International preliminary examination

Contents

Chapter 1. General

Chapter 2. Request for International Examination

Section 2.1. Preconditions

2.1.1. terms

2.1.2. States bound by Chapter II

2.1.3. Sanction

2.1.4. Indications in the application form

Section 2.2. Skill

2.2.1. Principle

2.2.2. Limitation of competence by the RO

2.2.3. Limitation of competence by IPEA

2.2.4. Application to a maladministration

Section 2.3. Time limit

2.3.1. Principle

2.3.2. exceptions

Section 2.4. Form of demand

Section 2.5. Representation by a representative

Section 2.6. Common representative

Section 2.7. Content of the request

Section 2.8. Language of the request for examination

Section 2.9. Language of the international application

2.9.1. Application as filed

2.9.2. modifications

Section 2.10. Election of States

Section 2.11. taxes

2.11.1. Treatment fee

1) Principle

2) Time limit

3) Reduction

2.11.2. Preliminary examination fee

1) Principle

2) Time limit

3) Reduction

2.11.3. Default of payment

1) Notification

2) Sanction

2.11.4. Refund

1) Processing fee

2) Preliminary examination fee

Chapter 3. Withdrawal of a request for a preliminary examination

Section 3.1. Competent administration

Section 3.2. Time limit

Section 3.3. Tax

Section 3.4. Signature

Section 3.5. Power

Section 3.6. Effects

Chapter 4. Processing of the Request for Examination and Correction of Irregularities

Section 4.1. Reception by IPEA

Section 4.2. Correction of irregularities in form, language or content

4.2.1. Principle

4.2.2. In case of response

4.2.3. In case of non-response

Section 4.3. Sending to IB and notification to elected Offices

Section 4.4. Publication in the Gazette

Chapter 5. International Preliminary Examination

Section 5.1. Start date of the exam

5.1.1. Principle

5.1.2. Deferred start

1) Irregularities

2) Case of modifications A19 PCT

5.1.3. Advanced start (integrated procedure)

Section 5.2. Priority document

Section 5.3. State of the art

Section 5.4. Exam basis

5.4.1. Principle

5.4.2. Taking into account changes A19 PCT / A34 PCT

5.4.3. Taking into account obvious error corrections

5.4.4. Objects / claims excluded from examination

Section 5.5. Additional search

Section 5.6. Communication between IPEA and the applicant

5.6.1. Written opinion

1) Principle

2) Fiction of first opinion written

3) Content of written opinions

5.6.2. Response to the written opinion

5.6.3. Informal communications

Section 5.7. Amendment under A34.2.b PCT

5.7.1. Definition

5.7.2. Competent administration

5.7.3. Time limit

5.7.4. New elements

5.7.5. Form

1) Description and drawings

2) Claims

5.7.6. Language

5.7.7. Tax

5.7.8. Mention of changes in the examination report

Section 5.8. Unity of invention

5.8.1. Additional taxes

1) Principle

2) Non-payment

5.8.2. Reserve

1) Principle

2) Review

3) Reserve Tax

Chapter 6. International Preliminary Examination Report

Section 6.1. Time limit

Section 6.2. contents

Section 6.3. Language

Section 6.4. Transmission of the examination report and the written opinion

6.4.1. Transmission

6.4.2. Submitter's observations

1) Relative to translation

2) Relative to the merits

6.4.3. Copy of documents cited

See the latest changes

Chapter 1. General

The international review may be requested under Chapter II of the PCT (A31.1 PCT) to obtain a preliminary, non-binding opinion on the issues:

  • novelty (the invention does not have a prior art in the state of the art of R64.1 PCT (A33.2 PCT)),
  • inventive step (the invention is not obvious to those skilled in the art considering the state of the art of R64.1 PCT (A33.3 PCT)) and
  • industrial application (the invention may be produced or used in any kind of industry (A33.4 PCT)).

