PCT Newsletter 05/2010: 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 – Part 2

(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:  Filing a demand for international preliminary examination is an optional procedure under the PCT, which must be reviewed for each international application.  The “Practical Advice” that was published in PCT Newsletter No. 04/2010 dealt with the following situations, where the written opinion of the International Searching Authority (ISA) is more positive:

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;  and

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.

This issue will deal with the following, more negative, situations:

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;  and

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

It is recalled that the written opinion of the ISA provides the applicant with an examiner’s opinion on the novelty, inventive step and industrial applicability of the claimed invention.  Any negative findings, substantive or formal, will be placed before the national (or regional) examiner in every country where the national phase is entered.  At some point in the patenting process, it is reasonable to conclude that an applicant will have to respond to each negative finding contained in the written opinion with amendments and/or arguments.  The Chapter II procedure gives the applicant the opportunity to respond to these once, during the international phase, as opposed to writing and filing multiple responses in all national offices where national phase entry is made.  For cases where the written opinion of the ISA contains negative findings, the savings in the applicant’s/agent’s time and, where applicable, agent’s fees, required by multiple responses to national offices may well justify the use of the Chapter II procedure.

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

In this situation an applicant is faced with an opinion that one or more claims do not meet the basic requirements for patentability (as defined in PCT Article 33).  If the documents cited in the ISR are applicable under national law and a national examiner agrees with the findings stated in the written opinion of the ISA, a patent will probably not be issued for the claims affected.  If, after careful analysis, the applicant concludes that the negative findings in the written opinion of the ISA have merit and an amendment to the claims and/or an argument is needed to restore novelty or inventiveness to the claims, the PCT offers two options:

(a)     An amendment to the claims (only) may be filed under PCT Article 19 (information on the filing of amendments will be the subject of a separate “Practical Advice” in the near future).  Any amendments under PCT Article 19 and the accompanying statement will be published with the international application.  It is important to note that making use of PCT Article 19 to correct any negative findings in the written opinion of the ISA will not affect the contents of the subsequent international preliminary report on patentability (Chapter I of the PCT) (IPRP Chapter I).  The IPRP Chapter I will still set forth the opinion given in the written opinion of the ISA.  (It is possible to file an amendment under PCT Article 19 and to also use the Chapter II procedure.  This allows an applicant to have amended claims published to help secure provisional protection in the countries offering it and, under Chapter II, to submit arguments and/or further amendments in favor of novelty, inventive step and industrial applicability to an IPEA examiner before the issuance of the international preliminary report on patentability (Chapter II of the PCT) (IPRP Chapter II).

(b)     An amendment to the claims, description and/or drawings as well as a complete argument in favor of novelty, inventive step and/or industrial applicability can be submitted under PCT Article 34.  This is a procedure under PCT Chapter II and requires the timely filing of a demand for international preliminary examination and payment of the fees mentioned in Part 1 of this “Practical Advice”.

The advantages of a favorable IPRP Chapter II are numerous.  Individual case experience has shown that many patent Offices give considerable weight (up to full faith and credit) to an IPRP Chapter II positive for novelty, inventive step and industrial applicability.  All PCT national or regional Offices will use the IPRP Chapter II findings to assist them in carrying out their national or regional examination of an application.  Patent Offices having a strong examination staff or those with national laws differing from the standards set out in PCT Article 33 (such as “grace periods”) will take the non-binding opinions in the IPRP Chapter II into consideration, but will continue to conduct their full, normal examination.  Offices with a smaller examining staff and those without examiners tend to rely more heavily on the results in the IPRP Chapter II. 

When evaluating the usefulness of the Chapter II procedure, the savings realized in reduced national prosecution time and expense in those countries relying heavily on the IPRP Chapter II should be considered.  Some practitioners have estimated that for an application being filed broadly (in 50 or more countries), a favorable IPRP Chapter II can save two to three weeks of foreign prosecution time during the national phase.  Additionally, national or regional prosecution in the Office conducting the international preliminary examination may also be more rapid and/or incur reduced national fees.  Following examination under Chapter II, the applicant will also have a better idea of the chances of obtaining meaningful patent protection in the countries of the world.  This information can be very valuable for making the national phase entry decision.

