CHAPTER 10:  INTERNATIONAL PRELIMINARY EXAMINATION UNDER CHAPTER II OF THE PCT


GENERAL

Article 31(1)
31(4)(a)
32(1)
33(1)
Rule 53.7

10.001.   What is international preliminary examination?  International preliminary examination of an international application may be requested under Chapter II of the PCT to obtain “a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable” (Article 33(1)).  It is carried out by an “International Preliminary Examining Authority” at the request – called “demand” – of the applicant, for use before the “elected” Offices, that is, the designated Offices which are elected by the applicant for that purpose, (note that the filing of a demand constitutes the election of all Contracting States which are designated and bound by Chapter II of the Treaty).  Not every applicant who has the right to file an international application has the right to demand international preliminary examination;  the following paragraphs explain who may make a demand.

Article 39(1)
40(1)
64(2)(a)(i)
and (ii)

10.002.  What are the main effects of the international preliminary examination?  Since the criteria on which the international preliminary examination is based (see paragraph 10.001) correspond to internationally accepted criteria for patentability, the international preliminary report on patentability (Chapter II of the PCT) gives the applicant the opportunity to evaluate the chances of obtaining patents in elected Offices before incurring the expense and trouble of entering the national phase. Moreover, the fact that the carrying out of such an examination has been demanded has the result that the national phase in each elected State is normally delayed until the expiration of 30 months from the priority date (longer times apply in some elected Offices), provided that the demand is submitted before the expiration of 19 months from the priority date (Note, however, that the 30-month time limit applies in any case, to a large number of designated Offices even if they have not been elected within the 19-month time limit;  see paragraph 5.005 for details). For further details, see paragraph 10.010, and also the National Chapters, (Summaries).

Article 38
Rule 94

10.003.   With the exception of the fact that a demand has been filed and the names of those designated States for which a notice of withdrawal has been submitted to the International Bureau or to the International Preliminary Examining Authority are available on the WIPO website at:  www.wipo.int/patentscope/search/en/structuredSearch.jsf, the international preliminary examination procedure remains confidential between the applicant, the International Preliminary Examining Authority and the International Bureau. In respect of international applications filed before 1 July 1998, a copy of the international preliminary examination report, when it has been established, is sent by the International Bureau to each elected Office as well as the applicant, but is not available from the International Preliminary Examining Authority or the International Bureau to any other persons or Offices. In respect of international applications filed on or after 1 July 1998, copies of all documents contained in the file of the International Preliminary Examining Authority may be obtained by third parties via those elected Offices whose national law provides for access to the files of national applications (see also paragraphs 10.080 and 10.081, and 11.072 to 11.074). Concerning the availability of the international preliminary examination report from the International Bureau, see paragraph 9.027.


MAKING A DEMAND FOR INTERNATIONAL PRELIMINARY EXAMINATION

Article 31(2)(a)
Rule 18.1
54

10.004.   On what conditions may a demand for international preliminary examination be submitted?  There are two conditions which have to be fulfilled for a demand to be submitted. First, the applicant – or, if there are two or more applicants, at least one of them – must be a resident or a national of a Contracting State bound by Chapter II of the PCT. Second, the international application must have been filed with the receiving Office of, or acting for, a Contracting State bound by Chapter II. Annexes A and B indicate whether or not each Contracting State is bound by Chapter II. Potential applicants who have residence and/or nationality in more than one Contracting State, and thus generally have a choice of receiving Office, should therefore file the international application with a receiving Office of or acting for a Contracting State bound by Chapter II if they wish to take advantage later of the international preliminary examination procedure.  However, it should be noted that the right to make a demand may be lost if, following a change in the applicants named in the international application, there is no longer, at the time the demand is made, at least one applicant who is a resident or national of a Contracting State bound by Chapter II.  The concepts of residence and nationality are defined in Rule 18.1 (see paragraph 5.023).  If the applicant does not have the right to make a demand, the demand is considered not to have been submitted.

Article 31(4)
64(1)
Rule 53.7
90bis.4

10.005.   Which States may be elected?  In relation to demands for international preliminary examination filed on, or after, 1 January 2004, all Contracting States which are designated in the international application and are bound by Chapter II of the PCT are elected.  The printed demand form (available on the WIPO website at:  www.wipo.int/pct/en/forms/demand/ed_demand.pdf) contains a pre-printed statement that the filing of the demand constitutes the election of all Contracting States which are designated and are bound by Chapter II of the Treaty (see paragraph 10.029).  Please note that States whose designation has been withdrawn cannot subsequently be elected.  If the applicant does not wish to elect a particular State, the election of that State may be withdrawn after a demand has been filed.  It should be also noted that withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election.

Article 31(3)
31(6)(a)
32(2)
Rule 59

10.006.   Where should the demand for international preliminary examination be submitted?  The demand must be made separately from the international application, and be submitted directly to an International Preliminary Examining Authority which is competent to carry out international preliminary examination on the international application concerned.  Each receiving Office (except the International Bureau as receiving Office – see paragraph 5.008) specifies one or more International Preliminary Examining Authorities as competent to carry out international preliminary examination on international applications filed with it.  In addition, different International Preliminary Examining Authorities may be competent in relation to an international application depending on the language in which the international application was filed and on which International Searching Authority carried out the international search.  Where several International Preliminary Examining Authorities are competent in relation to a particular international application, having regard to which receiving Office the international application was filed with and the language of the international application, the applicant may choose between them.  Where the international application is filed with the International Bureau as receiving Office, the competent International Preliminary Examining Authority (or Authorities) is that (or are those) which would have been competent if the international application had been filed with a competent national (or regional) Office as receiving Office.  The International Preliminary Examining Authority or Authorities competent for international applications filed with each national (or regional) Office acting as receiving Office, and the languages accepted for international preliminary examination by each International Preliminary Examining Authority, may be ascertained by consulting Annexes C and E.  Finally, within the framework of the respective agreements relating to the functioning of certains Offices as International Preliminary Examining Authorities, these Authorities may provide for limitations of their competence in respect of certain international applications.  The consolidated texts of these Agreements are available on the WIPO website at the following address: www.wipo.int/pct/en/access/isa_ipea_agreements.html.  For more detailed information, see Annex E.

Rule 59.3(a),
(b) and (e)

10.007.   If a demand is submitted to a receiving Office, an International Searching Authority, an International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, or the International Bureau, that Office or that Authority or the International Bureau, as the case may be, will mark on it the date of receipt, which will be considered to be the date on which the demand was received on behalf of the competent International Preliminary Examining Authority.

Rule 59.3(c)
and (f)

10.008.   When a demand is filed with a receiving Office, an International Searching Authority, or an International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, that Office or Authority may send the demand either directly to the competent International Preliminary Examining Authority, or to the International Bureau which will in turn forward the demand to the competent International Preliminary Examining Authority.

Rule 59.3(c)
and (d)

10.009.   If two or more International Preliminary Examining Authorities are competent, the applicant will be invited, by the Office or Authority to which the demand was submitted, or by the International Bureau, as the case may be, to indicate, within the time limit applicable under Rule 54bis.1(a), or within 15 days from the date of the invitation whichever is later, the competent International Preliminary Examining Authority to which the demand should be transmitted.  Where the applicant furnishes that indication, the demand will promptly be transmitted to the competent International Preliminary Examining Authority.  Where no indication is so furnished, the demand will be considered not to have been submitted, and the Office or Authority to which the demand was submitted, or the International Bureau, as the case may, will declare that the demand is considered not to have been submitted.

Article 39(1)
Rule 54bis.1(a)
69.1(a)(iii)
69.2

10.010.   At what stage of the procedure should the demand for international preliminary examination be submitted?  A demand may be submitted at any time prior to the expiration of the following time limits, whichever expires later:

 

(i)  three months from the date of transmittal to the applicant of the international search report and the written opinion of the International Searching Authority, or of the declaration, referred to in Article 17(2)(a) that no international search report will be established;  or

 

(ii)  22 months from the priority date.