The international examination procedure remains confidential (apart from the fact that this examination was requested) (A38 PCT and R94 PCT)

Chapter 2. Request for International Examination

Section 2.1. Preconditions

2.1.1. terms

To apply for a preliminary examination, it is necessary:

  • one of the applicants (A31.2.a PCT and R54.2 PCT) on the date of submission of the request for examination (eg an assignment registered by the IB, R92bis.1.ai PCT):
    • must be domiciled in one of the Contracting States bound by Chapter II;
    • or be national of one of the Contracting States bound by Chapter II;
  • and the application has been lodged with a RO of a Contracting State bound by Chapter II (A31.2.a PCT and R54.2 PCT);
    • if the IB is RO, he is deemed to be acting for the RO of the Contracting State of his domicile or of which he is a national (R54.3 PCT).

2.1.2. States bound by Chapter II

At present, all PCT members are bound by Chapter II (see Appendix A of the Applicant's Guide) which greatly reduces the impact of such conditions (ie no reservation under theA64.1 PCT).

2.1.3. Sanction

If these conditions are still not met, the request for examination is considered not to have been submitted (R54.4 PCT).

2.1.4. Indications in the application form

If the indications as to the applicant's domicile or nationality and given in the preliminary examination request form do not confirm the applicant's right to file the request for examination, the IPEA informs the applicant and the IB: the application is considered not to have been submitted (R61.1.b PCT together R54.4 PCT).

However, it is possible to correct the request for examination form by providing proof establishing the applicant's nationality or place of residence (Administrative Instructions 614): The IPEA will consider that the request was made correctly on the date of the first submission of the request for review if the evidence is considered satisfactory.

Section 2.2. Skill

2.2.1. Principle

The request for an international examination must be submitted to a competent IPEA (A31.6.a PCT).

The IPEA are appointed by the assembly (A32.3 PCT together A16.3 PCT):

  • Austria,
  • Australia,
  • Brazil,
  • Canada,
  • China,
  • Egypt,
  • EPO
  • Spain,
  • Finland,
  • India,
  • Israel,
  • Japan,
  • Republic of Korea,
  • Russia,
  • Sweden,
  • USA,
  • Nordic Patent Institute.

2.2.2. Limitation of competence by the RO

Each RO (except the IB) indicates the list of competent IPEAs (A32.2 PCT and R59.1 PCT).

If the RO is the IB, the competent IPEAs are the union of the IPEA that would have been competent had the application been filed in each possible RO (R59.1.b PCT together R35.3.a PCT).

A RO can limit the possible IPEA depending on the type (eg language) of the request (R59.1.a PCT together R35.2.a.ii PCT).

2.2.3. Limitation of competence by IPEA

IPEA may limit its jurisdiction, for example, depending on which ISA conducted the research (A32.3 PCT together A16.3.b PCT).

2.2.4. Application to a maladministration

If the request for examination is made to an administration which is not competent to be IPEA (except IB), this administration affixes on the request for examination the date of receipt (R59.3.a PCT) and forward this request to the IB.

Once this request for examination is at the IB (or if it came directly via the applicant, R59.3.b PCT) or if the non-competent authority decides to do it himself (R59.3.f PCT), the request is sent to the competent IPEA. This sending follows the following logic (R59.3.c PCT):

  • if only one IPEA is competent, the IB or the non-competent authority transmits the request for examination to that authority and informs the applicant, or
  • if more than one IPEA may be competent,
    • the IB or non-competent administration invites the applicant to indicate the IPEA to which the request for examination is to be sent. The applicant must reply within the period which expires later R54bis.1.a PCT):
      • 3 months from the date of transmission to the RRI applicant, or
      • 22 months from the priority date,
      • 15 days from the invitation.
    • in the case of an applicant's response, the IB or non-competent authority transmits the application to the IPEA indicated (R59.3.e PCT);
    • otherwise, the application is deemed never to have been submitted (R59.3.e PCT).

The date stamped by the non-competent administration or the IB will be considered as the effective date of receipt of the request for examination by the IPEA (R59.3.e PCT).

Section 2.3. Time limit

2.3.1. Principle

The request for examination must be submitted before the expiry of the period expiring laterR54bis.1.a PCT):

  • 19 months for countries with reservations (A39.1.a PCT)
  • if not :
    • 3 months from the date of transmission to the RRI applicant, or
    • 22 months from the priority date.

Otherwise, the request for examination is deemed not to have been filed (R54bis.1.b PCT).

