PCT International Search and Preliminary Examination Guidelines


Chapter 19 Examination Procedure Before The International Preliminary Examining Authority


19.01  The present chapter sets out the procedure before the International Preliminary Examining Authority with respect to international preliminary examination from the time such examination starts.

Article 33(1), (2), (3), (4)

19.02  The objective of international preliminary examination of an international application is to formulate a preliminary and non-binding opinion as to:

(i) whether the claimed invention appears to be “novel” (see Chapter 12);

(ii) whether the claimed invention appears to involve an “inventive step” (is non-obvious) (see Chapter 13); and

(iii) whether the claimed invention appears to be “industrially applicable” (see Chapter 14).

Article 33(5); Rule 5.1(a)(iii)

19.03  Although these criteria serve as the basis for international preliminary examination, any Contracting State may apply additional or different criteria for the purposes of deciding whether or not, in that State, the claimed invention will be protected (that is, by a patent, an inventor’s certificate, a utility certificate or a utility model).

19.04 In addition to these basic three criteria, the examiner should be aware of the following two criteria that are implicitly contained in the Treaty and the Regulations:

(i) the invention must be such that it can be carried out by a person skilled in the art (after proper instruction by the application); this follows from Article 5. See paragraphs 5.43 et seq;

(ii) the invention must relate to a technical field (Rule 5.1(a)(i)), must be concerned with a technical problem (Rule 5.1(a)(iii)) and must have technical features in terms of which the subject matter for which protection is sought can be defined in the claim (Rule 6.3(a)) (see paragraph 5.04). The PCT does not require that a claimed invention be an advance over the prior art. However, advantageous effects, if any, may be relevant to determining “inventive step” (see Chapter 13).

Articles 34(2)(c), 35

19.05 The results of the international preliminary examination, in the course of which one or more written opinions may be issued to the applicant by the International Preliminary Examining Authority and other communications with the applicant may occur, are given in an international preliminary examination report established by that Authority.