PCT Newsletter 09/2020: 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.

Access by third parties to information in the file of the international preliminary examination

Q:  I am considering filing a demand for international preliminary examination as this will enable me to make amendments to my international application under PCT Article 34.  I would like to know whether the international preliminary report on patentability (Chapter II of the PCT) is accessible to third parties, and if so, whether any other documents in the file of the international preliminary examination will also be accessible to such persons.

A:  While the Patent Cooperation Treaty (PCT Article 38) provides that the file of the international preliminary examination is confidential, in practice, the file is no longer confidential after the establishment of the international preliminary report on patentability (Chapter II of the PCT) (IPRP (Ch. II)) (also known as International Preliminary Examination Report (IPER)).  To better understand the current provisions relating to third party access to the international preliminary examination file, it is helpful to first look at the following background information.

PCT Article 38 expressly provides that the International Bureau (IB) and the International Preliminary Examining Authority (IPEA) shall not allow unauthorized access to the file of the international preliminary examination by any person or authority.  Access to that file by third parties prior to the establishment of the IPRP (Ch. II) will thus be permitted only if requested or authorized by the applicant.  However, once the international preliminary report on patentability IPRP (Ch. II) has been established, the IPEA sends a copy to the applicant and to the IB under PCT Rule 71.1(a), and the IB communicates a copy to the elected Offices upon the expiration of 30 months from the priority date (PCT Article 36 and Rule 73.2(a)).  The elected Offices may access the file of the international preliminary examination, and allow public access to that file if so provided by the applicable national law (PCT Rule 94.3). 

In January 2004, PCT Rule 94.1(c) entered into force with the result that the IB could make the IPRP (Ch. II) available on behalf of the elected Offices.  A number of elected Offices expressly authorized the IB to make that report publicly available on PATENTSCOPE (www.wipo.int/patentscope/en/), but this is not done before the expiration of 30 months from the priority date.  Similarly, according to the amendments to PCT Rules 71.1(b) and 94.1(c), which entered into force on 1 July 2020, any other document in relation to the international application concerned that is received at the IPEA, or established by the IPEA, on or after that date will also be made available on PATENTSCOPE after 30 months from the priority date1.  Note, however, that not all IPEAs are technically ready to implement new PCT Rule 71.1(b), but they will start sending such documents to the IB as soon as their technical systems have enabled this.  You should therefore be aware that any documents sent to or from the applicant during the international preliminary examination (IPE) procedure on or after 1 July 2020 may now become available to the public. 

As far as the actual documents in the file of the IPE which the IPEA transmits to the applicant and IB are concerned, some are annexed to the IPRP (Ch. II) itself, and some are transmitted separately, as explained below.  

The following documents, where applicable, are annexed to the IPRP (Ch. II), as provided by PCT Rule 70.16:

  • any replacement sheet submitted under PCT Rule 66.8 containing amendments under PCT Article 34, as well as any accompanying letter;
  • any replacement sheet submitted under PCT Rule 46.5 containing amendments under PCT Article 19, as well as any accompanying letter;
  • any replacement sheet under PCT Rule 26.4 containing a rectification of an obvious mistake authorized by the IPEA under PCT Rule 91.1(b)(iii)2, as well as any accompanying letter;

unless any such replacement sheet has been superseded or considered reversed by a later replacement sheet or an amendment resulting in the cancellation of an entire sheet under PCT Rule 66.8(b).  Note that:

  • any replacement sheet referred to above that has been superseded or considered reversed by a later replacement sheet or an amendment resulting in the cancellation of an entire sheet; and
  • any letter relating to such superseded or reversed sheet

will be annexed to the report where the IPEA considers that the relevant superseding or reversing amendment goes beyond the disclosure in the international application as filed, or where the amendment was not accompanied by a letter indicating the basis for the amendment and the report is established as if the amendment had not been made.

Amended PCT Rule 94.1(c) provides for the IB to additionally make publicly available (on PATENTSCOPE), on behalf of elected Offices, copies of any of the following documents received at or established by the IPEA in relation to the international application concerned on or after 1 July 2020, as listed in new Section 602bis of the Administrative Instructions under the PCT34:

  • any written opinion issued by the IPEA;
  • any letter containing arguments that the applicant submitted to the IPEA under PCT Rule 66.3 (in the case where the applicant disagrees with the written opinion of the IPEA);
  • any replacement sheet containing amendments under PCT Article 34 and any letter accompanying the amendments, including any such amendments and letters that have been superseded;
  • any invitation to restrict the claims or pay additional fees issued by the IPEA;
  • any protest against the invitation to restrict the claims or pay additional fees and the decision thereon (regardless of whether the applicant has specifically requested that the protest be annexed to the IPRP (Ch. II)) in accordance with PCT Rule 68.3(c));
  • any other document in its file that the IPEA wishes to transmit.

In addition to the IPRP (Ch. II) and its annexes and accompanying papers, the IB also publishes on PATENTSCOPE a translation into English of the body of the report where that is required by any elected Office in accordance with PCT Rule 93bis (if a translation of any annexes is required, this must be prepared and sent to the elected Offices concerned by the applicant).

The amended Regulations provide for greater transparency of the IPE procedure, which assists elected Offices and the public.  Elected Offices accordingly have easier access to the file of the IPE on a single platform via PATENTSCOPE, including those documents which, before 1 July 2020, they could only have obtained from the IPEA.  This facilitates national phase processing, eliminating unnecessary duplication of work by national/regional Offices, and provides them with a comprehensive understanding of the IPE results. 

Note that if you file a demand and subsequently do not wish to have the Chapter II file publicly accessible, the only way of achieving this would be to withdraw the demand before the IPRP (Ch. II) is established.  The IPEA would then discontinue the processing of the application and no IPRP (Ch. II) would be established (PCT Rule 90bis.6(c)).

For further information on the IPRP (Ch. II), please refer to the PCT Applicant’s Guide, paragraphs 10.074 to 10.083 and 11.074 at:

www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf

Information on the background to the recent amendments to the PCT Regulations relating to access to the file of the IPEA can be found in document PCT/WG/12/12 at:

www.wipo.int/meetings/en/doc_details.jsp?doc_id=435263

  1. Note that the IB will not provide access to any information contained in its file that has been omitted from publication under PCT Rule 48.2(l) following a request to this effect received from the applicant.  This also applies to any document contained in its file relating to such a request.
  2. Where the request for rectification was not taken into account for the IPRP Ch II, the report shall so indicate and the sheets relating to the rectification will nevertheless be annexed to the report.
  3. www.wipo.int/pct/en/texts/ai/s602bis.html
  4. Note that in certain situations, there may be an overlap in the types of documents that are annexed to the IPRP (Ch. II) and those which are transmitted separately.