When receiving a written opinion of the ISA reporting that some or all of the claims lack novelty and/or inventive step, an applicant must weigh the cost and effort of responding to the findings in the written opinion of the ISA under Chapter II versus the cost of responding to the same rejections (plus perhaps others) before each national office in the national phase.  If the countries of interest to the applicant are known to give significant weight to a favorable IPRP Chapter II, then Chapter II processing will be a cost-effective option.  If the countries of interest generally use the IPRP Chapter II in only an advisory capacity, then the overall value of a favorable IPRP Chapter II may be less.  It is important to note that even in the face of an IPRP Chapter II which still reports that some claims lack novelty or inventive step, any substantive negativities eliminated from the findings in the written opinion of the ISA during Chapter II processing will reduce the costs of prosecution during the national phase.

In general, for applications which are expected to enter the national phase in a large number of countries, advancing prosecution of the international application under Chapter II is a cost-effective option.  As the number of countries of interest decreases, the value of Chapter II decreases.  The point at which responding to any negative findings in the national phase becomes the more cost-effective option depends on the countries of interest and how they use the IPRP Chapter II.

Note that if the written opinion of the ISA also reports formality defects, the value of filing a demand, as discussed in point 2, in Part 1 of this “Practical Advice”, needs to be added to the equation.

4)      The applicant receives the ISR and 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.

Under the PCT, the ISR and the written opinion of the ISA are due to be sent to the applicant either three months from the receipt of the copy of the international application by the ISA (search copy) or nine months from the priority date, whichever time limit expires later.  Due to the backlogs experienced by some ISAs, these time limits are not always met.  If an applicant receives the ISR/written opinion of the ISA late, Chapter II processing is still available, and the demand must be filed within three months of the mailing of the ISR (or 22 months from the priority date, if this is later).  However, in this case, it must be asked whether, at this stage, Chapter II processing is still worthwhile. 

The answer will depend on how late the ISR/written opinion of the ISA are.  If the IPRP Chapter II will not be issued until after the decisions on national phase entry need to be made, the applicant will not have the benefit of the IPRP Chapter II when making those decisions.  If the IPRP Chapter II will not be issued until after the national offices have started their processing and examination, the value of the IPRP Chapter II is even further reduced.  In general, if the written opinion of the ISA is not sent in time to allow the IPRP Chapter II to be issued before national processing begins, it may be best to work directly with the national offices, rather than incur the cost of Chapter II processing.  If this is the selected route, it is recommended that preliminary arguments and amendments be filed with the Office as soon as possible after national phase entry and receiving the written opinion of the ISA.  In this way the national examiner will have your response to the issues raised in the written opinion of the ISA when the national examination begins.

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

If an applicant receives a “Declaration of Non-establishment of International Search Report” (Form PCT/ISA/203) from the ISA, either the application relates to subject matter which the ISA was not required to search (see PCT Rule 39), or the description, claims or drawings did not comply with PCT requirements to such an extent that a meaningful search could not be carried out (see PCT Article 17(2)(a)(ii)).  In either case, the ISA will issue a written opinion of the ISA but the written opinion of the ISA will not include any statements as to the novelty, inventive step or industrial applicability of the claimed invention.  In this situation filing a demand and paying the fees related thereto has very limited value, as, according to PCT Rule 66.1(e), the IPEA is not obliged to examine the claims relating to inventions in respect of which no ISR has been established. 

If an applicant wishes to make amendments under PCT Article 34, a demand may be filed within 22 months from the priority date or three months from the issuance of the declaration of non-establishment of the ISR, whichever expires later.  Any amendment submitted will be entered and sent to the elected Offices, but no opinion on novelty or inventive step would normally be made.  If the applicant wishes to make a correction during the international phase, even though making amendments under Chapter II is available, it is important to remember that new matter cannot be added.  In general, it would probably be more cost-effective to address the issues in the national phase.

International preliminary examination under Chapter II can be a cost-effective way to advance the prosecution of an application in all PCT Contracting States with the applicant/agent effort of responding to a single official action.  For applications destined to enter the national phase in a large number of countries, the effort and cost savings resulting from the elimination of all or even some of the issues raised in the ISR and written opinion of the ISA can prove beneficial in both cost and effort savings, as well as possibly shortened pendency/faster grants.  For each PCT application with an ISR and a written opinion of the ISA, the key consideration comes down to an analysis of the costs of filing a demand and submitting a response versus the value received from the Chapter II procedure.

Note that, regardless of whether the ISR/written opinion of the ISA is positive or negative, some applicants file a demand with an IPEA which is not the same as the ISA that carried out the international search in order to obtain a “second opinion”, with the goal of identifying all relevant prior art and facilitating the national/regional phase processing.  Alternatively, a supplementary review of the prior art can be obtained by requesting a supplementary international search by a different ISA.