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|Top of Notices (296) December 30, 2014||US PATENT AND TRADEMARK OFFICE||Print This Notice 1409 CNOG 1103|
|Software, Computer-Implemented||Referenced Items (294, 295, 296, 297)|
(296) Guidance On Searching and Examining PCT Applications Drawn to Computer-Related Inventions The following guidance should be applied when searching and examining a PCT application drawn to a computer-related invention: Chapter I (Form 210 Search Report) Under Chapter I, Office personnel conduct an international search and prepare an international search report on all subject matter searched and examined in U.S. national applications. Routinely, such subject matter includes inter alia computer-related inventions. Under the Examination Guidelines for Computer-Related Inventions (Guidelines), Office personnel conduct a complete examination, including a thorough search of the prior art, for all U.S. national applications drawn to computer-related inventions regardless of whether the claims recite statutory subject matter. See 61 Fed. Reg. 7478 (Feb. 28, 1996); 1184 OG 87 (March 26, 1996). Thus, Office personnel must conduct an international search, and prepare an international search report, on all PCT applications drawn to computer-related inventions.1 Office personnel are reminded that, when completing Section C. of the search report (Documents Considered To Be Relevant), the prior art references should be categorized as either "A", "X" or "Y" based on the claims read in light of the disclosure. Also, the citations should indicate which claims are relevant to the reference. Chapter II (Form 408 Written Opinion and Form 409 IPER) Under Chapter II, Office personnel conduct a preliminary examination and prepare an international preliminary examination report (IPER). In the examination, Office personnel determine whether the claimed invention satisfies the criteria for novelty, inventive step, and industrial applicability. For PCT applications drawn to computer-related inventions, Office personnel should use the Guidelines as an aid in determining whether the claimed invention satisfies the criteria for industrial applicability. Often, a claimed invention determined to be non-statutory under the Guidelines will not satisfy the criteria for industrial applicability because the claimed invention cannot be made or used in the technological sense in any kind of industry. See PCT Article 33(4). Office personnel are reminded, however, that written opinions and IPERs should not cite U.S. statutes, regulations, or case law except those which pertain to PCT. In the same manner, written opinions and IPERs should not reference the Guidelines per se. 1 Accordingly, Item 1. of Box I. in the search report is not applicable. However, in rare circumstances, Office personnel will be unable to conduct an international search, e.g., it is impossible to determine the subject matter of the PCT application. In that circumstance, Item 2. of Box I. should be checked and explained, as it would be in a similar circumstance for non-computer-related subject matter. July 22, 1996 BRUCE A. LEHMAN Assistant Secretary of Commerce and Commissioner of Patents and Trademarks [1189 OG 58]