2.3.2. exceptions

For the following States (which have entered a reservation under theA22.1 PCT), the request for an international examination must be submitted before the expiry of the 19 months from the priority (A39.1.a PCT) in order for the national phase entry to be shifted to 30 months (and not 20 months):

  • Luxembourg
  • Uganda,
  • United Republic of Tanzania.

Section 2.4. Form of demand

The request for examination must be made on the form PCT / IPEA / 401 (printed or computer print, A31.3 PCT together R53.1.a PCT together Administrative instructions 102).

This form is available from IB, RO or IPEA (R53.1.b PCT)

Section 2.5. Representation by a representative

Representation by an agent is never mandatory before the IPEA.

Nevertheless, if the applicant so wishes, he may be represented by:

  • the same agent as for the filing or any authorized representative authorized to act before the RO (R90.1.a PCT);
  • by a representative authorized to act before the IPEA (R90.1.c PCT).

In addition, the authorized representative to the RO can appoint a secondary representative to perform the acts with the IPEA (R90.1.d PCT).

Section 2.6. Common representative

As for the filing, in case of plurality of applicants and if no common agent is constituted, it is necessary to appoint a common representative.

If no common representative is appointed by the applicants (R90.2.a PCT), the first applicant who is entitled to submit an application to the RO is considered as the common representative (R90.2.b PCT).

Section 2.7. Content of the request

The request for examination must include:

  • a petition (R53.2.ai PCT);
    • preferably written as indicated in R53.3 PCT : “Request for an International Preliminary Examination under Article 31 of the Patent Cooperation Treaty - The undersigned requests that the international application specified below be subject to international preliminary examination in accordance with the Patent Cooperation Treaty.
  • indications concerning the applicant (R53.2.a.ii PCT and R53.4 PCT) and, where applicable, the representative (R53.2.a.ii PCT and R53.5 PCT):
    • the same rules as for the deposit apply (R4 PCT);
    • in the case of more than one applicant, it is sufficient that at least one of them give this indication in order to make the request for examination valid (R60.1.a-bis PCT);
  • indications concerning the international application to which it relates (R53.2.a.iii PCT and R53.6 PCT):
    • the name of the applicant
    • the address of the applicant,
    • the title of the invention,
    • the international filing date (if the applicant knows it) and
    • the number of the international application or, failing that, the name of the receiving Office with which the international application was filed.
  • where applicable, a statement concerning the modifications (R53.2.a.iv PCT);
    • this declaration must indicate whether the changes are to be taken into account for the examination (a copy of the amendments must be attached) or whether other changes must be taken into accountA34 PCT (R53.9 PCT);
    • this statement may indicate, if the applicant still has time to submit amendments, that the applicant wishes to defer the examination (R53.9.b PCT);
    • the IPEA will then defer consideration until these amendments are received (A34.1 PCT together R69.1.c PCT).
  • and a signature (R53.2.b PCT) of all applicants (R53.8.a PCT):

Section 2.8. Language of the request for examination

The request for examination must be submitted (A31.3 PCT together R55.1 PCT):

  • in the language of filing of the international application,
  • where applicable, in the language of publication,
  • if neither the filing language nor the language of publication is accepted by the IPEA, in a language of the translation of the international application (see below).

Section 2.9. Language of the international application

2.9.1. Application as filed

A translation of the international application is required when neither the language of filing nor the language of publication is accepted by the IPEA.

This translation must be in a language of publication (R55.2.a.ii PCT) and in a language accepted by IPEA (R55.2.ai PCT).

This requirement also applies to missing parts or elements provided after the filing date (R55.2.a-bis PCT).

The delivery of this translation is not mandatory (R55.2.b PCT):

  • if the ISA is the IPEA and
  • if a translation has been submitted to ISA for research.

If no translation is provided, the IPEA invites the applicant to submit the required translation within 1 month (R55.2.c PCT). If no translation is provided, the request for examination shall be deemed never to have been submitted (R55.2.d PCT).

2.9.2. modifications

Changes made under theA19 PCT (and any letter accompanying these amendments) must also be translated in the same way, if the applicant wishes these modifications to be taken into account (R55.3.b.ii PCT).

If no translation is submitted, the IPEA invites the applicant to submit the requested translation within 1 month minimum (R55.3.c PCT). If no translation is provided, the changes are not taken into account for the examination (R55.3.d PCT).

