PCT International Search and Preliminary Examination Guidelines


Chapter 3 Overview of the International Preliminary Examination Stage


3.01  This chapter provides a brief introductory overview of the international preliminary examination stage. A complete discussion of the procedure at the international preliminary examination stage is provided in Parts V and VI of the Guidelines.

Article 31

3.02  International preliminary examination is an optional part of the processing of an international application, performed if the applicant files a “demand.” It shares the objectives of, and builds on the process of, the written opinion of the International Searching Authority, allowing the applicant to respond to the International Preliminary Examining Authority, with arguments as to why the opinion was incorrect, and/or with amendments to attempt to overcome objections. The results of the international preliminary examination are recorded in the international preliminary examination report (entitled “international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)”), copies of which are then sent to the applicant and the International Bureau. The International Bureau communicates the report to each elected Office (that is, usually, the Offices of all Contracting States).

Article 31(4); Rule 53.7

3.03  Filing of a demand constitutes the “election” of all States which were designated when the international application was filed, which have not been withdrawn and which are bound by Chapter II of the Treaty (at the time of writing this included all Contracting States). Election indicates an intention to use the results of the international preliminary examination in the relevant States, but it should be remembered that the results of international preliminary examination are not binding on the States.

3.04  Using international preliminary examination has the practical effect that national processing starts under much more advantageous conditions both for the applicant and the national Offices than would be the case without the PCT. The applicant has, thanks to the written opinion prepared under Chapter I, an earlier and stronger indication of his chances of obtaining protection. Moreover, amendments made in the international phase in response to the written opinion may be reflected in the international preliminary examination report and need not be filed in each elected State. The elected Offices save a considerable amount of the effort of examination. The exact extent of the saving depends on the national law and practice.

3.05  The attitude of the examiner is very important. He should always try to be constructive and helpful. He should bear in mind that, subject to the requirements of the PCT, the drafting of the description and claims of an international application is the responsibility of the applicant or his authorized representative.

3.06  All international applications, regardless of their country of origin and the language in which they are written, should receive equal treatment.