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International Preliminary Examination Essay

International preliminary examination is an optional feature of the international phase available under Chapter II of the PCT. It is performed by an International Preliminary Examining Authority (IPEA), one of the Offices which are also International Searching Authorities (ISAs) [see Module 7]. The receiving Office with which you filed your PCT application has appointed the IPEA which is “competent” to perform international preliminary examination. If your receiving Office has appointed more than one competent IPEA, you can choose between them, taking into account differing requirements relating to search, such as language, fees, etc.

The international preliminary examination gives you the benefit, before entering the national phase, of an assessment from an IPEA on whether your invention appears to be novel, involves an inventive step (non-obvious), and is industrially applicable. This may provide you with greater certainty on your chances of obtaining a patent. You may consider international preliminary examination if, as a result of the international search and the written opinion of the ISA, your PCT application needs to be amended in order to overcome objections previously raised in the written opinion of the ISA.

During the international preliminary examination procedure, you can amend the description, claims and drawings of your PCT application. This enables you to further refine your PCT application, which will be useful during the patent granting procedures in the national phase. While international preliminary examination is not binding for the purposes of national or regional examination, it is increasingly seen by national and regional Offices as highly persuasive. It may, in some Offices, result in a reduced examination fee in the national or regional phase.

9.1 The Demand

The “demand” is a PCT term that is used to describe the request for international preliminary examination. The demand automatically indicates that you intend to use the results of international preliminary examination in all PCT countries. The Offices of the countries where the international preliminary examination results will be used are referred to as “elected” Offices. The demand must be made on a printed or computer generated form [Form PCT/IPEA/401] and must contain certain indications, all of which are clearly identified on the form. It must be submitted, with very limited exceptions, to a competent IPEA within three months from the date of transmittal to the applicant of the ISR and the written opinion of the ISA, or within 22 months from the priority date, whichever period expires later.

If the demand is filed with an IPEA which is not competent for carrying out international preliminary examination, or with a receiving Office, an ISA or the International Bureau, it will be transmitted by that Office or Authority either directly to the competent IPEA, or first to the International Bureau which will in turn transmit it to the competent IPEA. Generally, the original filing date of the demand will be retained. If the language in which your PCT application was searched or the language in which it was published is not accepted by the IPEA, you will be invited to furnish a translation within one month from the date of the invitation. If you do not furnish the missing translation in time, the IPEA will consider the demand not to have been submitted.

9.2 Amendment of the Description, Claims, Drawings When you file the demand, or before the start of international preliminary examination, you have an opportunity to amend your PCT application (description, claims, and drawings). These amendments are commonly referred to as Article 34 amendments. Any amendments that you make may not go beyond the disclosure of your PCT application as originally filed. As far as the claims are concerned, this is a second opportunity for amending them before the international preliminary examination starts (the first being by way of Article 19 amendments submitted to the International Bureau after receipt of the international search report).

In practice, most applicants filing a demand for international preliminary examination do not make use of the possibility of amending the claims under Article 19, unless publication of the amendments is desired [see Module 8 section 8.2]. Where it is clear from the references cited in the ISR and the written opinion of the ISA that the PCT application requires amendments, applicants typically furnish their amendments to the IPEA together with the demand.

9.3 Written Opinion of the IPEA The written opinion of the ISA is generally used as the first written opinion of the IPEA, particularly if the ISA and the IPEA are the same. In this case, you will most likely not receive a “second” written opinion from the IPEA. You should therefore file any Article 34 amendments and/or any arguments in relation to the written opinion of the ISA together with the demand. International preliminary examination does not usually start until after the ISA has drawn up the ISR and the written opinion. You may wait for these documents before deciding whether to proceed further with the PCT application by filing a demand for international preliminary examination. The cost of the examination need not be incurred before it is clear, from the results of the ISR and the written opinion of the ISA, that the invention claimed in the PCT application is not clearly lacking novelty and inventiveness.

