PCT International Search and Preliminary Examination Guidelines
PART I INTRODUCTION AND OVERVIEW
Chapter 1 Introduction
Overview of International Application Process
1.09 The procedure through which an international patent application under the Patent Cooperation Treaty proceeds from the filing of the application to the granting of a patent (or the refusal thereof) comprises two main stages, commonly referred to as the “international phase” and the “national phase” (or “regional phase” when an international application comes before a regional body rather than a national one). The following paragraphs 1.10, and 1.11, and the flowchart of typical international application processing that has been provided at the end of this chapter, provide a brief overview of the international phase, with a complete explanation provided in parts II to VIII of the Guidelines.
1.10 The international phase begins when the international application is filed and, provided that the international application is not withdrawn, includes various formalities checks, an international search, preparation of a written opinion, publication of the application and, optionally, an international preliminary examination. During this phase, no national or regional Office may process or examine the application except at the specific request of the applicant.
1.11 The international phase in turn includes a number of groups of actions which are distinct in nature, though they may in practice overlap slightly in timing:
(a) Filing of the international application with an appropriate receiving Office: this includes a “request” (a petition that the international application be processed according to the Treaty, together with certain data concerning matters such as the applicant, inventor, any agent and formal details about the application, such as the title and any priority claims), a description, one or more claims, one or more drawings (where required) and an abstract;
(b) Certain procedural checks are carried out, an international filing date is accorded and copies of the application are sent to the International Bureau (the record copy) and the International Searching Authority (the search copy);
(c) An international search by the International Searching Authority: this includes a search for earlier disclosures relevant to the novelty and inventive step of the claimed invention and the establishment of an international search report and a written opinion on novelty, inventive step and industrial application, normally at 16 months from the priority date, as detailed later in this document. (See Chapter 2 and Parts IV and V);
(d) International publication of the international application, the international search report, and Article 19 amendments (if any) by the International Bureau at 18 months from the priority date; the written opinion of the International Searching Authority (and any informal comments filed by the applicant) will be made available to the public at the same time;
(e) Optionally, at the request of the applicant, a supplementary international search by a participating Authority other than the one which conducted the main international search, in order to extend the overall scope of the search (for example, to better cover prior art in languages not covered by the main Authority). Supplementary international searches may be requested from more than one participating Authority. For a more detailed outline of the supplementary international search procedure, see Chapter 15 at paragraphs 15.75 to 15.97 and also paragraphs 9.42 and 16.03.
(f) Optionally, at the request of the applicant by filing a “demand” (Chapter II of the PCT), an international preliminary examination conducted by the International Preliminary Examining Authority, in which the examiner considers further the issues of novelty, inventive step and industrial application, taking into account any comments or amendments under Article 19 or 34 from the applicant, as detailed later in this document; this concludes with the establishment of an international preliminary examination report, which is entitled “international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)” (see Chapter 17).
(g) Issuance of an “international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)” by the International Bureau on behalf of the International Searching Authority if the applicant does not file a demand requesting examination of the international application in response to the written opinion as established by the International Searching Authority; such an international preliminary report on patentability has the same content as the written opinion established by the International Searching Authority.
(h) Distribution by the International Bureau of documents to the designated Offices or elected Offices, including copies of the application, any amendments which have been filed, any supplementary international search reports(s), and an international preliminary report on patentability, comprising either the contents of the written opinion by the International Searching Authority or, where established, the international preliminary examination report.
The National (or Regional) Phase
1.12 After 30 months from the priority date of the application (20 months in certain States due to transitional provisions; States also have the option of specifying a later date applicable for applications before their Office), the application may begin its national (or regional) phase in each designated Office (if international preliminary examination has not been demanded and Chapter I of the PCT applies) or elected Office (if international preliminary examination has been demanded and Chapter II of the PCT applies). This is the procedure which actually leads to the grant, or refusal, of a patent according to the relevant national law or regional arrangement. While the national and regional Offices may not make further requirements beyond those of the Treaty and Regulations in respect of matters of form and contents, they are not bound by the Treaty to follow the results of any international search or examination which has been performed when the application is examined during the national or regional phase.