PCT International Search and Preliminary Examination Guidelines
3.16 The International Preliminary Examining Authority carries out a top-up search normally at the start of the international preliminary examination process. The main objective of the top-up search is to discover relevant documents referred to in Rule 64 that became available for search after the establishment of the international search report. No top-up search is carried out if the Authority considers that such a search would serve no useful purpose (see paragraph 19.15).
3.17 The applicant generally has the right to receive at least one written opinion, essentially directed to the questions of whether the claimed invention is novel, involves an inventive step (is non-obvious) and is industrially applicable, prior to the report being established unless the International Preliminary Examining Authority considers that all of the following criteria are fulfilled:
(i) the invention satisfies the criteria set forth in Article 33(1), that is that it appears to be novel, involve an inventive step and have industrial application, as defined for the purposes of the Treaty;
(ii) the international application complies with the requirements of the Treaty and the Regulations which are checked by the International Preliminary Examining Authority (see Rule 70.12 and Chapter 17); and
(iii) the Authority does not intend to make other permitted observations.
3.18 Copies of the international search report and of any supplementary international search report are transmitted by the International Bureau to the International Preliminary Examining Authority. All documents cited in the international search report and, where appropriate, the supplementary international search report are taken into consideration during the international preliminary examination, together with any other documents considered to be relevant. The International Preliminary Examining Authority is not obliged to draw up a written opinion on any claims for which an international search report has not been established. A supplementary search report need not be taken into account by the Authority for the purposes of a written opinion or the international preliminary examination report if the supplementary search report is received by the Authority after it has begun to draw up the written opinion or examination report (Rule 45bis.8(c)).
3.19 Furthermore, it should be noted that the written opinion established by the International Searching Authority under Rule 43bis.1 (see paragraph 2.10(i)) is usually considered to be the first written opinion of the International Preliminary Examining Authority for this purpose. The exception to this rule is that International Preliminary Examining Authorities may notify the International Bureau that written opinions established by specified International Searching Authorities (other than by that International Preliminary Examining Authority acting in its role as an International Searching Authority) shall not be considered to be a written opinion for this purpose. When this applies to a particular application, the Authority must notify the applicant accordingly in writing. The Authority should in any case take the International Searching Authority’s opinion into account when establishing its own written opinion.
3.20 The applicant is entitled to file amendments under Article 34, which will be taken into account for subsequent written opinions and the international preliminary examination report, as will any amendments which were made under Article 19, unless they are reversed or superseded by those later made under Article 34 or the applicant fails to comply with Rule 46.5(b)(iii) or Rule 66.8(a) when filing these amendments (in particular where he fails to indicate the basis for the amendments filed in the application as originally filed). The details of permissible amendments are set forth in Chapter 20 at paragraphs 20.04 et seq.
3.21 The written opinion established under Rule 43bis.1 will however include a notification including a time limit for response in the event that it is treated as the first written opinion of the International Preliminary Examining Authority. The consequence of this is that it will usually be necessary for amendments or arguments to be filed at the same time as the demand in order to ensure that they are taken into account during international preliminary examination.
3.22 Where the International Preliminary Examining Authority has carried out a top-up search and intends to raise objections based on prior art documents discovered in the top-up search, a further written opinion should be issued. In other cases, the International Preliminary Examining Authority may, at its discretion, issue further written opinions provided that sufficient time is available, that the applicant makes an effort to meet the examiner’s objections and provided that the Authority has sufficient resources to provide such services. The Authority may also communicate informally with the applicant in writing, by telephone or by personal interview.