PCT Newsletter 10/2004: 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.

Responses to the written opinion under Chapter I

Q: Now that a written opinion is issued in addition to the international search report by the International Searching Authority during the Chapter I procedure, we are filing fewer demands for international preliminary examination than we used to do. Under the Chapter II procedure it is possible to respond to the written opinion of the International Preliminary Examining Authority—is it possible to respond to the written opinion of the International Searching Authority? If so, where should that response be sent, and what is the time limit for submitting a response?

A: All international applications filed on or after 1 January 2004 are subject to the new enhanced international search and preliminary examination system in which a written opinion is incorporated into the international search procedure under Chapter I. The PCT does not provide for any form of dialogue between the applicant and the examiner at the International Searching Authority (ISA). Such dialogue is provided for only under the Chapter II procedure.

In accordance with a decision of the PCT Assembly (see paragraph 47 of document PCT/A/31/10, available on the PCT website, it is possible, if the applicant wishes to do so, to submit written comments to the International Bureau (IB) on an informal basis. Those informal comments allow the applicant to address the issues raised in the written opinion of the ISA in the international phase if a demand is not filed. Although there are no express provisions in the PCT Regulations for the submission of such "informal comments," the applicant should be aware of the following points:

  • They should be submitted to the IB, and not to the ISA or the International Preliminary Examining Authority (IPEA).
  • The informal comments should be clearly marked as "informal comments." If they are not marked as such, the purpose of the document may be unclear to the IB.
  • They may be submitted independently of, and in addition to, any amendments under PCT Article 19, and there is no requirement to refer in the amendments to the informal comments where both are filed. If the informal comments are filed at the same time as the amendments under PCT Article 19, they must be submitted on separate pages, noting that, although amendments under Article 19 will be published with the international application, informal comments will not be published.
  • The IB will send an acknowledgment of receipt of the informal comments to the applicant.
  • Although there is no time limit for submitting informal comments, the earliest time for submission is after the issuance of the written opinion of the ISA, and it is recommended that applicants send them no later than 28 months from the priority date so that the IB is in a position to communicate them to the designated Offices together with the international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty) (IPRP Chapter I)(see paragraph below).
  • If no demand has been filed, the IB will forward the informal comments to the designated Offices together with the IPRP Chapter I after the expiration of 30 months from the priority date (see PCT Rule 44bis.2) (note that the IB will not forward the informal comments to the ISA, and where a demand is filed, it will not forward them to the IPEA).
  • The informal comments will be open to public inspection as part of the file of an international application at the IB but not before the expiration of 30 months from the priority date (PCT Rule 44ter.1 and 94.1). Depending on the applicable national law, the designated Offices may also make the informal comments available to the public.
  • It is up to the designated Offices to decide whether and to what extent to take the informal comments into account in the national phase.
  • The designated Offices are free to require a translation of the informal comments.

Note that if the applicant decides to file a demand and wishes the IPEA to take into consideration the content of the informal comments, it is possible to simply use the previously filed informal comments rather than drafting new comments for the IPEA, not forgetting to remove the title "informal comments," as such a title may lead to confusion to the IPEA. Applicants should rather indicate that it is a response for the purposes of the Chapter II procedure. The formal procedure for submitting responses to written opinions under Chapter II, whereby the applicant can submit one or more amendments or arguments to the IPEA, and also has the possibility to communicate orally with the IPEA, has not changed (see PCT Rules 66.2 to 66.4).

For further information on the international search and preliminary examination procedures applicable since 1 January 2004, see PCT Newsletter No. 12/2003, and for further information on the written opinion of the ISA, see PCT Applicant’s Guide, paragraphs 292A to F.