Guidelines for Examination:PART B: CHAPTER XII THE SEARCH OPINION, 4. Priority claim and the search opinion

Guidelines for Examination
PART B
CHAPTER XII THE SEARCH OPINION
4. Priority claim and the search opinion

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PART B
CHAPTER XII THE SEARCH OPINION

3. Analysis of the application and content of the search opinion

5. Matters of doubt in the state of the art

4.	Priority claim and the search opinion

When it is not possible to check the validity of the priority claim at the search stage, because:

(i)	the search is carried out before the date on which the priority document must be supplied (16 months from the earliest claimed priority - Rule 38(3)

(ii)	a translation of the priority document is required, which is requested later by the Examining Division (Rule 38(5) and C-V, 3.4)

then, for the purposes of drafting the search opinion, the priority claim will usually be assumed to be valid.

However, if an assessment of the validity of the priority claim is necessary as a result of intermediate prior art or potential state of the art according to Art. 54(3) (4), and evidence is already available undermining the validity of the priority claim, then this should be brought up in the search opinion. For example, where the priority document is available at the time of drafting the search opinion and technical features of the claims are not present in the priority document, this may even be possible where a translation is required, but the examiner is familiar with the language of the priority document (see also VI, 5.3).