Section 2.10. Election of States

A request for examination is tantamount to the election of all the designated States and which are bound by Chapter II (ie all, R53.7 PCT).

Section 2.11. taxes

2.11.1. Treatment fee

1) Principle

The processing fee (R57.1 PCT) is fixed by the IB in the Fee Schedule (R57.2 PCT): 200 Swiss francs.

2) Time limit

It is collected by the IPEA for the benefit of the IB (R57.1 PCT) within (R57.3 PCT):

  • of 1 month from the date of receipt effective the request for examination by the IPEA (the date of the request for examination may be earlier if it is submitted to the IB or a non-competent authority, see above).
  • of 22 months from priority (not applicable if IPEA is also ISA and wishes to undertake the review at the same time as the research, R57.3.c PCT).

Taxes are deemed to have been paid on time if payment is received before the IPEA does not send the notice of non-payment (see below, R58bis.1.c PCT).

3) Reduction

A 90% reduction of the processing fee is possible if the applicant is a national or resident:

  • in a country with a per capita national income of less than US $ 3,000 (Fee Schedulepoint 5.a) or
  • in a country classified as a least developed country by the United Nations (Fee Schedulepoint 5.b).

All applicants (even if they are not part of the PCT system) must satisfy this criterion in order to benefit from the reduction (Fee Schedulepoint 5).

At present, WIPO indicates that the following States benefit (90% tax reduction for the PCT):

States benefiting from a reduction under the PCT
States benefiting from a reduction under the PCT States benefiting from a reduction under the PCT
States benefiting from a reduction under the PCT (on the United Nations list)
States benefiting from a reduction under the PCT (on the United Nations list) States benefiting from a reduction under the PCT (on the United Nations list)

2.11.2. Preliminary examination fee

1) Principle

The preliminary examination fee is set by the IPEA for its benefit (R58.1.a PCT and R58.1.b PCT).

2) Time limit

It must be paid to IPEA (R58.1.c PCT) within (R58.1.b PCT together R57.3 PCT):

  • of 1 month from the date of receipt effective the request for examination by the IPEA (the date of the request for examination may be earlier if it is submitted to the IB or a non-competent authority, see above).
  • of 22 months from priority (not applicable if IPEA is also ISA and wishes to undertake the review at the same time as the research, R58.1.b PCT together R57.3.c PCT).

Taxes are deemed to have been paid on time if payment is received before the IPEA sends the notice of non-payment (see below, R58bis.1.c PCT).

3) Reduction

A reduction of this tax may apply to nationals of some underdeveloped States, but this depends on the particular provisions applicable to the IPEA.

2.11.3. Default of payment

1) Notification

In case of non-payment (R58bis.1.a.ii PCT) or insufficient payment (R58bis.1.ai PCT) in due time, the IPEA invites the applicant to pay under 1 month from the invitation (R58bis.1.a PCT).

This period is extendable (Guide for the applicant §10.047.)

A late payment fee may be required by the IPEA (R58bis.1.a PCT):

2) Sanction

In the absence of payment, the request for examination is deemed not to have been made and the IPEA declares it (R58bis.1.b PCT).

2.11.4. Refund

1) Processing fee

IPEA will refund the processing fee (R57.4 PCT) if the request for examination is withdrawn before it has been sent to the International Bureau, or if the request for examination is considered not to have been submitted (unauthorized applicant or application submitted too late).

2) Preliminary examination fee

Each IPEA freely decides on the refund of the preliminary examination fee.

Chapter 3. Withdrawal of a request for a preliminary examination

Section 3.1. Competent administration

The applicant may withdraw his application by sending a declaration to the IB (A37.3.a PCT and R90bis.4.b PCT). However, if this declaration is forwarded to IPEA, the IPEA records the date of receipt on the return and forwards it to the IB: this date will be deemed to be the date of return to the IB (R90bis.4.c PCT).

The IB notifies the interested elected Offices and the IPEA (A37.3.b PCT).

Section 3.2. Time limit

This declaration must be received by the IB within 30 months of the priority (R90bis.4.a PCT).

Section 3.3. Tax

Withdrawal entails no costs (Guide for the applicant §11.060).

