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PCT International Search and Preliminary Examination Guidelines


Chapter 17 Content of Written Opinions and the International Preliminary Examination Report

Other Considerations

Citation of Certain Documents in the International Search Report

17.67  The international search report may cite a document which is not in a working language of the International Searching Authority because the search examiner knows or has strong evidence leading him to suspect (for example, from the drawings, from an abstract, a corresponding patent in a known language, or from a translation produced by some other person familiar with the language of the document) that the document is relevant. Where the intent is to provide more than one written opinion, in that circumstance, the examiner, in his first written opinion, may cite the document on the basis of similar evidence; an abstract or corresponding document in a working language of the International Preliminary Examining Authority, if known to the examiner, will also be cited. If, however, the applicant’s response to the first written opinion disputes the relevance of the document and gives specific reasons, the examiner should consider whether, in the light of these reasons and of the other prior art available to him, he is justified in pursuing the matter. If so, he may obtain a translation of the document (or merely the relevant part of it if that can be easily identified). If he remains of the view that the document is relevant, he should consider whether it is necessary to send a copy of the translation to the applicant either with an additional written opinion or by way of an informal communication with the applicant.

Additional Documents Taken Into Consideration in Certain Cases

Article 33(6)

17.68  Although, in principle, international preliminary examination is based on the international search report (and any supplementary international search report available to the International Preliminary Examining Authority), the examiner should not be deterred from looking for relevant documents which he personally knows, or has reason to suspect, exist, if he can locate such documents in a short time from material available to him. Such documents are considered on the same footing as the documents cited in the international search report.

17.69  If the International Bureau transmits a third party observation to the International Preliminary Examining Authority in time to be taken into account in drawing up the international preliminary examination report, any prior art referred to in the observation should be considered in the same way as if it had been referred to in the international search report, provided that either a copy of the prior art is included or it is otherwise immediately available to the examiner. The examiner is not required to comment on a document referred to in a third party observation unless he considers it appropriate to cite it. The examiner may, if considered useful, state in Box No. V that third party observations submitted on specified dates have been taken into account in preparing the opinion on novelty and inventive step.

Inconsistencies Between Description and Claims

17.70 While any serious inconsistencies between the claims and description as filed should be objected to (see paragraphs 5.29 and 5.30), it should be borne in mind that the claims may also require substantial amendment. In such a situation during the international preliminary examination procedure, the examiner might invite the applicant to amend the description to be in conformity with the final form of the amended claims even though the final form of the main claims may still not be settled. This procedure may help the examiner to expedite the issuance of the international preliminary examination report if a demand for international preliminary examination is filed. However, it should also be appreciated that the applicant should not be put to unnecessary expense and trouble in providing an amended description if there is any likelihood that the claims will have to be changed again.

Recommending Amendments

17.71  The examiner should not suggest amendments merely because he thinks they will improve the wording of the description or claims. A pedantic approach is undesirable; what is important is that the meaning of the description and the claims should be clear. Although the examiner is not obliged to do so, he should try to indicate to the applicant those amendments which would avoid a negative statement in the international preliminary examination report if a demand for international preliminary examination is filed. It must be emphasized that it is not part of the duty of the examiner to invite the applicant to amend the international application in a particular way to meet an objection, since the drafting of the application is the applicant’s responsibility and he should be free to amend in any way he chooses provided that the amendment removes the deficiency and otherwise satisfies the requirements of the PCT. However, it may sometimes be useful if the examiner suggests, at least in general terms, an acceptable form of amendment; but if he does so, he should make it clear that the suggestion is merely for the assistance of the applicant and that other forms of amendment will be considered. The form of the amendment should be as prescribed in Rule 66.8.

Consideration of Responses to the Written Opinion

17.72 If, in the opinion of the examiner, issues such as: (1) the clarity of the claims, the description, and the drawings; (2) the question as to whether the claims are fully supported by the description; and/or (3) defects existing in the form or contents of the international application, have not been suitably resolved by the applicant in the prescribed time limit for establishing the international preliminary examination report, the examiner may indicate unresolved issues and the reasons therefor in the report.

17.73 If the applicant submits arguments in response to the written opinion, the examiner should comment on the applicant’s relevant arguments in the written opinion of the International Preliminary Examining Authority and/or the international preliminary examination report.