The time limit for establishment of the PCT international preliminary report on patentability (Chapter II of the PCT) is whichever of the following which expires last: 28 months from the priority date; six months from the time provided for the start of the PCT international preliminary examination; or six months from the date of receipt by the PCT International Preliminary Examining Authority of the translation. Thus, under normal circumstances, the applicant receives the report, at the latest, two months before national processing at the elected Offices may start. This ensures that he has time to consider whether, and in which elected Offices, he wants to enter the national phase and to prepare the necessary action.

The PCT international preliminary report on patentability (Chapter II of the PCT) contains, among other things, a statement (in the form of a simple “yes” or “no”), in relation to each claim which has been examined, on whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness) and industrial applicability. The statement is, where appropriate, accompanied by the citation of relevant documents together with concise explanations pointing out the criteria to which the cited documents are applicable and giving reasons for the PCT international Preliminary Examining Authority’s conclusions.

FAQ – THE PCT INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY

How are amendments to the PCT international application referred to in the PCT international preliminary report on patentability (Chapter II of the PCT)?

The PCT international preliminary report on patentability (Chapter II of the PCT) identifies the basis on which it is established—that is, whether, and if so, which, amendments have been taken into account. Replacement sheets containing amendments under Article 19 and/or Article 34 which have been taken into account and replacement sheets containing rectifications of obvious errors are attached as “annexes” to the PCT international preliminary report on patentability (Chapter II of the PCT). Amendments under Article 19 which have been considered as reversed by an amendment under Article 34 or which have been superseded by later replacement sheets, or amendments resulting in the cancellation of entire sheets, are not annexed to the report; neither are the letters which accompany replacement sheets.

May the PCT international preliminary report on patentability (Chapter II of the PCT) express a view on the patentability of the invention?

No, it may not. The PCT international preliminary examination report “shall not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law.” It should be noted that, in this context, “national law” includes regional patent treaties (the ARIPO Harare Protocol, the Eurasian Patent Convention, the European Patent Convention and the OAPI Agreement).

How do the applicant, the PCT international Bureau and the elected Offices receive the PCT international preliminary report on patentability (Chapter II of the PCT) and, where applicable, its translation?

The PCT international Preliminary Examining Authority transmits, on the same day, copies of the PCT international preliminary report on patentability (Chapter II of the PCT) to the applicant and the PCT international Bureau. The latter transmits copies of the report to the elected Offices, as well as a translation into English of the body of the report where that is required by any elected Office; a translation of any annexes, if required, must be prepared and sent to the elected Offices concerned by the applicant himself. If, in the opinion of the applicant, there are errors in the translation of the PCT international preliminary report on patentability (Chapter II of the PCT), he may send written observations on such errors to any interested elected Office and must send a copy of such observations to the PCT international Bureau. As far as comments on the content of the PCT international preliminary report on patentability (Chapter II of the PCT) itself are concerned, they should be addressed to the elected Offices during the national phase.

Is the PCT international preliminary report on patentability (Chapter II of the PCT) accessible to persons other than the applicant and the elected Offices?

The report is not published by the PCT international Bureau. As of 1 January 2004, however, if so requested by an elected Office (details of such requests are published in the PCT Gazette), the PCT international Bureau will furnish copies of the PCT international preliminary report on patentability (Chapter II of the PCT) to any person, although, not before the expiration of 30 months from the priority date. The PCT international Preliminary Examining Authority may not, unless requested or authorized by the applicant, give copies to anyone other than the applicant and the PCT international Bureau. Once the PCT international preliminary report on patentability (Chapter II of the PCT) becomes part of the file in the elected Office, however, the national law applicable by that Office applies as to access to that report and the PCT international preliminary examination file by persons other than the applicant.

To what extent is the PCT international preliminary examination confidential?

Neither the PCT international Bureau nor the PCT international Preliminary Examining Authority may, unless requested or authorized to do so by the applicant, give information on the issuance or non-issuance of an PCT international preliminary report on patentability (Chapter II of the PCT) or on the withdrawal or non-withdrawal of the demand or of any election. Information from the PCT international preliminary examination file may, however, be available through some elected Offices.

How can the applicant obtain copies of the documents cited in the PCT international preliminary report on patentability (Chapter II of the PCT)?

The applicant may obtain copies of those documents cited in the PCT international preliminary report on patentability (Chapter II of the PCT) which were not cited in the PCT international search report by requesting them from the PCT international Preliminary Examining Authority.

What is the effect and usefulness of the PCT international preliminary report on patentability (Chapter II of the PCT) in the national phase?

Since the PCT international preliminary report on patentability (Chapter II of the PCT) contains an opinion on the compliance of the PCT international application with PCT internationally accepted criteria of novelty, inventive step (non-obviousness) and industrial applicability, it provides the applicant with a strong basis on which to evaluate the chances of obtaining patents in the various Offices in the national phase. While the PCT international preliminary report on patentability (Chapter II of the PCT) is not binding on elected Offices, it carries considerable weight with them, and a favorable report will assist the prosecution of the application before the elected Offices. An elected Office which is the same national or regional Office as that which carried out the PCT international preliminary examination as PCT international Preliminary Examining Authority under the PCT will generally proceed rapidly to the grant of a patent in the national phase if the PCT international preliminary report on patentability (Chapter II of the PCT) is favorable to the PCT international application.

The PCT System offers many advantages, however, the procedural requirements and application formalities frequently change and strategic considerations can vary widely depending on individual circumstances. For legal advice on the PCT, consult a registered patent attorney qualified to assist you in international patent filing matters.