Section 3.4. Signature

The withdrawal declaration must be signed by all applicants (R90bis.5 PCT).

This signature may be replaced by the signature:

Nevertheless, the applicant considered as a common representative can not sign this declaration (R90.3.c PCT together R90bis.5 PCT): in this case, all applicants must sign.

Section 3.5. Power

Power is always required in this case by the competent authority (R90.4.e PCT): no renunciation of the administration is possible.

Section 3.6. Effects

The withdrawal of all elections from the elected states entails the withdrawal of the request for preliminary examination (A37.2 PCT): the IPEA then terminates the processing of the international application (R90bis.6.c PCT).

If the request for examination for an elected State is withdrawn after the deadline of theA22 PCT, the application is considered to be withdrawn for that State (A37.4.a PCT, no state having disposed otherwise, Guide for the applicant §11.061): these provisions are only useful for the states a time limit for the designated states and a time limit for the different elected states, that is to say those having put a reserve inA22.1 PCT : Luxembourg, Uganda, United Republic of Tanzania (because for them the period is not 30 months, but 20 months).

Chapter 4. Processing of the Request for Examination and Correction of Irregularities

Section 4.1. Reception by IPEA

Upon receipt, the IPEA notifies the applicant of the date of receipt of the request for review (R61.1.b PCT).

IPEA then examines the conditions to which the IPEA must respond (R61.1.a PCT).

Section 4.2. Correction of irregularities in form, language or content

4.2.1. Principle

If irregularities are found (concerning the form or content of the application), it invites the applicant (R60.1.a PCT) to correct these irregularities within a minimum period of one month.

The period may be extended until the decision has been taken (R60.1.a PCT).

4.2.2. In case of response

In the case of a response, the corrected request for examination is deemed to have been received on the first date of receipt (R60.1.b PCT).

However, if the irregularity does not permit the identification of the international application, the application is considered received on the date of the correction (R60.1.b PCT) and the IPEA informs the applicant of this new date (R61.1.b PCT).

4.2.3. In case of non-response

If no reply is made in time, the application is considered never to have been submitted (R60.1.c PCT) and the IPEA declaresR60.1.c PCT as well as R61.1.b PCT) to the applicant and the IB.

Section 4.3. Sending to IB and notification to elected Offices

IPEA sends the examination request or a copy to the IB (R61.1.a PCT).

The IB then notifies the elected offices of their election (A31.7 PCT and R61.2 PCT): the applicant is informed of this fact.

Section 4.4. Publication in the Gazette

the IB publishes in the Gazette the details of the request for examination and the list of elected states (R61.4 PCT and Administrative Instructions 431).

Chapter 5. International Preliminary Examination

Section 5.1. Start date of the exam

5.1.1. Principle

Normally, the IPEA starts the exam (A34.1 PCT together R69.1.a PCT):

  • if the deadline for submitting an application for examination has expired (R54bis.1.a PCT, ie max of 22 months from the priority and 3 months from the service of the RRI) and
  • as soon as she has in hand:
    • the request for examination,
    • the processing fee and the preliminary examination fee,
    • the RRI with the written opinion.

5.1.2. Deferred start

1) Irregularities

Of course, if the request for examination has irregularities as indicated above, the examination is deferred as long as the irregularities are present (R60.1.c PCT).

2) Case of modifications A19 PCT

If any changes have been made in response to the IPP and a statement indicates that these changes need to be considered for the review, the IPEA will defer consideration until the amendments are received (A34.1 PCT together R69.1.c PCT).

Thus, it is in the applicant's interest to include a copy of the changes in the request for review (R53.9.ai PCT) even though the IB will communicate them in the end (R62.1.ii PCT).

5.1.3. Advanced start (integrated procedure)

If the IPEA is also ISA, the IPEA may decide (except for the counter-order of the depositor, eg he wishes to file amendments under theA34 PCT) to integrate the examination into research (R69.1.b PCT).

In this case, the written opinion of the RRI (R43bis.1 PCT) is not mandatory if the IPEA has no comment to make (A34.2.c PCT and R69.1.b-bis PCT).