 

In addition, in respect of some Offices (see paragraph 5.005), in order to secure the full effect of the demand – including the delaying of the national phase until 30 months from the priority date – it must be submitted before the expiration of 19 months from the priority date.  Since international preliminary examination will normally not start before the international search report and the written opinion of the International Searching Authority are available (see paragraphs 10.051 to 10.055) and provided that the International Preliminary Examining Authority will not start the preliminary examination before the expiration of the applicable time limit unless the applicant expressly requests an earlier start, the applicant will normally wish to take that report and opinion into account before deciding whether to proceed further on his quest for patent protection.  Note, however, that the 19-month time limit will expire regardless of whether the establishment of the international search report and the written opinion of the International Searching Authority are delayed.  On the other hand, the length of time available for the international preliminary examination depends on the earliest possible submission of the demand after the international search report and the written opinion of the International Searching Authority are available, since the international preliminary report on patentability (Chapter II of the PCT) must in most cases be established before the expiration of 28 months from the priority date, or six months from the time provided for the start of the international preliminary examination, or six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished by the applicant, if applicable, whichever period expires last (see paragraph 10.074).  The more time available for the international preliminary examination, the better will be the result and quality which can be expected.  Therefore, a demand should be filed as soon as possible after the applicant’s evaluation of the international search report and the written opinion of the International Searching Authority has shown that it is worthwhile to pursue the international application further.


TRANSLATION OF INTERNATIONAL APPLICATION FOR THE PURPOSES OF INTERNATIONAL PRELIMINARY EXAMINATION

Rule 55.2

10.011.   What happens if the international application was filed or published in a language which is not accepted by the International Preliminary Examining Authority?  Where neither the language in which the international application was filed nor the language in which the international application is published is accepted by the International Preliminary Examining Authority that is to carry out the international preliminary examination, the applicant must furnish with the demand a translation of the international application into a language which is both a language accepted by that Authority, and a language of publication.  No such translation is required where the International Searching Authority and the International Preliminary Examining Authority are part of the same national Office or intergovernmental organization, in which case the international preliminary examination will be carried out on the basis of the translation furnished for the purposes of the international search (see paragraphs 6.014 to 6.017).  Details about the languages accepted for international preliminary examination by the various International Preliminary Examining Authorities appear in Annex E.  See paragraph 9.010 in connection with the need to file a translation of amendments under Article 19.


THE DEMAND

Article 31(3)
Rule 53
Section 102(b)
and (i)

10.012.   What requirements as to form, contents and language must the demand for international preliminary examination comply with?  The demand must either be made on a printed form to be filled in with the required indications or be presented as a computer print-out complying with the Administrative Instructions.  To facilitate preparation of the demand, the International Bureau has prepared downloadable PDF (portable document format) versions on its website at www.wipo.int/pct/en/forms/.  The editable PDF version of the form (PCT/IPEA/401) may be completed using a computer or printed out and filled in using a typewriter.  The demand, and instructions on how to complete the editable version, is available in English, French, German, Russian and Spanish.

Sample filled-in forms are also available from the above website address.  Copies of forms may also be obtained, free of charge, from the receiving Office or the International Preliminary Examining Authority.

Rule 53
55.1

10.013.   The completed demand must identify the applicant and the international application to which it relates.  The demand contains a petition that the international application be the subject of international preliminary examination.  The filing of the demand constitutes the automatic election of all Contracting States which are designated and which are bound by Chapter II of the PCT – see paragraph 10.029 and the sample filled-in demand form, at the addresses indicated in paragraph 10.012).  It must, where applicable, contain a statement concerning amendments, on the basis of which the international preliminary examination will start (see paragraphs 10.025 and 10.026) and an indication of the language in which international preliminary examination will be carried out.  The demand must be in the language of the international application or, if the international application has been filed in a language other than the language in which it is published, in the language of publication.  However, where a translation of the international application is required because the International Preliminary Examining Authority accepts neither the language in which the international application is filed nor the language in which the international application is published (see paragraphs 5.013 and 10.011), the demand must be in the language of that translation.  The demand must be signed (see paragraphs 10.031, 10.032, and 11.027).  Details for the filling in of the demand form are given below in respect of each Box of that form.  Where more than one International Preliminary Examining Authority is competent in relation to the international application (see paragraph 10.006), the Authority chosen by the applicant, and with which the demand is filed, should be identified, preferably by an indication of the name or two-letter code of the Authority (see Annex K), at the top of the first sheet of the demand form in the space provided for that purpose.


Box No. I:  Identification of the International Application

Rule 53.6

10.014.   What are the requirements with respect to the identification of the international application?  The international application must be identified by its international application number, filing date and title.  If the international application number is not known to the applicant at the time of filing of the demand, the name of the receiving Office with which the international application was filed must be indicated.  The title of the invention must be the same as that which appears in the published international application (that is, the same as that indicated in the request, unless it was modified by the International Searching Authority – see paragraph 7.022).

10.015.   It is recommended that the applicant indicate his file reference, if any, not exceeding 12 characters in length, in the box provided for this purpose on the first sheet of the demand form (see paragraphs 5.017 and 5.105 in relation to the request and the description).

10.016.   Indication of the priority date on the demand is not mandatory, but is recommended since it will assist the International Preliminary Examining Authority to ascertain promptly whether or not the demand was filed before the expiration of 19 months from the priority date.


Box No. II:  Applicant(s)

Article 31(2)
Rule 4
53.4
53.5
54.1
54.2
60.1(a-bis)

10.017.   Who may file a demand for international preliminary examination? What indications are required? If there is a sole applicant, he must be a resident or national of a Contracting State bound by Chapter II of the PCT. If there are two or more applicants, it is sufficient that one of them be a resident or national of a Contracting State bound by Chapter II, regardless of the elected State(s) for which each applicant is indicated. The detailed requirements for the various indications required in connection with each applicant (full names and addresses, telephone, facsimile and/or e-mail address, nationality and residence) are the same as those required under Rule 4 in connection with the request (see paragraphs 5.023 to 5.034). Where the applicant is registered with the International Preliminary Examining Authority, the number or other indication under which the applicant is so registered may also be indicated in Box No. II. Note that any inventor who is not also an applicant is not indicated in the demand. Where a question of the applicant’s residence or nationality arises, the International Preliminary Examining Authority will request the receiving Office or, where the international application was filed with the International Bureau as receiving Office, the national Office of, or acting for, the Contracting State concerned to decide the question and will inform the applicant of such request. The applicant has the opportunity to submit arguments relating to the issue of residence or nationality directly to the Office concerned, which will decide the question promptly.

Rule 92bis.1

10.018.   Who should be indicated if there has been a change in the name or person of the applicant?  If the recording of a change in the name or person has been requested under Rule 92bis.1 before the demand was filed (see paragraphs 11.018 to 11.022), it is the applicant(s) on record at the time when the demand is filed who must be indicated in the demand.

10.018A.   How can the applicant receive notifications via e-mail?  If the applicant has authorized either the sending of advance copies of notifications by e-mail or the sending of notifications exclusively by e-mail, by marking the corresponding check-box in Box No. II of the demand form, the International Bureau and the International Preliminary Examining Authority may, if they wish to do so, send such notifications to the applicant, thus avoiding processing or postal delays. Where the agent or common representative has also provided e-mail authorization, the International Bureau and the International Preliminary Examining Authority will send e-mail communications only to the appointed agent or common representative (see paragraph 10.022). Note that not all Authorities will send such notifications by e-mail (see Annex B). If an e-mail notification is followed by the official notification on paper, only the paper copy of the notification is considered to be the legal copy of the notification and only the date of mailing of the paper copy will commence any time limit within the meaning of Rule 80. Where the applicant requests the sending of notifications exclusively by e-mail, the date of mailing indicated on the electronic copy will commence any time limit within the meaning of Rule 80. It is the applicant’s responsibility to keep any e-mail address details up-to-date and to ensure that incoming e-mails are not blocked, for any reason, on the recipient’s side. Changes to the e-mail address indicated should be requested to be recorded, preferably directly at the International Bureau, under Rule 92bis.


Box No. III:  Agent or Common Representative

10.019.   Does the applicant have to be represented by an agent before the International Preliminary Examining Authority?  No, the applicant is not obliged to be represented by an agent, but he may be, and in most cases it is highly advisable for him to be represented (see paragraph 1.004).

