or any national office (Rule 4.12 of the PCT regulations).
3. It should be emphesized that the ISA is allowed, but is not obligated, to take into account, the prior art search - unless it has been performed by the ISA (Rule 41.1 of the PCT regulations).
4. In a case that the applicant wishes to follow up rule 4.12 of the PCT regulations, he should file to the receiving office, together with the international application, a copy of the previous search, in any form in which it was presented by the authority or office which conducted the search (e.g. a form of a search report, a list of the prior art which was cited, or an examination report).
5. The ISA is allowed to demand the applicant to provide documents which are detailed in regulation 12bis. When the prior art search was made by the office which operates as a receiving office, the applicant is allowed, instead of providing the documents required by rule 12bis(b)(i) (a copy of the application filed to the patent authority on which the search was made), to request that the receiving office will pepare and forward this documents to the ISA (rule 12bis1(c) of the PCT regulations).
6. Therefore, if the previous search was first performed in the Israeli Patent Authority as a receiving office, the applicant is entiteled to request that the PCT department in the Patent Authority will supply the ISA the documents and the search report which was produced in the patent authority. Such a request will be noted on the Request form and will be performed by the PCT department subject to payment of the photocopying fee set on the second appendix of the patent rules (regulations of the authority, documents and fees)-1968.
7. The PCT department will, as always, stand available to the public of users for clarificaions and assistance.
Dr. Meir Noam,
Commissioner of Patents, Designs and Trademarks