Section 5.2. Priority document

A copy of the priority document must be submitted to IPEA (R66.7.a PCT): if it has already been submitted to the IB, the IB sends a copy to the IPEA.

If this copy is not submitted, the IPEA may report as if the priority was not claimed (R66.7.a PCT), but this has no impact on national phases: the applicant must have the opportunity to deliver the priority document to the elected Offices within a reasonable time (R17.1.c PCT).

If the copy is submitted, but in a language not accepted by the IPEA and if the IPEA considers that the priority claim is essential to patentability, the IPEA may ask the applicant for a translation within 2 months, otherwise the report can be established as if the priority was not claimed (R66.7.b PCT).

Section 5.3. State of the art

The state of the art for the purposes of the examination includes everything that has been made accessible (A33.2 PCT and R64.1 PCT):

  • to the public ;
  • anywhere in the world;
  • by a written disclosure.

Other disclosures or prior national rights may nevertheless be mentioned in the search report (eg oral disclosure) (R64.2 PCT and R64.3 PCT).

Section 5.4. Exam basis

5.4.1. Principle

The international examination generally relates to the content of the international application (R66.1.a PCT).

5.4.2. Taking into account changes A19 PCT / A34 PCT

For the examination, it is also possible to take into consideration (R66.1.c PCT and R66.1.d PCT):

  • changes made under theA19 PCT,
  • changes made under theA34 PCTfor the purposes of the examination (eg following a written opinion).

Nevertheless, this take into account is not mandatory if the IPEA has started to write its written opinion or review report (R66.4bis PCT).

5.4.3. Taking into account obvious error corrections

IPEA should also take into account the obvious errors of the R91.1 PCT (R66.1.d-bis PCT).

Nevertheless, this take into account is not mandatory if the IPEA has started to write its written opinion or review report (R66.4bis PCT).

5.4.4. Objects / claims excluded from examination

A claim that has not been the subject of a search is not subject to international review (R66.1.e PCT).

The first written opinion mentions it (R66.2.a.vi PCT) and the final report (R70.2.d PCT).

Section 5.5. Additional search

As of 1 July 2014, IPEA conducts further research to discover the state of the art that has been published or has become available after the date on which the international search report was prepared (R66.1ter PCT).

This additional search is mentioned in the examination report (R70.2.f PCT).

Section 5.6. Communication between IPEA and the applicant

5.6.1. Written opinion

1) Principle

A "written opinion" is a notification sent by the IPEA to inform the applicant of its comments on the application.

The written opinion must:

IPEA may make several written opinions if time permits (R66.4.a PCT) in particular if the applicant responds promptly (R66.4.b PCT).

If IPEA has no comments, it does not address any written opinion (A34.2.c PCT) and the final examination report is directlyGuide for the applicant §10.066).

2) Fiction of first opinion written

The written opinion prepared by the ISA may be considered as the first written opinion prepared by the IPEA (R43bis.1.c PCT): the applicant is then invited to reply to this written opinion before the expiry of the deadline for submitting a request for examination (R43bis.1.c PCT, ie max 22 months from the priority and 3 months from the communication of the RRI).

This procedure does not apply if the IPEA has declared it (R66.1bis.b PCT): for example, this procedure applies to the EPO / IPEA if the ISA was also the EPO (OJ 2005, 493).

3) Content of written opinions

In written opinions, the IPEA should indicate (R66.2.a PCT):

  • if the application contains an object for which it is not required to conduct an examination (A34.4 PCT),
  • if one of the claims does not appear to be new, inventive or industrially applicable,
  • if the form or content of the application is incorrect,
  • if a modification goes beyond the disclosure of the invention as filed,
  • if problems of clarity are apparent,
  • if an invention has not been searched,
  • if it misses the nucleotide listing to perform a meaningful examination,
  • if the wording of multiple dependencies is not permitted by the national legislation governing the IPEA.

5.6.2. Response to the written opinion

The applicant may, in reply (A34.2.d PCT):

This response should be addressed directly to IPEA (R66.3.b PCT).

This applies to the answer to the first written opinion, but also to the following ones (R66.4.a PCT).

5.6.3. Informal communications

It should be noted that these clarifications can be made verbally (at least informally), or in writing with IPEA (A34.2.a PCT ).

