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PCT Newsletter 09/2018: 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 differences between the various reports produced during the international search and preliminary examination procedures

Q:  Please could you describe the differences and outline the relationship between the international search report, the written opinion of the International Searching Authority, the International Preliminary Report on Patentability (Chapter I) and the International Preliminary Report on Patentability (Chapter II)?

A:  Although there are a number of different types of reports produced by the International Searching and Preliminary Examining Authorities and the International Bureau (IB), they are very much inter‑related.  They are usually established at different stages of the international phase and some of the reports are optional and are only established upon the request of the applicant.  A brief description and comparison of the various reports follows.

1.  International search report (ISR)

The ISR (Form PCT/ISA/210) is established by the International Searching Authority (ISA) (provided that it does not make a declaration referred to in PCT Article 17(2)(a) that no ISR will be established1) within three months from the receipt of the search copy by the ISA (that is, the ISA’s copy of the international application) or nine months from the priority date, whichever time limit expires later (PCT Rule 42). 

The ISR serves as a basis for the written opinion of the ISA, any international preliminary report on patentability and any examination of the international application by the International Preliminary Examining Authority (IPEA) or by designated (or elected) Offices.  It contains, among other things, the citation of any documents considered relevant to the invention claimed, the classification of the subject matter of the invention (according to the International Patent Classification) and an indication of the fields of technology searched, as well as any electronic databases that were searched.  It identifies the claims to which cited documents are relevant and also contains an indication of the category of the cited document and its relevance with respect to assessment of novelty or inventive step.

In addition, the ISR will state that the ISA approves the title and abstract as submitted by the applicant, or, if it does not approve one or both of these elements, the ISR will be accompanied by the text of the title and/or abstract as established by the ISA (see PCT Rule 44.2).  It is important to note that an ISR does not contain any expression of opinion, reasoning, argument or explanation of any kind whatsoever (see PCT Rule 43). 

Once established, the ISR is communicated to the applicant and to the IB.  The IB publishes the ISR on PATENTSCOPE on the same day that the international application is published (unless the ISR is received by the IB after the completion of technical preparations for publication2, in which case it will be published as soon as possible thereafter).

There is no provision for the applicant to respond to the ISR, except that after receipt of it, the applicant is entitled, under PCT Article 19, to one opportunity to amend the claims of the international application.

It is recalled that a new Collaborative Search and Examination pilot started on 1 July 2018, under which a limited number of ISRs are being/will be established under the collaborative effort of five major ISAs (the IP5 Offices).  For further information, see PCT Newsletter No. 07‑08/2018.

2.  Written opinion of the ISA

At the same time as it establishes the ISR, the ISA establishes a written opinion (WO‑ISA) (PCT/ISA/237), a preliminary and non‑binding opinion as to patentability of the invention, and as to whether the international application complies with the requirements of the Treaty and Regulations in so far as it is checked by the ISA.  The WO‑ISA contains a detailed explanation of the relevance of the references contained in the ISR, and analyzes how they affect the potential patentability of the invention, that is, whether the claimed invention appears to be novel, to involve an inventive step (that it is non‑obvious), and to be industrially applicable.  It is very similar in scope to the written opinion established by the International Preliminary Examining Authority (IPEA) during international preliminary examination (see below).  Note that for the purposes of the WO‑ISA, the relevant prior art date is the priority date, whereas the prior art date for the ISR is the international filing date.

The WO‑ISA is communicated to the IB and the applicant at the same time as the ISR, and is also made publicly available on PATENTSCOPE on the same day that the international application is published (unless it is received by the IB after the completion of technical preparations for publication, in which case it will be published as soon as possible thereafter). 

Although there are no special provisions in the PCT Regulations providing for the applicant to comment on the WO‑ISA, applicants who are not entirely satisfied with the WO‑ISA and who may wish to place on file any comments, arguments or observations may nevertheless submit “informal comments” to the IB, in the event that international preliminary examination is not requested (for further information on submitting informal comments, see PCT Newsletter Nos. 01 and 04/2015).  (See PCT Rule 43bis.)

