PCT Newsletter 04/2010: Practical Advice

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.

Factors to be considered when deciding whether or not to file a demand for international preliminary examination

(Views of David Reed, former Senior Patent Advisor, The Procter & Gamble Company, and current PCT Consultant).

Q:  I have just received the international search report and the written opinion of the International Searching Authority.  What should I consider when deciding whether to file a demand for international preliminary examination under PCT Chapter II?

A:  International preliminary examination is an optional procedure under the PCT, and the decision whether or not to make use of it must be reviewed for each international application.  Examples of different situations in which applicants may find themselves are:

1)      the applicant receives the written opinion of the International Searching Authority (ISA) indicating that all claims appear to be novel, to involve an inventive step and to be industrially applicable.  Additionally, the examiner has not noted any formality defects or other issues;

2)      the applicant receives the written opinion of the ISA indicating that all claims appear to be novel, to involve an inventive step and to be industrially applicable; however, the examiner has noted one or more formality defects;

3)      the applicant receives the written opinion of the ISA and the examiner has concluded that one or more of the claims lack novelty, inventive step or industrial applicability;

4)      the applicant receives the written opinion of the ISA and the examiner has concluded that one or more of the claims lack novelty, inventive step or industrial applicability, but the information arrived late; or

5)      the applicant does not receive an ISR or a written opinion of the ISA, but receives a declaration under PCT Article 17(2)(a) that no ISR will be established.

To give full consideration to all of these situations, this “Practical Advice” will be split over two issues of the PCT Newsletter.  This issue will deal with a more positive ISR and written opinion of the ISA (situations (1) and (2)) and next month’s issue will deal with more negative situations (situations (3) to (5)).

Background on international preliminary examination

Regardless of whether a demand for international preliminary examination (hereinafter “demand”) is filed, the applicant will receive a written opinion of the ISA (see PCT Rule 43bis) which gives a preliminary, non-binding opinion on the novelty, inventive step and industrial applicability of the claimed invention as defined in PCT Article 33.  Additionally, the written opinion of the ISA may also point out any formality defects or other issues the examiner discovers during the initial review (the extent of review for such matters is at the discretion of the examiner and varies between International Authorities).  If the applicant decides not to file a demand for international preliminary examination, the International Bureau (IB) will attach a cover sheet to the written opinion of the ISA and issue it as the international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty) (IPRP Chapter I) and send it to the designated Offices (DOs) for their use. 

If, following a review of the prior art cited in the ISR and opinions and comments in the written opinion of the ISA, the applicant decides to take issue with these findings under the PCT, a demand for international preliminary examination (hereinafter “demand”) must be filed with the International Preliminary Examining Authority (IPEA), together with arguments and/or amendments, as well as payment of the requisite fees (PCT Rules 57 and 58).  Alternatively, the applicant can submit informal comments in response to the ISA’s written opinion to the IB but these will neither be published nor sent to the ISA or to the IPEA, even if a demand is filed (if the applicant wants the IPEA to consider his previously-filed “informal comments”, he/she will have to re-submit them directly to the IPEA).  The informal comments will simply be kept in the file of the international application and, in the case where no demand is filed, forwarded to the DOs. 

The deadline for filing a demand is three months from the date of transmittal to the applicant of the ISR (or the declaration referred to in PCT Article 17(2)(a)), and of the written opinion, or 22 months from the priority date, whichever expires later.  In addition to allowing applicants to formally respond to an unfavorable written opinion, filing a demand also allows them to amend the description, claims and/or drawings under PCT Article 34(2)(b).

The outcome of this procedure is the issuance of an international preliminary examination report (IPER) (entitled “international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty) (IPRP Chapter II)”) by the IPEA examiner, which will be sent by the IB to the elected Offices (EOs) for their use.

As indicated earlier, the decision to file a demand must be made for each international application, and a primary consideration, before doing so, is whether or not the value an applicant expects to receive from the procedure justifies the time and expense required.  

