WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Time limit for submitting a formal response to a written opinion of the ISA where a demand for international preliminary examination is being filed

Q: I intend to file a demand for international preliminary examination, as well as a response to the written opinion of the ISA (in the form of arguments), including amendments under Article 34. I will file the demand within the new time limit under PCT Rule 54bis for filing a demand.* However, that time limit will expire very shortly and the response to the written opinion is not ready yet. Does the response to the written opinion have to be filed at the same time as the demand, or can it be filed later, and if so, what is the time limit for doing so? Can the time limit for filing the response be extended? What happens if the response is submitted late?

A: At the earliest, a formal response to the written opinion of the International Searching Authority (ISA) and/or amendments under PCT Article 34 may be submitted by the applicant to the International Preliminary Examining Authority (IPEA) together with the demand. At the latest, such responses may be submitted until the time when the examiner at the IPEA starts to draw up the international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty) (IPRP (Chapter II)) (PCT Rule 66.4bis).

The time when the IPEA starts to draw up the IPRP (Chapter II) depends on the inner workings of the IPEA and is therefore difficult to monitor for applicants; at the earliest, it should not normally be before the time limit under PCT Rule 54bis.1(a) for filing the demand (that is, within 3 months from the date of transmittal of the international search report (ISR) and of the written opinion of the ISA, or within 22 months from the priority date, whichever expires later) (see PCT Rule 69.1). It is more likely to occur very shortly after the expiration of that time limit where the first written opinion (established by the ISA) is used by the IPEA as its own first opinion (PCT Rule 66.1bis(a)). One rather exceptional situation which may result in the IPRP (Chapter II) being drawn up before the expiration of that time limit would be if both the demand is filed early, before the international search has started, and if the ISA also acts as IPEA, in which case the international preliminary examination may start at the same time as the international search (see PCT Rule 69.1(b)).

Note that if the IPEA is not the same as the ISA, and the IPEA has notified the International Bureau under PCT Rule 66.1bis(b) that the written opinion of the ISA will not be considered by the IPEA as its own written opinion (the European Patent Office is the only Office which has made such a notification—see PCT Newsletter No. 01/2004, page 4), you will receive an additional written opinion established by the IPEA (Form PCT/IPEA/408), and will therefore be given an additional opportunity to respond to the written opinion within a time limit fixed by the IPEA. That time limit may be extended upon request (see PCT Rule 66.2(e)).

If the IPEA does consider the written opinion of the ISA to be its own written opinion (PCT Rule 66.1bis(a)), and you intend to file a response to that written opinion with the intention that it be considered by the IPEA, but are not in a position to submit it with the demand, and especially if you are in danger of missing the time limit under PCT Rule 54bis.1(a), you could try and delay the establishment of the IPRP (Chapter II) until your response has been received by the IPEA by:

1) asking the IPEA to wait until a formal response has been received before it starts to draw up the IPRP (Chapter II), either by a letter filed with the demand, or by phone with the examiner in charge of your case (but bear in mind that, if the time limit under PCT Rule 54bis.1(a) has expired, it will be at the discretion of the IPEA whether it will wait for your formal response); or

2) checking Box No. IV, item (1), on the Demand Form to indicate that you wish the international preliminary examination to start on the basis of the description, claims or drawings as amended under PCT Article 34. If you do not submit such amendments with the demand, the IPEA will invite you to submit the amendments within a time limit fixed in the invitation (see PCT Rule 60.1(g)) and should not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation has expired, whichever occurs first (see PCT Rule 69.1(e)). Note that, apart from the situation where the IPEA issues its own written opinion (see third paragraph of this answer), this is the only situation in which the IPEA will invite the applicant to submit the amendments—it will not issue any reminders otherwise.

In order to be certain that your amendments and arguments will be taken into account by the IPEA, it is therefore in your best interest, wherever possible, to respond as soon as possible to the written opinion of the ISA, preferably, at the time of filing the demand, or at least not later than at the expiration of the time limit under PCT Rule 54bis.1(a). When this is not possible, however, your best option is to follow one of the two alternatives mentioned above.

Note that this item relates specifically to formal responses under Chapter II to the written opinion of the ISA, and that informal comments under Chapter I on the written opinion of the ISA are dealt with separately in the “Practical Advice” in PCT Newsletter No. 10/2004. For further information on responses under Chapter II to the written opinion of the ISA, see PCT Applicant’s Guide, paragraphs 393 to 394. For general information on the new search and examination system, see the “Practical Advice” in PCT Newsletter No. 12/2003.

* The demand must still be filed within 19 months from the priority date where the applicant wishes to enter the national phase (rather than the regional phase) in those States which have not withdrawn their notifications of incompatibility of PCT Article 22(1).