3.  The supplementary international search report

In addition to the “main” international search, the applicant has the option of requesting a supplementary international search by one of the ISAs which offers this service, upon payment of extra fees.  The Authority specified for supplementary search conducts a search on the international application as filed, taking into account the ISR and the WO‑ISA established by the ISA, should these documents be available before the start of the supplementary international search.  The supplementary international search report (SISR) (PCT/SISA/501) is not accompanied by a written opinion, but may include certain explanations with regard to the citations and the scope of the search which might otherwise have been included in a written opinion.  The SISR should be established within 28 months from the priority date and is made available on PATENTSCOPE once it has been received by the IB.  This service is completely optional, but may be of interest in cases where a more complete overview of the prior art is desired, particularly in situations where specific language coverage is desired.  (See PCT Rule 45bis).

4.  The International Preliminary Report on Patentability (Chapter I) (IPRP Ch. I)

If a demand for international preliminary examination is not filed, and therefore no international preliminary examination report will be established, the WO‑ISA will form the basis for the issuance by the IB of a report on behalf of the ISA entitled “international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)” (hereinafter  “IPRP Ch. I”) (PCT/IB/373) (see PCT Rule 66.1bis(a)).  The IB communicates a copy of the IPRP Ch. I to the designated Offices, together with any informal comments submitted by the applicant, and also makes it available on PATENTSCOPE for public inspection after the expiration of 30 months from the priority date. (See PCT Rule 44bis.)

5.  The International Preliminary Report on Patentability (Chapter II) (IPRP Ch. II) (also known as the International Preliminary Examination Report)

If a demand for international preliminary examination is filed in respect of an international application, the WO-ISA will generally be used by the IPEA as its own first written opinion, unless the IPEA notifies the IB to the contrary, and the applicant will be invited to submit to the IPEA, before the expiration of the time limit under PCT Rule 54bis.1(a)3, a written reply together with amendments, where appropriate (PCT Rule 43bis.1(c)).  Even if the WO‑ISA is not considered a written opinion of the IPEA, it should nevertheless be taken into account by the IPEA.  The IPEA will also conduct a mandatory “top-up search” to discover relevant prior art documents which have been published or have become available to the IPEA subsequent to the date on which the ISR was established.  Exceptionally, the IPEA may issue an additional written opinion, in which case the applicant will be given the opportunity to present further amendments or arguments.

Finally, the IPEA prepares the IPRP Ch. II (PCT/IPEA/409), a non‑binding opinion on the patentability of the invention which essentially contains a statement, in relation to each claim, on whether it appears to satisfy the criteria of novelty, inventive step and industrial applicability, and is accompanied by the citation of the documents believed to support that conclusion.  If the report is based on the PCT application in an amended form, a copy of all sheets containing amendments will be annexed to the report.  The IPRP Ch. II is normally issued before the expiration of 28 months from the priority date, and sent to the applicant and the IB.  The IB makes available copies of the report to the elected Offices, but normally not before the expiration of 30 months from the priority date, unless the applicant makes an express request to the elected Office under PCT Article 40(2), for example if early entry into the national phase is being requested.  The report is made available for public inspection on PATENTSCOPE after the expiration of 30 months from the priority date.  (See PCT Rule 70.)

  1. This may occur if the ISA considers that the international application relates to a subject matter which the ISA is not required, under the Regulations, to search, and in the particular case decides not to search, or if it considers that the description, the claims, or the drawings fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out.
  2. Publication of the international application normally takes place promptly after the expiration of 18 months from the priority date (PCT Article 21(2)(a)).
  3. Whichever of the following periods expires later:  three months from the date of transmittal to the applicant of the ISR (or declaration under PCT Article17(2)(a)), and of the written opinion established under PCT Rule 43bis.1, or 22 months from the priority date.