IPEA may contact the applicant informally (R66.6 PCT) by telephone, in writing or through interviews. She may grant more than one interview if the applicant so requests, or if she wishes.

Section 5.7. Amendment under A34.2.b PCT

5.7.1. Definition

A change is any change (excluding obvious error) in the description, claims, and drawings (R66.5 PCT).

5.7.2. Competent administration

The competent authority to receive amendments under theA34.2.b PCT is the IPEA (R66.1.d PCT).

5.7.3. Time limit

Changes made under theA34.2.b PCT can be done (R66.1.b PCT):

  • at the same time as the request for examination;
  • time permitting, until the examination report has been completed (as well as R66.3 PCT for the answer to the first written opinion, R66.4 PCT for a response to the following written opinions);

5.7.4. New elements

Changes made under theA34.2.b PCT can not go beyond the disclosure of the invention as filed (A34.2.b PCT).

If such a change is detected by the IPEA, the latter will note it in the following written opinion and in the examination report: the final report will be established as if this modification had not been made (R70.2.c PCT).

5.7.5. Form

1) Description and drawings

A modification of the description and drawings must be made by submitting a replacement sheet of the sheet (or sheets) containing a modification (R66.8.a PCT).

A letter must accompany these replacement sheets indicating the difference as well as the basis and reasons (preferably) of this modification (R66.8.a PCT).

These modifications can be made on a copy of the sheet as filed (eg deletion, small modifications) if the clarity and the possibilities of reproductions are not altered (R66.8.b PCT).

2) Claims

The same requirements as the modifications A19 PCT are required (R66.8.c PCT together R46.5 PCT).

The applicant is required to submit replacement sheets containing a complete set of claims in order to replace all claims as filed (R66.8.c PCT together R46.5.a PCT).

The changes can be a deletion, an addition, a modification of the text. Claims must be numbered in consecutive Arabic numerals (Administrative instructions 205.a).

Amendments must be indicated in a cover letter (R66.8.c PCT together R46.5.b PCT and Administrative Instructions 205.b). For each of the claims, indicate whether:

  • the claim is not modified;
  • the claim is deleted;
  • the claim is new;
  • the claim replaces one or more claims as filed;
  • the claim is the result of the division of a claim as filed;
  • the claim replaces one or more claims as previously modified;
  • the claim is the result of the division of a claim as previously modified.

In the absence of such a cover letter or lack of indication of changes, the IPEA may refuse to consider such changes (R70.2.c-bis PCT). The same applies to a national office (Guide for the applicant §11.047A).

The series of claims last filed replaces the preceding claims (R66.8.c PCT).

5.7.6. Language

Like the request for review, the amendments or any letter must be submitted:

  • in the language of filing of the international application (R12.2.a PCT),
  • where applicable, in the language of publication (R55.3.a PCT),
  • if neither the filing language nor the language of publication is accepted by the IPEA, in a language of the translation of the international application (R55.3.bi PCT).

If an amendment or the cover letter is not submitted in the correct language, a translation may be required within one month (R55.3.c PCT).

If no translation is submitted on time, the changes are not taken into account for the purposes of the international review (R55.3.d PCT).

5.7.7. Tax

There is no fee to file an amendment (Guide for the applicant §10.071).

5.7.8. Mention of changes in the examination report

The examination report indicates on what basis it is established (R70.2.a PCT).

Is attached to the examination reports (R70.16 PCT):

  • the last set of amended (and accepted) claims, unless IPEA considers that the last claim set contains elements going beyond the invention as filed;
  • the replacement sheets of the description.

Section 5.8. Unity of invention

5.8.1. Additional taxes

1) Principle

In the event of a problem of unity of invention, the IPEA must send a first opinion (R66.2.a.iii PCT) stating that she does not think there is unity, wait for the applicant's response.

Only after (W6 / 99, R68.1 PCT), and if the request is still non-unitary for the IPEA, that administration may invite the applicant to pay additional fees (A34.3.a PCT) under 1 month from the invitation (R68.2.iii PCT):

  • indicating at least one possibility of limitation (R68.2.i PCT);
  • by motivating his point of view (R68.2.ii PCT);
  • indicating the number of additional fees to be paid (R68.2.iv PCT).