If the IPEA and ISA are the same, the Office may decide to start international preliminary examination at the same time as the international search, except where, under certain circumstances, the applicant has requested that international preliminary examination be postponed. If, exceptionally, a second written opinion is established by the IPEA, you may have additional opportunities to file amendments during the international preliminary examination. The number of opportunities for filing amendments which will be available depends very much on the time available for international preliminary examination.

The international preliminary examination report must in general be drawn up not later than 28 months from the priority date. Any amendments you file after the examiner has begun to draw up the report can no longer be taken into account. Should you wish to make further amendments (which can no longer be filed during the international phase), they can still be filed with elected Offices on entering the national phase. No elected Office may grant or refuse a patent before the expiration of the time limit for amending the application for the purposes of the grant procedure in the national phase. Each national chapter of the PCT Applicant’s Guide gives details as to when and how amendments may be filed during the national phase [see Module 10].

9.3.1 Response to the Written Opinion of the IPEA Exceptionally, you may receive an additional written opinion from the IPEA [Form PCT/IPEA/408], with an invitation to respond, before the international preliminary examination report is drawn up. In such a case, you may present further amendments or arguments. Informal communications between the IPEA and the applicant are expressly provided for under the PCT.

Consistent with the non-binding, preliminary nature of the international preliminary examination, there is no provision for a formal review of an examiner’s opinion, except on disputed findings of lack of unity of invention [see Module 7 section 7.1.2]. International preliminary examination can thus be compared to a regular patent examination in an examining patent Office with one exception; namely, in that the time limits set by the examiner for the response are usually much shorter than under the normal examination procedure. A prompt reaction is required from you during preliminary examination in order for the international preliminary examination to be completed within the limited time available.

9.4 The International Preliminary Report on Patentability (Chapter II) International preliminary examination ends with the drawing up of an International Preliminary Report on Patentability (Chapter II) as prescribed under Chapter II of the PCT – commonly referred to as an IPRP (Chapter II) [Form PCT/IPEA/409]. The IPRP Chapter II is typically drawn up before the expiration of 28 months from the priority date.

The IPRP (Chapter II) is a non-binding opinion, which essentially contains a statement, in relation to each claim, on whether it appears to satisfy the criteria of novelty, inventive step and industrial applicability as defined in the PCT. The statement is accompanied by the citation of the documents believed to support that conclusion. Further explanations are given where the circumstances of the case so require. No statement may be made on the question whether the invention would be patentable under the national law of any elected State. If the report is based on the PCT application in an amended form, a copy of all sheets containing amendments will be annexed to the report.

The IPEA transmits the IPRP (Chapter II) to the applicant and to the International Bureau. The report is established in the language in which the PCT application concerned is published or, if the international preliminary examination is carried out on the basis of a translation of the PCT application, in the language of the translation. The International Bureau must then translate, if necessary, the report into English to meet the language requirements of some elected Offices. Only the IPRP (Chapter II) is translated, not the annexes. The transmittal of the IPRP (Chapter II) completes the international procedure under Chapter II. The IPRP (Chapter II) is not accessible to persons other than the applicant and the elected Offices during the international phase.

Neither the International Bureau nor the IPEA may, unless requested or authorized to do so by the applicant, give information on the issuance of an IPRP (Chapter II) or on the withdrawal or non-withdrawal of the demand or of any election, except for communications or access provided to elected Offices. Upon receipt of the IPRP (Chapter II) (at the latest, at about the 28th month from the priority date), you have until the expiration of 30 months from the priority date in which to evaluate it and to decide whether to proceed further by entering the national or regional phase before the elected Offices. If a translation of the PCT application must be furnished to the elected Office upon entry into the national phase, it must usually include a translation of the PCT application as originally filed, and of the amendments appearing in the annexes to the IPRP (Chapter II). The translation requirements of the annexes vary somewhat among the elected Offices. The national chapter relating to each elected Office in the PCT Applicant’s Guide indicates the applicable requirements.

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