The cost of filing a demand varies depending on the IPEA used by the applicant.  The IPEA available for use is determined by the applicant’s receiving Office (RO), and, in some cases, which Office acted as ISA, and an applicant may have the choice of more than one IPEA.  Two fees are due for filing a demand:  an examination fee, which covers the costs incurred during the examination procedure, and a handling fee which offsets the IB’s cost of translating and distributing the IPER.  The overall cost of the procedure consists of these fees plus the applicant’s or agent’s time to prepare and submit the arguments in response to the written opinion and/or amendments.  It is this total cost that must be weighed against the benefits received from obtaining an IPER when deciding whether to use this procedure.

1)      The applicant receives the written opinion of the ISA indicating that all claims appear to be novel, to involve an inventive step and to be industrially applicable.  Additionally, the examiner has not noted any formality defects or other issues.

In this situation, the searching examiner has neither discovered any prior art that negatively impacts the novelty, inventive step or industrial applicability of the claimed invention, nor found any formality defects.  The written opinion of the ISA is “positive” in all aspects and the final IPRP Chapter I will show that the claimed invention meets these three generally accepted criteria for patentability (as set forth in PCT Article 33). 

Unless case-specific circumstances require the applicant to amend one or more parts of the application, there is little value to be obtained from filing a demand, given that the only remaining States where this still extends the period for entering the national phase are ones also covered by regional systems where the time limit is at least 30 months whether a demand is filed or not.  In fact, if a demand is filed without the applicant submitting arguments and/or amendments to the application, the written opinion of the ISA will, typically, simply be re-issued in the form of an IPER.  The IPRP Chapter I will convey the positive findings to all DOs/EOs and the national examiners can take these findings into consideration during national examination and the applicant will receive whatever benefits are given by each national office in light of a positive IPRP Chapter I.  It is recalled that, in the case of PCT applications that have received a positive written opinion of either the ISA or the IPEA, or an IPER from the European Patent Office, the Japan Patent Office or the United States Patent and Trademark Office, patent examination procedures in the national phase before those Offices can be fast-tracked under the Trilateral PCT‑Patent Prosecution Highway (PCT‑PPH), the pilot of which started in January 2010 and is planned to run for two years (see PCT Newsletter Nos. 12/2009, cover page, and 02/2010, page 2, for further information).  Other Offices, such as the United Kingdom Intellectual Property Office (an operating name of the Patent Office), are also expected to offer this accelerated processing in the near future.

2)      The applicant receives the written opinion of the ISA indicating that all claims appear to be novel, to involve an inventive step and to be industrially applicable;  however, the examiner has noted one or more formality defects.

Under the PCT, all national (or regional) offices are required to accept the formal requirements set out under the PCT.  An office may apply a standard different from the requirements under the PCT only if the national standard is more favorable to the applicant.  It is recalled that the receiving Office only objects to formalities defects if compliance “is necessary for the purpose of reasonably uniform international publication”.  Similarly, some designated Offices may not be concerned by some of the requirements of PCT Rule 11 and will either not include the relevant requirements in their law, or else not enforce them.

In this situation, the search examiner has concluded that the claimed invention satisfies the criteria under PCT Article 33, but there are formal defects that need correcting.  The applicant must look at the formal defects raised and decide:

a)      whether correction of the formal defects will be required by the national offices of interest during the national phase; and

b)      whether it is more cost effective or strategically viable to make the correction once under Chapter II or to make the correction before each office upon national phase entry. 

The answer to the question will depend on the nature of the formality defect noted and the States in which it is intended to enter the national phase.  In most cases, perhaps the formality defect would better be corrected by preliminary amendment when entering the national phase and there may be little value in making the correction under Chapter II.  This will especially be so if you will be relying on translations in most States rather than the original language of the international application.  Each case should be individually examined and either the most cost-effective route should be used to make any corrections that will be required during national processing, or the route which best suits the problem strategically.  For example, it may be more beneficial for the applicant to fix certain issues earlier during the international phase, rather than before the designated Offices during the national phase, where, in the case of certain countries, addressing these issues may be more cumbersome or else it is particularly beneficial to enter the national phase with a “clean” report.  In such a case, even if the issue relates only to a limited number of Offices, and even if it adds some costs to the procedure as a whole, it might be worthwhile filing a demand.

This "Practical Advice" will be continued in next month's issue of the PCT Newsletter with information and advice relating to situations 3 to 5, above.