IPEA may very well decide not to send this invitation, but it must then review for the entire application and indicate in the report why it still considers that there is no unit (R68.1 PCT).

These taxes are paid directly to IPEA (R68.3.b PCT).

Each IPEA is free to set the amount of the additional fees (R68.3.a PCT).

2) Non-payment

In the event of non-payment of the additional fees requested, the IPEA does not examine the claims not covered by the fees: only the principal invention indicated by the IPEA or the applicant (A34.3.c PCT together A34.3.a PCT) is examined (most often, it is the first, but there is no obligation, R68.5 PCT).

The national law of any Contracting State may provide that the unexamined portions shall be considered withdrawn unless a particular charge is paid (A34.3.b PCT).

5.8.2. Reserve

1) Principle

Any applicant may pay the additional fees subject to reservations, that is to say, together with a reasoned statement tending to show that the application fulfills the requirement of unity of invention (R68.2.v PCT together R68.3.c PCT) or the number of taxes requested is too high.

2) Review

In this case, a review body of the IPEA examines this reservation (R68.3.c PCT): this body is composed of at least one other person than the examiner who made the initial decision (R68.3.d PCT).

If the reservation is justified, the additional fee is refunded in whole or in part (R68.3.c PCT).

3) Reserve Tax

A reserve fee may be required by the IPEA (R68.3.e PCT), to be paid under 1 month from the invitation to pay taxes (R68.2.v PCT): failing this, the IPEA may consider that the reservation has not been submitted and the IPEA declares it (R68.3.e PCT).

If the reservation is justified, the protest fee is refunded in full (R68.3.e PCT).

Chapter 6. International Preliminary Examination Report

Section 6.1. Time limit

The examination report must be drawn up (max of the following deadlines) within aA35.1 PCT together R69.2 PCT):

  • 28 months from the priority;
  • 6 months from the scheduled time (R69.1 PCT) to begin the examination;
  • 6 months from the date of receipt by IPEA of the translation of the application (if necessary).

Section 6.2. contents

The examination report includes (A35.1 PCT and A35.2 PCT together R70 PCT) especially :

  • a statement as to whether or not each claim is considered novel inventive and capable of industrial application (R70.6.a PCT);
  • an explanation of this statement, especially if it is negative (R70.8 PCT);
  • citations of the relevant documents (R70.7.a PCT):
  • the international classification of demand (R70.5.a PCT together R43.3.a PCT).

Section 6.3. Language

The language of the report is (R70.17 PCT):

  • if a translation of the request has been provided to IPEA (under R55.2 PCT) in that language;
  • otherwise in the language of publication.

In addition, the report is translated into English (A36.2.a PCT together R72.1.a PCT) by the IB. If an elected state requires a translation of the annexes to the report, it is up to the depositor to provide them (A36.2.b PCT together R74 PCT)

Section 6.4. Transmission of the examination report and the written opinion

6.4.1. Transmission

IPEA sends the applicant and IB the same day (A36.1 PCT together R71.1 PCT) a copy of the examination report and its annexes.

The IB then transmits the report to the elected Offices (A36.3.a PCT together R73.1 PCT and R73.2 PCT) as well as possibly an English translation if required by the elected offices. A copy of this translation is also sent to the applicant (R72.2 PCT).

This transmission is not carried out before the expiry of a period of 30 months from the priority (R73.2.a PCT) except in case of early national phase-in and the IB is in possession of the examination report (R73.2.bi PCT).

In case of an early national phase opening when the IB is not in possession of the examination report, the IB simply transmits the written opinion of the ISA (R73.2.b.ii PCT) as well as possibly an English translation if required by the elected Offices (R72.2bis PCT).

6.4.2. Submitter's observations

1) Relative to translation

If the applicant considers that the IB's translation is incorrect, the applicant may send comments to any elected State and send a copy of those comments to the IB (R72.3 PCT).

2) Relative to the merits

Any other comments must be sent during the national phase to the elected Office (Guide for the applicant §10.079).

6.4.3. Copy of documents cited

The applicant or an elected Office may obtain, on request, for 7 years from the date of filing a copy of the documents cited in the examination report by requesting them from IPEA (A36.4 PCT together R71.2 PCT).

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