Article 49
Rule 2.2
90.1(a)
and (c)

10.020.   May the applicant be represented by an agent before the International Preliminary Examining Authority?  Yes, he may.  He may be represented by the agent who represented him for the filing of the international application (if any) or by another agent having the right to practice before the receiving Office with which the international application was filed (see Annex C).  He may also be represented by an agent appointed specifically for the purposes of the international preliminary examination procedure and chosen from among those persons who have the right, according to the rules applicable in the national or regional Office acting as International Preliminary Examining Authority, to practice before that Office (see National Chapters, (Summaries)).  See paragraphs 11.001 to 11.014 for more information about representation.

Rule 53.2(a)(ii)
53.5
90

10.021.   When and how may an agent be appointed for the purposes of the procedure concerning the international preliminary examination? If an agent has already been appointed for the filing of the international application, that agent may also represent the applicant for the purposes of the international preliminary examination procedure and may sign the demand on behalf of the applicant. Alternatively, a different agent or an additional agent may be designated in the demand for international preliminary examination or in a separate power of attorney. The detailed requirements for the various indications required in connection with each agent (full names and addresses, telephone, facsimile, e-mail address(es) and/or teleprinter numbers) are the same as those required under Rule 4 in connection with the request (see paragraph 5.043). Where the agent is registered with the International Preliminary Examining Authority, the number or other indication under which the agent is so registered may also be indicated in Box No. III. Further information about the manner of appointing agents, including sub-agents, appears in paragraphs 11.001 to 11.014.

10.021A.   How can an agent (or common representative) receive notifications via e-mail?  If the check-box in Box No. III is marked indicating that either the sending of advance copies of notifications by e-mail or the sending of notifications exclusively by e-mail is authorized, the International Bureau and the International Preliminary Examining Authority may, if they wish to do so, send such notifications to the agent or common representative at the indicated e-mail address, thus avoiding processing or postal delays (see paragraph 10.018)

Rule 2.2bis
90.2
90.4

10.022.   May the applicants be represented by a common representative?  The provisions relating to common representatives which apply at earlier stages (see paragraph 5.048) continue to be applicable during the international preliminary examination procedure.  That is, if no common agent is appointed, one of the applicants may be appointed by the other applicants as the common representative of all the applicants, and if neither a common agent nor a common representative is appointed, the applicant named first in the request who is entitled to file an international application with the receiving Office concerned will be considered to be the common representative ("deemed common representative") (see paragraph 11.006).  A separate power of attorney must be filed with the International Preliminary Examining Authority, the International Bureau or the receiving Office, if the person appointed at the time the demand is filed signs the demand on behalf of the applicant.  However, the receiving Office, the International Bureau or the International Preliminary Examining Authority may waive the requirement that a separate power of attorney be filed.  For further details see Annexes B (IB), C and E.

10.023.   What other provisions apply to agents and common representatives during the international preliminary examination procedure?  The same general provisions apply to agents and common representatives during the international preliminary examination as apply during other stages of the international phase (for example, in relation to their legal position and revocation and renunciation of appointments – see paragraphs 11.001 to 11.014).


Box No. IV:  Basis for International Preliminary Examination (Statement Concerning Amendments and Indication of the Language for the Purposes of International Preliminary Examination)

Article 34(2)(b)
Rule 66.1(b)
and (d)

10.024.   Can the applicant amend the claims, the description and the drawings before and during the international preliminary examination?  The applicant has the right, under Article 34(2)(b), to amend the claims, the description and the drawings before the start of the international preliminary examination and also during the examination, if time permits, until the preparation of the international preliminary report on patentability (Chapter II of the PCT).  (As far as the claims are concerned, this is in fact the second opportunity to amend them before the international preliminary examination starts;  the first opportunity is offered by the possibility of submitting amendments under Article 19 to the International Bureau as described in paragraphs 9.004 to 9.009, and 9.011.)  For further details concerning amendments under Article 34(2)(b), see paragraphs 10.028, 10.067 to 10.071, 11.045 to 11.047.

Rule 53.2(a)(iv)
53.9

10.025.   What is the purpose of indicating the basis for international preliminary examination?  Do the statement concerning amendments and the indication of the language for the purposes of the international preliminary examination have to be filled in?

 

(i)  The statement concerning amendments should be completed, since it enables the International Preliminary Examining Authority to identify those documents which will serve as the basis for the start of the international preliminary examination with a view to starting it as soon as possible.  However, failure to complete the statement or to complete it correctly is not fatal to the application.  In particular, if no amendments have been filed under Article 19 or Article 34 and if the applicant does not wish to file such amendments at the time when he files the demand, the result will simply be that the international preliminary examination will start on the basis of the international application as originally filed.  The applicant will not be precluded from making amendments at a later stage of the international preliminary examination, provided that they reach the International Preliminary Examining Authority in sufficient time to be taken into account.  On the other hand, if there have been amendments but they are not indicated, or if the applicant wishes later to file amendments but does not so indicate, the start of the international preliminary examination may be delayed or the applicant may find that there is insufficient time at a later stage to have his intended amendments taken into account.

 

(ii)  Completing the indication of the language for the purposes of the international preliminary examination and its associated check-boxes helps the International Preliminary Examining Authority determine quickly, with a view to starting international preliminary examination as soon as possible, whether the demand and the international application are in a language accepted by that Authority, or whether a translation of the international application is required.  Completing the indication also helps the International Preliminary Examining Authority decide whether any amendments filed with the demand (see paragraph (i) above) are in the appropriate language.

10.026.   How should the statement concerning amendments be completed?  If amendments to the claims have been made under Article 19 (see paragraphs 9.004 to 9.009) prior to the filing of the demand, the statement must indicate whether, for the purposes of the international preliminary examination, the applicant wishes the amendments to be taken into account (in which case a copy of the amendments should be filed with the demand) or to be considered as reversed by an amendment under Article 34.  If no amendments under Article 19 have been made but the time limit for filing such amendments (see paragraph 9.004) has not expired at the time when the demand is filed, the statement may, if the applicant so chooses, indicate that the applicant wishes the start of the international preliminary examination to be postponed (see paragraph 10.054).  If any amendments under Article 34 are submitted with the demand, the statement must so indicate.  A more detailed explanation is given below for each of the check-boxes in Box No. IV.

“1. The applicant wishes the international preliminary examination to start on the basis of:

the international application as originally filed”

This check-box should be marked either where the applicant has not made any amendments under Article 19 and does not intend at the time of filing the demand to file any amendments, or where the applicant has already made amendments under Article 19 but is no longer interested in pursuing them.

“the description

as originally filed
as amended under Article 34

the claims

as originally filed
as amended under Article 19
as amended under Article 34

the drawings

as originally filed
as amended under Article 34

Rule 60.1(g)
69.1(e)

These check-boxes should be marked only where the applicant wishes amendments to be taken into account for the start of the international preliminary examination.  Where the applicant wishes amendments which have previously been made under Article 19 to be taken into account, a copy of the amendments, and any statement accompanying such amendments, should be attached to the demand.  If a check-box is marked but the demand is not accompanied by the documents referred to, the start of international preliminary examination will be delayed until the International Preliminary Examining Authority receives them.  Amendments under Article 34 should be submitted with, and attached to, the demand.  The applicant should also indicate, by marking the appropriate check-box(es), which parts of the international application are so amended.

Rule 53.9(a)(ii)

“2. The applicant wishes any amendments to the claims made under Article 19 to be considered as reversed.”

 

This check-box should be marked only where the applicant, after having previously made amendments under Article 19, no longer wishes them to be considered for international preliminary examination.  Marking this check-box will have the effect that those amendments will be considered as reversed by an amendment under Article 34.

Rule 53.9(b)
69.1(d)

“3. Where the IPEA wishes to start the international preliminary examination at the same time as the international search in accordance with Rule 69.1(b), the applicant requests the IPEA to postpone the start of the international preliminary examination until the expiration of the applicable time limit under Rule 69.1(d).

 

This check-box should be marked only where, at the time when the demand is filed, the time limit for filing amendments under Article 19 has not expired (see paragraph 9.004) and the applicant intends to file such amendments after filing the demand.  In practice, this situation is only likely to arise if the demand is filed before the international search report is available.  If this check-box is marked but the applicant later decides not to file amendments under Article 19, he should send a notice to the International Preliminary Examining Authority that he does not wish to file such amendments and the international preliminary examination will then start.  It should be noted that the examination will start in any event after the expiration of the applicable time limit under Rule 54bis.1(a) even where no amendments have been received by the International Preliminary Examining Authority.

