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PCT International Search and Preliminary Examination Guidelines


Chapter 19 Examination Procedure Before The International Preliminary Examining Authority

Matters Applicable Generally to Various Stages of International Preliminary Examination

Making Amendments: General Considerations

19.36  See chapter 20 for the factors which should be taken into account when considering amendments

Rectification of Obvious Mistakes

Rules 66.591.1(b)

19.37  Mistakes which are due to the fact that something other than that which was obviously intended was written in the contents of the international application (other than the request) or other paper submitted to the International Preliminary Examining Authority (for example, linguistic errors, spelling errors) may be rectified if a request for rectification is submitted within 26 months from the priority date. If a correction is not of this character (for example, if it involves cancellation of claims, omission of passages in the description or omission of certain drawings), it would not be authorized by the Authority (see paragraph 20.09 and Chapter 8).

Rule 91.1(d)

19.38 Subject to authorization (see paragraph 19.30), rectification of obvious mistakes in the international application can be made at the request of the applicant on his own volition. In addition, the examiner, upon study of the international application (other than the request) and any other papers submitted by the applicant, might also note obvious mistakes. (See Chapter 8). Although Rule 91 allows the International Preliminary Examining Authority to invite the applicant to submit a request for rectifications, it is not foreseen that such invitations will be issued since any error which can be rectified under Rule 91 will not be an impediment to establishing the international preliminary examination report.

Rules 91.1(e), (f), (g)(ii), 91.2; Section 607

19.39  Rectification of an obvious error cannot be made before the International Preliminary Examining Authority without the express authorization of that Authority. The Authority is permitted to authorize rectification of such mistakes in a part of the international application other than the request or in any papers submitted to it. The Authority may only authorize rectification of obvious mistakes if a request for rectification is submitted within 26 months from the priority date. See paragraph 8.14 to 8.17.

Rules 66.1(d-bis), 66.4bis

19.40  A rectification of an obvious mistake that is authorized under Rule 91.1 shall be taken into account by the International Preliminary Examining Authority for the purposes of the international preliminary examination. However, it need not be so taken into account for purposes of the written opinion or the international preliminary examination report if it is received by, authorized by, or notified to that Authority after it has begun to draw up that opinion or report.

Informal Communication with the Applicant

Rule 66.6

19.41 The International Preliminary Examining Authority may, at any time, communicate informally, over the telephone, in writing, or through personal interviews, with the applicant. The circumstances in which it may be appropriate for the examiner to communicate with the applicant by telephone or propose an interview rather than send an additional written opinion are considered in paragraphs 19.29 and 19.30. Communication will, in most instances, be with the applicant’s agent (the meaning of “agent” in the PCT is set out in Rule 2.2) rather than the applicant himself. If the applicant, or his agent, requests an interview, the examiner, at his discretion, should grant more than one interview if he believes that a useful purpose would be served by such a discussion.

19.42  When an interview is arranged, whether by telephone or in writing, and whether by the examiner or by the applicant, the matters for discussion should be stated. If the arrangement is made by telephone, the examiner should record the particulars and briefly indicate, on the file, the matters to be discussed.

Rule 66.6

19.43 The interview is an informal procedure and the recording of the interview depends upon the nature of the matters under discussion. Where the interview is concerned with the clarification of obscurities, the resolution of uncertainties, or putting the international application in order by clearing up a number of minor points, it will usually be sufficient if the examiner makes a note on the file of the matters discussed and the conclusions reached, or amendments agreed upon. If, however, the interview is concerned with reviewing more substantial matters, such as questions of novelty, inventive step, or whether the amendment introduces new subject matter, then a fuller note of the matters discussed may be made in the file (optionally using Form PCT/IPEA/428, Note on Informal Communication with the Applicant) for use in an additional written opinion (if any) or the international preliminary examination report and a copy of that note may, if appropriate, be sent to the applicant (optionally using Form PCT/IPEA/429).

Rules 66.3, 66.4, 66.4bis, 66.6

19.44  If a new objection as to substance is raised at an interview and no amendment to meet it is agreed upon at the time, the objection may be confirmed in an additional written opinion inviting the applicant, within the prescribed time limit, to respond, if he so wishes. The examiner should, however, keep in mind the time limit for the establishment of the international preliminary examination report (see paragraphs 19.10 and 19.11).

19.45  When the telephone is used to settle outstanding matters, the normal procedure should be for the examiner to telephone the applicant or the agent identifying the international application he wishes to discuss and requesting the applicant or agent to telephone back at a specific time. A note should be made on the file, giving particulars and identifying the matters discussed and any agreements reached.

19.46  The records of interviews or telephone conversations should always indicate whether a response is due from the applicant or agent or whether the examiner wishes to issue an additional written opinion or establish the international preliminary examination report.