PCT International Search and Preliminary Examination Guidelines
PART VI THE INTERNATIONAL PRELIMINARY EXAMINATION STAGE (OTHER THAN THE INTERNATIONAL PRELIMINARY REPORT)
Chapter 18 Preliminary Procedure on Receipt of the Demand
Documents, Etc., for the International Preliminary Examining Authority
18.10 The examiner will, where the International Preliminary Examining Authority is part of the same national Office, or intergovernmental organization as the International Searching Authority, have in the file in addition to the demand (see paragraph 19.07), description, drawings (if any), the claims, as originally filed and the abstract as originally filed or established by the International Searching Authority, or, where necessary, their translation (see paragraph 18.11); any amendments proposed to date; a notification that no amendments have been filed or will be filed under Article 19, unless waived by the Authority; the international search report with the applicant’s comments (if any), and copies of any cited documents; the written opinion of the International Searching Authority; and, depending on the circumstances, the request and correspondence concerning formalities from the receiving Office, the International Searching Authority or the International Bureau, the priority document as well as any required translations (see paragraphs 6.17 and 18.07).
18.11 Where a translation of the international application is required under Rule 55.2 and the International Searching Authority and the International Preliminary Examining Authority are part of the same national Office or intergovernmental organization, the international preliminary examination is carried out on the basis of any translation transmitted to the International Searching Authority under Rule 23.1(b) unless the applicant furnishes a further translation for the purposes of the international preliminary examination.
18.12 In the cases where the international search has been performed by an International Searching Authority which is not part of the same national Office or intergovernmental organization as the International Preliminary Examining Authority, the various elements of the file making up the international application will be supplied to the International Preliminary Examining Authority as follows:
(i) the demand: by the applicant;
(ii) the request, description, drawings (if any), claims, and any sequence listing part of the description, as originally filed: by the International Bureau;
(iii) the international search report or the declaration under Article 17(2)(a), and the written opinion established under Rule 43bis.1: by the International Bureau;
(iv) where neither the language in which the international application is filed nor the language in which the international application is published is accepted by the International Preliminary Examining Authority, a translation of the international application into a language which is both a language accepted by the International Preliminary Examining Authority and a language of publication: by the applicant (see, however, paragraph 18.11);
(v) amendments and statement under Article 19 (if any): where the applicant has marked the appropriate check box in Box No. IV of the demand (Form PCT/IPEA/401) that amendments under Article 19 are to be taken into account, the International Preliminary Examining Authority indicates on the last sheet of the demand whether a copy of such amendments was actually received with the demand. Where no copy of the amendments under Article 19 was received with the demand, a copy of such amendment will be transmitted by the International Bureau promptly after that Bureau receives the demand. If no amendments under Article 19 have been made at the time when the demand is received by the International Bureau, the International Preliminary Examining Authority is so informed by the International Bureau. If, at the time of filing such amendments, the demand has already been submitted, the applicant should also submit a copy of such amendments to the International Preliminary Examining Authority. In any event, the International Bureau will promptly transmit a copy of any amendments under Article 19 to the International Preliminary Examining Authority;
Rule 13ter.1; Section 208; AI Annex C
(vi) nucleotide and/or amino acid sequence listing complying with the standard provided for in Annex C of the Administrative Instructions: where the International Searching Authority and the International Preliminary Examining Authority are part of the same national Office or intergovernmental organization, by the International Searching Authority; otherwise, by the applicant;
(vii) amendments according to Article 34(2)(b): by the applicant;
(viii) copies of any documents cited in the international search report which are not available from the databases of the International Preliminary Examining Authority: by the International Searching Authority;
(ix) priority document: by the International Bureau;
(x) translation of the priority document where required: by the applicant (subject to an invitation to furnish the translation having been made, see paragraph 18.16).
18.13 The examiner should keep in mind that the documents making up the international application may contain, instead of an international search report, a declaration according to Article 17(2)(a), that is, a declaration by the International Searching Authority that it considers that the international application relates to a subject matter which it was not required to search and decided not to search, or that the description, the claims, or the drawings failed to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out. In this case, the examiner should appraise the declaration as if it were the international search report.
Language of the International Application and of the Demand
18.14 The demand submitted to the International Preliminary Examining Authority must be in the language of the international application or, if the international application has been filed in a language other than the language in which it is published, in the language of publication or, if a translation of the international application is required under Rule 55.2, in the language of that translation. If the demand is not submitted in this language, the Authority invites the applicant to correct the defect (Form PCT/IPEA/404, see paragraph 22.24). If the applicant does not timely comply with the invitation, the International Preliminary Examining Authority considers the demand as having not been submitted and issues a declaration to that effect by sending a copy of Form PCT/IPEA/407 to the applicant and the International Bureau.
18.15 If the international preliminary examination is carried out on a translation of the original application into a language of publication, or on a translation under Rule 55.2, it may be difficult to determine whether any amendments filed under Article 34(2)(b) extend the content of the international application as filed. See paragraph 20.11 for procedure in such a case.
Priority Document and Translation Thereof
18.16 Where the international application claims the priority of a previous application and the examiner needs the priority document, the examiner should request the International Bureau to furnish promptly a copy of the priority document. When the priority document is not in the language or in one of the languages of the International Preliminary Examining Authority, the examiner may invite the applicant to furnish a translation of the priority document (see paragraph 6.17). If the examiner finds that the requested priority document or (where required) the translation have not been timely furnished, he may establish the international preliminary examination report as if the priority has not been claimed in the international application and indicate this in the report.
Nucleotide and/or Amino Acid Sequence Listings
18.17 Where the international application contains disclosure of nucleotide and/or amino acid sequences and a corresponding sequence listing complying with the standard provided for in Annex C of the Administrative Instructions and in an accepted language for the purposes of international preliminary examination, the International Preliminary Examining Authority carries out the international preliminary examination on the basis of the sequence listing.
Rules 13ter.1, 13ter.2; Section 208; AI Annex C
18.18 Where the international application contains disclosure of nucleotide and/or amino acid sequences having ten or more specifically defined nucleotides or four or more specifically defined amino acids but does not contain a corresponding sequence listing complying with the standard provided for in Annex C of the Administrative Instructions or the sequence listing furnished is not in an accepted language, the International Preliminary Examining Authority may invite the applicant (with Form PCT/lPEA/441) to furnish to it, within a time limit fixed in the invitation, a sequence listing complying with the standard or a translation of the sequence listing, as the case may be. The furnishing of a sequence listing or translation in response to an invitation by the International Preliminary Examining Authority may be subject to the payment of a fee set by the International Preliminary Examining Authority, which may not exceed 25% of the international filing fee (not taking into account any fee for each sheet of the international application in excess of 30 sheets). If the applicant complies with the invitation, the procedure outlined in the preceding paragraph applies. If the applicant does not comply with the invitation within the time limit or the response to the invitation is defective, the International Preliminary Examining Authority is required to carry out the international preliminary examination only to the extent that a meaningful examination can be carried out without the sequence listing (see paragraph 9.39).