 

“4. The applicant expressly wishes the international preliminary examination to start earlier than at the expiration of the applicable time limit under Rule 54bis.1(a).”

 

This check-box should be marked if the applicant wishes that the international preliminary examination start earlier than at the expiration of the applicable time limit under Rule 54bis.1(a).  Where the International Searching Authority and the International Preliminary Examining Authority are not the same Authority, the examination will not commence until the International Preliminary Examining Authority is in possession of the international search report, or a notice of the declaration under Article 17(2)(a) and the written opinion of the International Searching Authority.

10.027.   May several check-boxes be marked in Box No. IV?  Yes – for example, under item (1), two or three check-boxes may be marked if the applicant has already filed amendments to the claims under Article 19 and wishes those amendments to be taken into account along with further amendments under Article 34 to the description and/or drawings (and possibly further amendments to the already amended claims).

Rule 66.1(b)
66.4bis

10.028.   May the applicant make amendments during the international preliminary examination in addition to any amendments mentioned in Box No. IV?  Yes, the applicant is not precluded from later making amendments, or further amendments, during the course of the international preliminary examination (see paragraphs 10.067 to 10.071), whatever appears in the statement concerning amendments, and in this sense the statement is not binding on the applicant or on the conduct of the international preliminary examination.  For example, the applicant may choose to file amendments under Article 34 at a later stage which supersede amendments previously made under Article 19, even though the statement indicates that those previous amendments should be taken into account.  However, the information contained in the statement is used by the International Preliminary Examining Authority to determine when, and on what basis, the international preliminary examination is to start (see paragraphs 10.051 to 10.055).  Moreover, amendments or arguments need not be taken into account by the International Preliminary Examining Authority for the purposes of the international preliminary report on patentability (Chapter II of the PCT) if they are received after the Authority has begun to draw up that report (see paragraph 10.068).  Since the time available for international preliminary examination is limited, it is in the applicant’s interests to be as definite as possible, at the time of filing the demand, as to what should form the basis of the international preliminary examination.  If the applicant intends to file amendments under Article 34 but is not in a position to submit them with the demand, that intention should preferably be mentioned in a letter filed with the demand.  It is to be noted that since, under Rule 66.1bis, the written opinion of the International Searching Authority will in the majority of cases be considered to be the written opinion of the International Preliminary Examining Authority, if amendments under Article 34 are not filed together with the demand, the International Preliminary Examining Authority might, shortly after the expiration of the time limit under Rule 54bis.1(a), start to draw up the international preliminary report on patentability (Chapter II of the PCT).


Box No. V:  Election of States

Rule 53.7

10.029.   Which States may be elected?  The making of a demand on, or after, 1 January 2004 has the effect of electing all States which have been designated and which are bound by Chapter II of the PCT.


Box No. VI:  Check List

10.030.   What is the purpose of the Check List?  The Check List in Box No. VI should be completed by the applicant to allow the International Preliminary Examining Authority to verify the completeness of the documents filed with the demand.  Of particular importance in the Check List are the indications relating to amendments referred to in the statement concerning amendments.  The indications given in the Check List should correspond with the indications given in Box No. IV.


Box No. VII:  Signature of Applicant, Agent or Common Representative

Rule 53.4
53.8
60.1(a-ter)
90.3

10.031.   Who must sign the demand?  The demand must be signed by the applicant or, if there is more than one applicant, by all the applicants making the demand – that is, the applicants for the States which are elected.  However, an agent or common representative may sign the demand on behalf of the applicant or applicants who appointed him.  The demand may be signed on behalf of all the applicants by an appointed common agent or common representative, or by the applicant who is considered to be the common representative (“deemed common representative”) if no common agent or common representative has been appointed (see paragraph 11.006).  However, if the signature(s) of one or more applicants is missing, the International Preliminary Examining Authority will not invite the applicants to furnish the missing signature(s) provided that at least one of the applicants has signed the demand.  Should a notice of withdrawal be filed at any time during the international phase, that notice will have to be signed by the applicant or, if there are two or more applicants by all of them (Rule 90bis.5), or by any agent or common representative whose appointment has been effected by each applicant signing, at his choice, the request, the demand or a separate power of attorney (Rule 90bis.4(a)).

Rule 2.3

10.032.   When must or may a seal be used instead of a signature?  In the demand or other papers filed with the State Intellectual Property Office of the People’s Republic of China as International Preliminary Examining Authority, a seal may be used instead of a signature.  In the case of a demand or other papers filed in English with the European Patent Office as International Preliminary Examining Authority in respect of international applications filed with the Japan Patent Office as receiving Office, a signature must be furnished instead of a seal.  In the demand or other papers filed with the Korean Intellectual Property Office as International Preliminary Examining Authority, a seal may be used instead of a signature (see paragraph 5.091 in respect of the request).


Notes to the Demand Form

10.033.   What are the Notes to the demand form?  The Notes to the demand form (see the WIPO website at:  www.wipo.int/pct/en/forms/demand/ed_demand.pdf) are intended to facilitate the completion of that form.  They indicate, in relation to each Box of the form, what indications are required and how they are to be made.  The Notes are not required to be filed with the demand.


Fee Calculation Sheet

10.034.   What is the fee calculation sheet?  The fee calculation sheet is intended to help the applicant calculate the total amount of fees payable to the International Preliminary Examining Authority.  The sheet is usually annexed to the printed demand form which the applicant obtains from the receiving Office or the International Preliminary Examining Authority.  It is not part of the form, however, and its use is not mandatory.  Nevertheless, it is strongly recommended that the applicant complete the fee calculation sheet and submit it to the International Preliminary Examining Authority.  This will help the International Preliminary Examining Authority verify the calculations and identify any errors.  See the Notes to the fee calculation sheet at the WIPO Internet address in paragraph 10.033 for details about completion of the sheet.  For further information about the payment of fees, see paragraphs 10.035 to 10.043.


FEES

Article 31(5)

10.035.   What fees are payable in respect of a demand for international preliminary examination?  There are two kinds of fees which have to be paid in connection with the demand:

Rule 58.1(a)
and (c)

(i)  the “preliminary examination fee,” which is fixed by and accrues to the International Preliminary Examining Authority, mainly for carrying out the international preliminary examination and for establishing the international preliminary report on patentability (Chapter II of the PCT);

Rule 57.1

(ii)  the “handling fee,” which is fixed in the Schedule of Fees to the PCT Regulations and accrues to the International Bureau for carrying out various tasks, including, where required, the translation of the international preliminary report on patentability (Chapter II of the PCT) into English (see paragraph 10.039).

10.036.   Is any fee payable for effecting an election?  There is no “election fee”.  The only fees payable for filing a demand are those specified in paragraph 10.035.

Rule 57.1
58.1(c)

10.037.   To whom are these fees payable?  The preliminary examination fee and the handling fee are payable to the International Preliminary Examining Authority, which forwards the handling fee to the International Bureau.

Rule 57.2(b)
58.1(c)

10.038.   In what currency are these fees payable?  Generally, the preliminary examination fee and the handling fee are payable in the currency or one of the currencies prescribed by the International Preliminary Examining Authority.  Complete information on this question is contained in Annex E.

Rule 57.2(a)
57.3
58.1(b)

10.039.   What are the amounts of these fees?  Annex E indicates the amounts of the preliminary examination fee and the handling fee payable to each International Preliminary Examining Authority.

10.040.   A reduction of the preliminary examination fee charged by the European Patent Office may be available to applicants from certain States – see Annex E(EP) for further details.

