PCT Newsletter 06/2019: 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.

The timing of the start of the international preliminary examination (following the amendment to PCT Rule 69.1(a))

Q:  I have seen that on 1 July 2019, PCT Rule 69.1(a) will be amended to provide for the International Preliminary Examining Authority to start the international preliminary examination upon receipt of the demand, instead of waiting until the expiration of the applicable time limit for filing a demand.  If international preliminary examination starts earlier, does this mean that I will have less time to prepare amendments to the international application under PCT Article 34?

A:  For demands made on or after 1 July 2019, even though International Preliminary Examining Authorities (IPEAs) will generally be able to start the international preliminary examination before the expiration of the applicable time limit under PCT Rule 54bis.1(a), instead of the current situation where they have to wait until the expiration of that time limit unless the applicant requests an earlier start of the international preliminary examination, amended PCT Rule 69.1(a) will enable the applicant to expressly request the postponement of the start of international preliminary examination until the expiration of the time limit for filing a demand.  Therefore, your legal rights and choices will remain the same in substance.

It is recalled that the time limit under PCT Rule 54bis.1 for filing a demand is whichever of the following periods expire later:

  • three months from the date of transmittal to the applicant of the international search report (ISR) (or, if applicable, the declaration by the International Searching Authority (ISA) under PCT Article 17(2) that no ISR will be established) and of the written opinion of the ISA; or
  • 22 months from the priority date.

According to PCT Rule 69.1(a) as amended with effect from 1 July 2019, which will apply to any demand filed on or after that date, the IPEA will, by default, start international preliminary examination when it is in possession of all of the following:

  • the demand;
  • the fees payable for international preliminary examination; and
  • either the ISR or the declaration under PCT Article 17(2), and the written opinion established under PCT Rule 43bis.1;

unless the applicant expressly requests to postpone the start of the international preliminary examination until the expiration of the time limit under PCT Rule 54bis.1(a).

If you wait until just before the expiration of the time limit to file the demand and/or pay the applicable fees, or if the ISR (or declaration) and written opinion are issued late by the International Searching Authority (ISA), the start of the international preliminary examination will be delayed anyway, and you will have more time to prepare your amendments under PCT Article 34(2)(b).  Even if you file the demand early, however, you can still request the IPEA to delay the start of the international preliminary examination until the expiration of the time limit for filing a demand by checking the corresponding box (Box No. IV, item 4) in the demand form (Form PCT/IPEA/401) as amended with effect from 1 July 2019.

If your amendments under PCT Article 34 are still not ready and the expiration of the time limit under PCT Rule 54bis.1(a) is imminent, and you wish the international preliminary examination to start on the basis of amendments to the claims, the description and/or the drawings under PCT Article 34, it is important to ensure that at least the demand is filed within that time limit.  You should indicate in the demand that you wish the international preliminary examination to start on the basis of amendments under PCT Article 34 by checking the corresponding box(es) in Box No. IV, item 11.  If you have indicated in the demand that you wish the international preliminary examination to start on the basis of amendments under PCT Article 34, but no such amendments have, in fact, been submitted, the IPEA will invite you (using Form PCT/IPEA/431), under PCT Rule 60.1(g), to submit the missing amendments within a time limit fixed in the invitation, and will not start the international preliminary examination before it has received the amendments, or before the expiration of the time limit fixed in the invitation (PCT Rule 69.1(e)).  Please note, however, that if this happens, there will be less time available for international preliminary examination.

If you do not make any such indication in the demand in the above-mentioned situation, the IPEA may begin international preliminary examination as soon as it is in possession of the demand, the fees, the ISR (or declaration under PCT Article 17(2)) and the written opinion of the ISA, and it may start to draw up the report (provided any required translation under PCT Rule 55.2 has been furnished).  Once it has begun to draw up the report, it is no longer obliged to take into account any (further) amendments (PCT Rule 66.4bis).

Please note that, although the applicant’s legal rights and choices remain the same in substance, the change to PCT Rule 69.1(a) may, in practice, result in more time being available for the IPEA to conduct international preliminary examination, as it allows the IPEA to start the international preliminary examination earlier than at present without the applicant’s express agreement.  This may result in the following advantages to both applicants and IPEAs:

  • more time available for dialogue between the applicant and the examiner, so as to provide a better service for applicants and allow examiners more time for obtaining clarifications;
  • greater possibility for applicants to obtain a second written opinion and to provide comments on the written opinion; and
  • better quality written opinions and International Preliminary Report on Patentability under Chapter II (IPRP Ch. II) from the IPEA.

Note also that if the written opinion of the IPEA and the IPRP Ch. II are available early this will facilitate accelerated processing of international applications in the national and regional phases via the PCT‑PPH and Global PPH pilot programs where such a program exists between the respective Offices and the applicable requirements are met.

Therefore, for the above‑mentioned reasons, a demand should preferably be filed as soon as possible after the applicant’s evaluation of the ISR and written opinion of the ISA has shown that it is worthwhile pursuing the international application further.  It is nevertheless possible, if the applicant prefers to have more time to prepare amendments after filing the demand and wishes to ensure that they are submitted before the establishment of the IPRP Ch. II, to request the IPEA to delay the start of international preliminary examination.

  1. This item should, in any case, be completed in all cases, to clarify to the IPEA whether international preliminary examination should start on the basis of an element as originally filed, on the basis of an element as amended under PCT Article 34, or, in the case of the claims only, on the basis of claims amended under PCT Article 19.