The application is then transferred to the searching authority that is in charge of establishing a search report. The EPO usually strives to issue the search report within 9 months after filing if the application does not claim any priority; this deadline is however also frequently of several years if the European application is not the first filing for this invention.
The search report contains a list of documents uncovered by the search examiner and which are judged relevant to assess the novelty and the inventiveness of the application. The cited documents are attached to the report.
A letter against each document indicates its relevance. The most important codes are “X”, used to designate a document which on its own is considered to pose a challenge to the novelty or inventiveness of a claim of the application, and “Y”, which designates documents which, together and in combination with one another, allow the inventiveness of a claim to be contested. The letter “A” designates documents cited as technological background.
The aim of the search report is only to establish the patentability of the claimed invention, but not to assess whether it can be used freely without infringing upon existing patents. An older patent, comprising claims sufficiently broad to be infringed by the invention, but that does not describe the new claimed characteristic, will not necessarily be cited even though the applicant would obviously be interested in this patent being brought to his attention. The search report also does not indicate whether the cited patents are still in force.
The search report for European applications not claiming priority is accompanied by an opinion on patentability. The applicant does not need to respond immediately. In the absence of a response, this opinion is generally taken over as first office action during the examination procedure.
Unity of invention
The ISA (International Search Authority) can in certain cases raise objections as to the unity of invention of the patent application (PCT Rule 13). The unity of invention can be contested when the application concerns several inventions that are not linked with one another so as to form a common inventive concept. In such a case, the applicant is invited to pay additional fees, failing which the search report will be established only on the basis of the first claimed invention. It is also possible to pay the additional fees under protest, i.e. with written objections against the statement that the invention lacks unity.