10.041.   An applicant who is a natural person and who is a national of and resides in a State whose per capita national income is below 3,000 US dollars (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997), or who is a national of and resides in one of the following States: Antigua and Barbuda, Bahrain, Barbados, Libya, Oman, the Seychelles, Singapore, Trinidad and Tobago and the United Arab Emirates; or an applicant, whether a natural person or not, who is a national of and resides in a State that is classed as a least developed country by the United Nations, is entitled, in accordance with the Schedule of Fees, item 4, to a reduction of 90% of the handling fee. Information about PCT Contracting States whose nationals and residents are entitled to a reduction of 90% of the handling fee is contained in Annex E. If there are several applicants, each must satisfy one or the other of the above-mentioned criteria. The reduction of the fee will be automatically available to any applicant so entitled on the basis of the indications of name, nationality and residence given in the international application and in Box No. II of the demand. The fee reduction will be available even if one or more of the applicants are not from PCT Contracting States, provided that each of them satisfies the above-mentioned criteria and that at least one of them is a national or resident of a PCT Contracting State bound by Chapter II and thus is entitled to file a demand. The PCT Contracting States whose nationals and residents are eligible for the fee reduction, as outlined above, are listed in Annex C (IB).

Rule 57.3
58.1(b)

10.042.   When are these fees due?  The preliminary examination fee and the handling fee must be paid within one month from the date on which the demand was submitted or 22 months from the priority date, whichever expires later, provided that, where the demand was transmitted to the competent International Preliminary Examining Authority under Rule 59.3, the handling fee must be paid within one month from the date of receipt by that Authority or 22 months from the priority date, whichever expires later.  As to the consequences of non-payment or late payment of these fees, see paragraph 10.047.

Rule 54.4
57.4
58.3

10.043.   In what cases are these fees refunded?  The International Preliminary Examining Authority will refund the handling fee if the demand is withdrawn before being sent to the International Bureau or if the demand is considered not to have been submitted because none of the applicants had the right to file a demand (see paragraph 10.004).  Each International Preliminary Examining Authority decides at its discretion whether it will refund the preliminary examination fee, or any part thereof, in other circumstances.  Details are indicated in Annex E.


PROCESSING OF THE DEMAND FOR INTERNATIONAL PRELIMINARY EXAMINATION

Rule 60.1(a)
61.1

10.044.   What happens to the demand for international preliminary examination once it has been received?  The International Preliminary Examining Authority promptly notifies the applicant of the date of receipt of the demand, and then examines the demand to ascertain whether it meets all the requirements.  If it does not, the International Preliminary Examining Authority invites the applicant to comply.  For full details on the correction of defects in the demand, see Rule 60.1 and paragraphs 10.047 to 10.049, and paragraph 10.050.

Article 31(7)
Rule 61.1(a)
61.2
61.3
61.4
Section 431

10.045.   The International Preliminary Examining Authority sends the demand or a copy thereof to the International Bureau.  The International Bureau then notifies Offices of their election and informs the applicant that it has done so.  For full details, see Rules 61.2 and 61.3.  In addition, the International Bureau, promptly after the filing of the demand but not before the international publication, publishes information on the WIPO website at:  www.wipo.int/patentscope/search/en/structuredSearch.jsf on the demand and the elected States concerned, as provided in the Administrative Instructions.

Article 31(2)(a)
Rule 61.1(b)
Section 614

10.046.   What action can the applicant take if the indications on the demand form do not support the applicant’s right to file the demand?  If the indications of the applicant’s residence and nationality given in Box No. II of the demand form do not support the applicant’s right to file a demand with the International Preliminary Examining Authority concerned (see paragraph 10.004), the International Preliminary Examining Authority notifies the applicant that the demand is considered not to have been submitted.  It may happen, however, that those indications were incorrectly stated or that the applicant in fact had a residence and/or nationality supporting the applicant’s right to file the demand.  In such a case, evidence should immediately be submitted indicating that, in fact, the applicant had, on the date on which the demand was received by the International Preliminary Examining Authority, the right to file the demand with that Authority.  If that evidence is to the satisfaction of the Authority, it will then regard the requirements of Article 31(2)(a) as having been fulfilled on the date of actual receipt of the demand, and the indications in the demand can be corrected.

10.047.   Can defects in the demand for international preliminary examination, non-compliance with certain language requirements, and non-payment of certain fees be corrected, and if so how?  What are the consequences?  If the International Preliminary Examining Authority finds that:

Article 31(3)
Rule 53
55.1

(i)  the demand does not meet the requirements as to form, contents and languages (see paragraph 10.012),

Rule 57.3

(ii)  the handling fee was not paid within one month from the date on which the demand was submitted or, where the demand was transmitted to the competent International Preliminary Examining Authority under Rule 59.3, within one month from the date of receipt by that Authority, or was not paid in the prescribed currency (see paragraphs 10.035 and 10.038), or

Rule 58.1(b)
58bis
60.1(b)

(iii)  the preliminary examination fee was not paid within one month from the date on which the demand was submitted or, where the demand was transmitted to the competent International Preliminary Examining Authority under Rule 59.3, within one month from the date of receipt by that Authority, or was not paid in the prescribed currency (fixed by the International Preliminary Examining Authority – see paragraphs 10.035 and 10.038), it invites the applicant to correct the defect(s) and comply with the requirements and/or to pay the required fee(s).  In the case of defects as to form or language, the invitation specifies a time limit of at least one month from the date of the invitation, which time limit may be extended by the International Preliminary Examining Authority at any time before a decision is taken.  In the case of defects as to fee payment, the invitation specifies a time limit of one month from the date of the invitation;  a late payment fee may also be required;  no extension of this time limit is available.  However, any payment must be considered to have been received before the expiration of the applicable time limit if it is received by the International Preliminary Examining Authority before the expiration of the time limit for paying the fee(s) or, where an invitation to pay missing fees has been sent, before that Authority makes the declaration that the demand is considered not to have been made.

Rule 60.1(b)
61.1(b)

10.048.   There is no adverse consequence for the applicant, other than possibly delaying the start of the international preliminary examination (see paragraph 10.050), if he complies with the invitation within the time limit so specified (including any extensions, where applicable), except where the defect was that the demand did not permit the international application to be identified.  In the latter case, the demand is considered to have been received on the date on which the required correction to it is received, and the International Preliminary Examining Authority informs the applicant of that date.

Rule 60.1(c)
61.1(b)

10.049.   If, after the expiration of the time limit specified (including any extensions), a signature (of at least one applicant), or other required indication (in respect of one applicant who has the right according to Rule 54.2 to make a demand) is still lacking the demand is considered not to have been submitted and the International Preliminary Examining Authority will so declare.

Article 39(1)(a)

10.050.   Where the demand is considered to have been received, as described in paragraph 10.048, on a date later than that on which it was actually submitted, the effect of postponing the commencement of the national phase (see paragraph 10.002 above) is lost if that later date is after the expiration of 19 months from the priority date.  This is, however, only relevant in respect of any State whose designated Office has notified the International Bureau that the 30-month time limit under Article 22(1), as in force from April 1, 2002, is incompatible with the national law applied by that Office.  The effect of postponing the commencement of the national phase is also lost where the demand is considered not to have been submitted (see paragraph 10.049).


THE INTERNATIONAL PRELIMINARY EXAMINATION

Rule 69.1(a)

10.051.   When does the international preliminary examination start?  Subject to the exceptions mentioned in paragraphs 10.052 to 10.055, the International Preliminary Examining Authority starts the international preliminary examination when it is in possession of the demand, the amount due (in full) for the handling fee and the preliminary examination fee, including, where applicable, the late payment fee under Rule 58bis.2, and of either the international search report and the written opinion established under Rule 43bis.1 or a declaration by the International Searching Authority that no international search report will be established and the written opinion established under Rule 43bis.1.  Even if the International Preliminary Examining Authority is in possession of all of the above, however, it may not start the international preliminary examination before the expiration of the applicable time limit under Rule 54bis.1(a) unless the applicant expressly requests an earlier start.

Rule 69.1(b)

10.052.   If the competent International Preliminary Examining Authority is part of the same (national or regional) Office as the competent International Searching Authority, the international preliminary examination may, if the Office wishes and except where the applicant has requested that the international preliminary examination be postponed (see paragraph 10.054), start at the same time as the international search (often called a “telescoped” procedure since the international search and international preliminary examination partly overlap).

Rule 53.9(a)(i)
62
69.1(c)

10.053.   Where the statement concerning amendments made in the demand contains an indication that amendments under Article 19 are to be taken into account, the International Preliminary Examining Authority will not start the international preliminary examination before it has received a copy of the amendments concerned and the accompanying letter.  Therefore, a copy of those amendments and accompanying letter should be attached to the demand by the applicant in order to allow as much time as possible for the international preliminary examination (see paragraphs 9.010, 10.025 and 10.026).  The International Bureau will, in any event, send a copy of those amendments and accompanying letter to the International Preliminary Examining Authority unless that Authority has indicated that it has already received them (see paragraph 9.010), but waiting for those copies to be sent may delay the start of the international preliminary examination.

Rule 53.9(b)
69.1(d)

10.054.   Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (see paragraph 10.026), the International Preliminary Examining Authority will not start the international preliminary examination before whichever of the following occurs first:

 

(i)  it has received a copy of any amendments under Article 19;

 

(ii)  it has received a notice from the applicant that he does not wish to make amendments under Article 19;  or

 

(iii)  the expiration of the applicable time limit under Rule 46.1.

 

Therefore, where the applicant gives such an indication in the demand, he should ensure that the International Preliminary Examining Authority is informed promptly of any amendments or of any decision on his part not to file amendments, in order to gain the maximum time possible for the international preliminary examination procedure.

Rule 53.9(c)
55.2
55.3(a), (b)
(c) and (d)
69.1(e)

10.055.   Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (see paragraph 10.026), but no such amendments are, in fact, submitted with the demand, the International Preliminary Examining Authority will not start the international preliminary examination before it has received the amendments or before it has invited the applicant to file them and the time limit fixed in that invitation has expired, whichever occurs first.  Where the international application was not filed in the language of publication, any amendments under Article 34 and any accompanying letter (as well as any letter accompanying Article 19 amendments) must be in the language of publication.  Where the international preliminary examination is carried out on the basis of a translation of the international application (see paragraph 10.011), any such amendments, and any amendments under Article 19 which are to be taken into account, and any letter that accompanied such amendments must be in the language of that translation.  Where such amendments have been or are filed in another language, a translation of the amendments into the language in which the international preliminary examination is carried out must also be furnished (see also paragraph 11.046).  If the amendments or accompanying letter are not in the required language, the International Preliminary Examining Authority will invite the applicant to furnish them within a reasonable time limit.  If the applicant fails to furnish the amendments and/or the accompanying letter within the time limit set in the invitation, the International Preliminary Examining Authority will not take the amendments into consideration for the purposes of the international preliminary examination.

Rule 66.7

10.056.   May the International Preliminary Examining Authority ask for the priority document and a translation of it?  If the International Preliminary Examining Authority needs a copy of an application the priority of which is claimed in the international application (“the priority document”) and the International Bureau already has the priority document in its possession (see paragraph 5.070), the International Bureau furnishes a copy of it to the Authority on request.  Should the applicant have failed to provide the priority document under Rule 17.1, the international preliminary report on patentability (Chapter II of the PCT) may be established as if the priority had not been claimed, but no elected Office may later disregard the priority claim under those circumstances before giving the applicant an opportunity to furnish the priority document within a time limit which is reasonable under the circumstances.  Where the priority document is in a language other than the language or one of the languages indicated for the International Preliminary Examining Authority in Annex E, and that Authority is of the opinion that the validity of the priority claim is relevant for the formulation of the opinion on whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable, the Authority may invite the applicant to furnish to it a translation in that language.  The applicant must comply with that invitation within two months from its date;  otherwise, the international preliminary report on patentability (Chapter II of the PCT) may be established as if the priority had not been claimed.

Article 33(1)

10.057.   What is the purpose of the international preliminary examination?  As already stated in paragraph 10.001, the purpose of the international preliminary examination is to formulate an opinion – which is “preliminary” (since a final opinion will be formulated only in the national phase by the national or regional Patent Office or by a competent national or regional court) and “non-binding” (on anyone, including elected Offices) – on whether the claimed invention appears (i) to be novel, (ii) to involve an inventive step (to be non-obvious), and (iii) to be industrially applicable.  While there is not a fully uniform approach to these criteria in national laws, their application under the PCT during the international preliminary examination procedure is such that the international preliminary report on patentability (Chapter II of the PCT) gives a good idea of the likely results in the national phase.

Article 33(2)
Rule 64

10.058.   For the purposes of the international preliminary examination, a claimed invention is considered novel if it is not anticipated by the prior art. Rule 64 defines “prior art” for the purposes of the examination.

Article 33(3)
Rule 65

10.059.   For the purposes of the international preliminary examination, a claimed invention is considered to involve an inventive step if, having regard to the prior art as defined in the Regulations (see paragraph 10.058), it is not, at the prescribed relevant date, obvious to a person skilled in the art.  For further details, see Rule 65.

Article 33(4)

10.060.   For the purposes of the international preliminary examination, a claimed invention is considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry.

Rule 66.1
66.4bis

10.061.   What documents form the basis of the international preliminary examination?  The international preliminary examination is based on the claims, the description and the drawings comprised in the international application.  Amendments to the claims under Article 19 made before the demand was filed are taken into account unless they are superseded by a subsequent amendment under Article 34 (see paragraph 10.028) or considered as reversed by an amendment under Article 34 (see paragraph 10.026).  Amendments made after the demand is filed, whether under Article 19 or under Article 34, are also taken into account for the purposes of the international preliminary examination, except that they need not be taken into account for the purposes of a written opinion of the International Preliminary Examining Authority or the international preliminary report on patentability (Chapter II of the PCT) if they are received after the International Preliminary Examining Authority has begun to draw up that opinion or report.  As to the allowability of amendments in general, see paragraph 11.047.

Rule 66.2(a)(vi)

10.062.  What happens if no international search report has been established in respect of certain claims?  Claims relating to inventions in respect of which no international search report has been established (see paragraphs 7.013 to 7.021) need not be the subject of international preliminary examination and any written opinion of the International Preliminary Examining Authority, as well as the international preliminary report on patentability (Chapter II of the PCT), will so indicate.

Rule 13ter.2

10.063.   What special requirements apply during the international preliminary examination to nucleotide and/or amino acid sequence listings?  Where the International Preliminary Examining Authority finds that an international application contains disclosure of a nucleotide and/or amino acid sequence and that listings of the sequences complying with the standard provided for in Annex C of the Administrative Instructions (see paragraph 5.099) have not already been furnished (as part of the international application or for the purposes of international preliminary examination, as the case may be), that Authority may invite the applicant to furnish sequence listings complying with this standard.  If the International Preliminary Examining Authority finds that the applicant has not already furnished (as part of the international application or for the purposes of international preliminary examination, as the case may be), sequence listings in electronic form complying with the standard provided for in Annex C of the Administrative Instructions, it may invite the applicant to furnish sequence listings to it in such a form.  The listings required by the International Preliminary Examining Authority are for the purposes of carrying out the international preliminary examination.  National law requirements, in relation to disclosure of inventions involving sequence listings, are a matter for the national phase of processing.

Rule 66.2

10.064.   What matters concerning the international application may be the subject of comment by the International Preliminary Examining Authority?  The International Preliminary Examining Authority notifies the applicant in a “written opinion” if it considers that

Article 34(4)(a)(i)
35(3)(a)
Rule 66.2(a)(i)
67

(i)  the international application relates to subject matter on which it is not required to carry out an international preliminary examination, and decides not to carry out such an examination (this situation being the same as the one described in paragraph 7.013 in relation to the international search),

Article 34(4)(a)(ii)
Rule 66.2(a)(i)

(ii)  the description, the claims or the drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness) or industrial applicability of the claimed invention (this situation being the same as the one described in paragraph 7.014 in relation to the international search),

Rule 66.2(a)(ii)

(iii)  the international preliminary report on patentability (Chapter II of the PCT) should be “negative” (see paragraph 10.075) in respect of any of the claims because the invention claimed therein does not appear to be novel, does not appear to involve an inventive step (be non-obvious), or does not appear to be industrially applicable,

Rule 66.2(a)(iv)

(iv)  any amendment goes beyond the disclosure in the international application as filed (see paragraphs 10.070 and 11.047),

Rule 66.2(a)(v)

(v)  the international preliminary report on patentability (Chapter II of the PCT) should be accompanied by (unfavorable) observations on the clarity of the claims, the description and the drawings, or on the question of the claims being fully supported by the description,

Rule 66.2(a)(vi)

(vi)  a claim relates to an invention in respect of which no international search report has been established (see paragraphs 7.013 to 7.021) and the International Preliminary Examining Authority has decided not to carry out the international preliminary examination in respect of that claim,

Rule 66.2(a)(vii)

(vii)  a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out (similarly to paragraph 5.099 in relation to the international search),

Rule 66.2(a)

(viii)  the national law applied by the national Office which acts as the International Preliminary Examining Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the second and third sentences of Rule 6.4(a) (this situation being the same as the one described in paragraphs 5.113 and 7.014 in relation to the international search).

Rule 66.2(a)(iii)

10.065.   The Authority also proceeds as indicated in paragraph 10.064 where it notices some defect in the form or contents of the international application.  Where observance of the unity of invention requirement (see paragraphs 5.114 to 5.123) is in question, see paragraph 10.072.

Rule 66.2
66.4(a)

10.066.   What is a “written opinion”?  A “written opinion” is a notification, issued by the International Preliminary Examining Authority to the applicant, which indicates any comments by the Authority on the matters mentioned in paragraph 10.064.  The written opinion must fully state the reasons for it, must invite the applicant to submit a written reply and must fix a time limit for the reply (usually two months, but extendible at the applicant’s request – for more details, see Rule 66.2(d)).  There may be no written opinion if the Authority has no such comments to make (in which case the Authority will proceed directly to the issuance of the international preliminary report on patentability (Chapter II of the PCT)).  The Authority may issue one or more additional written opinions if time permits, particularly if the applicant makes a prompt and serious attempt to address the Authority’s comments by argument or amendment.

Article 34(2)(a)
and (d)
Rule 66.2(b), (c)
and (d)
66.3
66.4
66.5
66.6
66.8

10.067.   How may the applicant react to a written opinion by the International Preliminary Examining Authority?  May the applicant amend the international application at this stage?  The applicant may ask for further clarifications from the International Preliminary Examining Authority and may himself give clarifications to it, since the PCT expressly provides that the applicant has a right to communicate orally, by telephone or personally, or in writing with the Authority (Article 34(2)(a);  see also Rule 66.6).  More specifically, where the applicant receives a written opinion from the Authority on any of the matters referred to in paragraphs 10.064 and 10.065, he may respond to that written opinion (see Article 34(2)(d)).  The response may consist of amendments and/or arguments.  Any change – other than the rectification of obvious mistakes (see paragraphs 11.033 to 11.044) – in the claims, the description or the drawings (including cancellation of claims, omission of passages in the description or omission of certain drawings) is considered an amendment.  For the form of amendments, see paragraph 10.071.  If the International Preliminary Examining Authority issues one or more additional written opinions, the applicant’s reaction possibilities are the same as in the case of the first written opinion.  The applicant may request the International Preliminary Examining Authority to give him one or more additional opportunities to submit amendments or arguments if sufficient time remains.

Rule 66.4bis

10.068.   Will amendments and arguments always be taken into account?  Amendments and arguments submitted will be taken into account if they are received in sufficient time.  In view of the limited time available for international preliminary examination, however, it is in the applicant’s interest to reply as soon as possible to any written opinion.  Amendments or arguments need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary report on patentability (Chapter II of the PCT) if they are received after the Authority has begun to draw up that opinion or report.

10.069.   It should be noted that the International Preliminary Examining Authority cannot force the applicant to make any change in the international application.  In other words the applicant may disregard any opinion of the said Authority, either wholly or in part.  Such an attitude may lead to an unfavorable or less favorable international preliminary report on patentability (Chapter II of the PCT), but the applicant may prefer such a report (in the hope that he will overcome, in the national phase, any difficulties that it may cause him) to a change which he does not believe in.

Article 34(2)(b)
Rule 70.2(c)

10.070.   May amendments include new matter in the international application?  As for amendments under Article 19 (see paragraph 9.009), amendments under Article 34(2)(b) may not go beyond the disclosure in the international application as filed.  If the International Preliminary Examining Authority considers that any amendments do not comply with this requirement, it will comment accordingly in any written opinion and in the international preliminary report on patentability (Chapter II of the PCT), and the report will be established as if such amendment had not been made (see also paragraph 11.047).

Rule 11.14
46.5
55.3
66.8
70.2(c-bis)

10.071.   What must be done to effect amendments to the international application before the International Preliminary Examining Authority? The applicant must submit a replacement sheet for every sheet which, on account of an amendment, differs from the sheet previously filed. The amendment must be submitted with an accompanying letter which explains the difference between the replaced sheet and the replacement sheet and which preferably explains the reasons for the amendment. In addition, the letter must indicate the basis for the amendment in the application. The basis for the amendment must always refer to the application (description, claims, drawings) as originally filed, even if multiple amendments were made during the international phase. When filing amendments to the claims, a complete set of claims in replacement of the claims as originally filed (or previously amended under Article 19) shall be submitted. For an example of how the basis for the amendment should be indicated, see paragraph 9.006. For the consequences of not furnishing an accompanying letter with the replacement sheets, see paragraph 11.047A. Where the amendment consists in the deletion of passages or in minor alterations or additions, the alterations or additions may be made on a copy of the relevant sheet of the international application, provided that the clarity and direct reproducibility of that sheet are not adversely affected. No replacement sheet is required where the amendment results in the cancellation of an entire sheet;  such an amendment may be communicated in a letter which preferably explains the reasons for the amendment. For amendments to the claims, see also paragraphs 9.005 and 9.006 in relation to the international search, which apply mutatis mutandis.  Where the international application was not filed in the language of publication, any amendments under Article 34 and any accompanying letter (as well as any letter accompanying Article 19 amendments) must be in the language of publication.  Where the international preliminary examination is carried out on the basis of a translation of the international application (see paragraphs 10.011, 10.054 and 10.055), any amendments under Article 34 and any amendments under Article 19, which are to be taken into account, and any accompanying letter must be in the language of that translation. Where such amendments have been or are filed in another language, a translation of the amendments into the language in which the international preliminary examination is carried out must also be furnished (see paragraphs 5.013, 10.011 and 11.046). No fee is payable in respect of filing any amendments under Article 34(2)(b).  If the amendments or accompanying letter are not in the required language, the International Preliminary Examining Authority will invite the applicant to furnish them within a reasonable time limit.  If the applicant fails to furnish the amendments and/or the accompanying letter within the time limit set in the invitation, the International Preliminary Examining Authority shall not take such amendments into account for the purposes of the international preliminary examination.

Rule 68
70.13

10.072.   What happens where the International Preliminary Examining Authority finds that “unity of invention” is lacking?  If the International Preliminary Examining Authority considers that the international application does not comply with the unity of invention requirement (see paragraphs 5.114 to 5.123 for the notion of “unity of invention”), it may choose between two courses of action:  it may carry out the international preliminary examination on the entire international application and express its views on the lack of unity of invention in the international preliminary report on patentability (Chapter II of the PCT), or it may invite the applicant, at his option, either to restrict the claims so that they meet the requirement (in which case the Authority must specify at least one possibility of restriction) or to pay additional fees (since the preliminary examination fee is calculated to cover cases where unity of invention exists).  If the applicant chooses to restrict the claims as required, the examination is carried out on the claims as restricted.  If the applicant chooses to pay the additional fees, the international preliminary examination is carried out on the claims for the main invention and those claims in respect of which additional fees were paid, and the report will indicate that such additional fees have been paid.  The additional fees may be paid under protest, in which case procedures similar to those explained in relation to the international search apply (see paragraphs 7.019 and 7.020).  If the applicant neither restricts the claims nor pays additional fees, the examination is carried out on the main invention as identified by the International Preliminary Examining Authority or the applicant, or in cases of doubt as defined in Rule 68.5 (namely, the invention first mentioned in the claims is considered to be the main invention).

Article 34(3)

10.073.   A finding of lack of unity of invention may continue to be important during the national phase.  Any elected Office which agrees with the finding of lack of unity may, during the national procedure, require the applicant to restrict the claims or to divide the application into a number of divisional applications, or to pay special fees in order to maintain those parts of the international application which do not relate to the main invention (for further details, see Article 34(3)).


THE INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY (CHAPTER II OF THE PCT)

Article 35(1)
Rule 69.2

10.074.   When must the international preliminary report on patentability (Chapter II of the PCT) be established?  The time limit for establishment of the international preliminary report on patentability (Chapter II of the PCT) is whichever of the following which expires last:  28 months from the priority date;  six months from the time provided under Rule 69.1 for the start of the international preliminary examination;  or six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2 (see paragraphs 10.051 to 10.055). Thus, under normal circumstances, the applicant receives the report, at the latest, two months before national processing at the elected Offices may start.  This ensures that he has time to consider whether, and in which elected Offices, he wants to enter the national phase and to prepare the necessary action (for details, see National Phase).

Article 35(1)
and (2)
Rule 70
Section 604

10.075.   What are the form and contents of the international preliminary report on patentability (Chapter II of the PCT)?  The international preliminary report on patentability (Chapter II of the PCT) contains, among other things, a statement (in the form of a simple “yes” or “no”), in relation to each claim which has been examined, on whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness) and industrial applicability.  The statement is, where appropriate, accompanied by the citation of relevant documents together with concise explanations pointing out the criteria to which the cited documents are applicable and giving reasons for the International Preliminary Examining Authority’s conclusions.  Other matters which may be included in the report are listed in paragraphs 10.064 and 10.065.  Where applicable, the report also includes remarks relating to the question of unity of invention (see paragraph 10.072).  For more details, see Article 35(1) and (2), Rule 70 and Section 604.

Rule 70.2(c-bis) and (e)
70.16

10.076.   How are amendments to the international application referred to in the international preliminary report on patentability (Chapter II of the PCT)?  The international preliminary report on patentability (Chapter II of the PCT) identifies the basis on which it is established – that is, whether, and if so, which, amendments have been taken into account.  If amendments were made either under Article 19 and/or Article 34, but the applicant failed to submit the required accompanying letter to the International Bureau or the International Preliminary Examining Authority, the report may be established as if the amendments concerned had not been made and the report shall so indicate.  The following are attached as “annexes” to the international preliminary report on patentability (Chapter II of the PCT):  replacement sheets containing amendments under Article 19 and/or Article 34, which have been taken into account, and any accompanying letters, and replacement sheets containing rectifications of obvious mistakes, and accompanying letter authorized under Rule 91.  Where a rectification of an obvious mistake is not taken into consideration because it has reached the International Preliminary Examining Authority only after it has begun to draw-up the report and, as a result, was not taken into account, the report shall so indicate and the sheets relating to the rectification will be annexed to the report.  Amendments under Article 19 which have been considered as reversed by an amendment under Article 34 (see paragraph 10.026) or which have been superseded by later replacement sheets, or amendments resulting in the cancellation of entire sheets, are not annexed to the report neither are the letters which accompany such replacement sheets.  However, if the International Preliminary Examining Authority considers that the superseding or reversing amendment goes beyond the original disclosure, each superseded or reversed replacement sheet and any letter relating to such sheets are nevertheless annexed to the report.  Similarly, if the applicant failed to submit, together with the superseding or reversing amendments, the required accompanying letter, indicating the basis of the amendment in the application as filed, and where, as a result, the report is established as if the superseding or reversing amendments had not been made, each such superseded or reversed replacement sheet and any letter relating to such sheets are nevertheless annexed to the report.

Article 35(2)

10.077.   May the international preliminary report on patentability (Chapter II of the PCT) express a view on the patentability of the invention?  No, it may not.  Article 35(2) expressly states that “the international preliminary examination report shall not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law.”  It should be noted that, in this context, “national law” includes regional patent treaties (the ARIPO Harare Protocol, the Eurasian Patent Convention, the European Patent Convention and the OAPI Agreement).

Rule 70.17
72
74

10.078.   In what language is the international preliminary report on patentability (Chapter II of the PCT) established?  Are translations prepared?  The international preliminary report on patentability (Chapter II of the PCT) and any annexes are established in the language in which the international application is published – see paragraphs 9.017 to 9.020) – except where the international preliminary examination is carried out on the basis of a translation (see paragraphs 5.013, 10.011 and 10.013), in which case the international preliminary report on patentability (Chapter II of the PCT) and annexes are established in the language of that translation.  Each elected State may require that the report, if it is not in (one of) the official language(s) of its national Office, be translated into English.  If this is the case, the translation of the body of the report is prepared by the International Bureau, which transmits copies to the applicant and to each interested elected Office.  If any elected Office requires a translation of annexes to the report, the preparation and furnishing of that translation is the responsibility of the applicant.

Article 36(1)
36(3)(a)
Rule 71.1
73.2
93bis

10.079.   How do the applicant, the International Bureau and the elected Offices receive the international preliminary report on patentability (Chapter II of the PCT) and, where applicable, its translation?  The International Preliminary Examining Authority transmits, on the same day, copies of the international preliminary report on patentability (Chapter II of the PCT) (and any annexes – see paragraph 10.076) to the applicant and the International Bureau.  The latter transmits copies of the report (including any annexes) to the elected Offices, as well as a translation into English of the body of the report where that is required by any elected Office in accordance with Rule 93bis;  a translation of any annexes, if required, must be prepared and sent to the elected Offices concerned by the applicant himself (see paragraph 10.078 and the National Phase).  If, in the opinion of the applicant, there are errors in the translation of the international preliminary report on patentability (Chapter II of the PCT), he may send written observations on such errors to any interested elected Office and must send a copy of such observations to the International Bureau.  As far as comments on the content of the international preliminary report on patentability (Chapter II of the PCT) itself are concerned, they should be addressed to the elected Offices during the national phase.

Article 36(3)(a)
38(1)
Rule 73.2(a)
94.1
94.2
94.3

10.080.   Is the international preliminary report on patentability (Chapter II of the PCT) accessible to persons other than the applicant and the elected Offices?  The report is not published by the International Bureau.  According to Article 36(3)(a), the International Bureau communicates the report to elected Offices.  As of 1 January 2004, however, if so requested by an elected Office (details of such requests are published in the Official Notices (PCT Gazette)), the International Bureau will make available on the WIPO website at:  www.wipo.int/patentscope/search/en/structuredSearch.jsf the international preliminary report on patentability (Chapter II of the PCT), although, not before the expiration of 30 months from the priority date.  The International Preliminary Examining Authority may not, unless requested or authorized by the applicant, give copies to anyone other than the applicant and the International Bureau.  Once the international preliminary report on patentability (Chapter II of the PCT) becomes part of the file in the elected Office, however, the national law applicable by that Office applies as to access to that report and the international preliminary examination file by persons other than the applicant, as indicated in paragraph 11.072.

Article 38
Rule 94

10.081.   To what extent is the international preliminary examination confidential?  Neither the International Bureau nor the International Preliminary Examining Authority may, unless requested or authorized to do so by the applicant, give information on the issuance or non-issuance of an international preliminary report on patentability (Chapter II of the PCT) or on the withdrawal or non-withdrawal of the demand or of any election.  Information from the international preliminary examination file may, however, be available through some elected Offices.  For further explanation of the extent to which the international application is treated as confidential and of the possibilities for third parties to obtain information concerning the international preliminary examination, see paragraphs 11.072 to 11.074.

Article 36(4)
Rule 71.2

10.082.   How can the applicant obtain copies of the documents cited in the international preliminary report on patentability (Chapter II of the PCT)?  The applicant may obtain copies of those documents cited in the international preliminary report on patentability (Chapter II of the PCT) which were not cited in the international search report by requesting them from the International Preliminary Examining Authority.  Annex E indicates the fees charged by such Authorities for furnishing copies on request.

10.083.   What is the effect and usefulness of the international preliminary report on patentability (Chapter II of the PCT) in the national phase?  Since the international preliminary report on patentability (Chapter II of the PCT) contains an opinion on the compliance of the international application with internationally accepted criteria of novelty, inventive step (non-obviousness) and industrial applicability, it provides the applicant with a strong basis on which to evaluate the chances of obtaining patents in the various Offices in the national phase.  While the international preliminary report on patentability (Chapter II of the PCT) is not binding on elected Offices, it carries considerable weight with them, and a favorable report will assist the prosecution of the application before the elected Offices.  An elected Office which is the same national or regional Office as that which carried out the international preliminary examination as International Preliminary Examining Authority under the PCT will generally proceed rapidly to the grant of a patent in the national phase if the international preliminary report on patentability (Chapter II of the PCT) is favorable to the international application.