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PCT international preliminary examination of a PCT international application may be requested under Chapter II of the PCT to obtain “a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable”. It is carried out by an PCT International Preliminary Examining Authority at the request—called demand—of the applicant, for use before the elected Offices, that is, the designated Offices which are elected by the applicant for that purpose. Note that the filing of a demand constitutes the election of all Contracting States which are designated and bound by Chapter II of the Patent Cooperation Treaty.

The PCT international preliminary examination corresponds to PCT internationally accepted criteria for patentability. The PCT international preliminary report on patentability (Chapter II of the PCT) gives the applicant the opportunity to evaluate the chances of obtaining patents in elected Offices before incurring the expense and trouble of entering the national phase. Moreover, the fact that the carrying out of such an examination has been demanded has the result that the national phase in each elected State is normally delayed until the expiration of 30 months from the priority date, provided that the demand is submitted before the expiration of 19 months from the priority date.

With the exception of the fact that a demand has been filed and the names of those designated States for which a notice of withdrawal has been submitted to the PCT international Bureau or to the PCT international Preliminary Examining Authority are published in the PCT Gazette, the PCT international preliminary examination procedure remains confidential between the applicant, the PCT international Preliminary Examining Authority and the PCT international Bureau.

FAQ – PCT INTERNATIONAL PRELIMINARY EXAMINATION

MAKING A DEMAND FOR PCT INTERNATIONAL PRELIMINARY EXAMINATION

On what conditions may a demand for PCT international preliminary examination be submitted?

There are two conditions which have to be fulfilled for a demand to be submitted. First, the applicant—or, if there are two or more applicants, at least one of them—must be a resident or a national of a Contracting State bound by Chapter II of the PCT. Second, the PCT international application must have been filed with the receiving Office of, or acting for, a Contracting State bound by Chapter II. Potential applicants who have residence and/or nationality in more than one Contracting State, and thus generally have a choice of receiving Office, should therefore file the PCT international application with a receiving Office of or acting for a Contracting State bound by Chapter II if they wish to take advantage later of the PCT international preliminary examination procedure. However, it should be noted that the right to make a demand may be lost if, following a change in the applicants named in the PCT international application, there is no longer, at the time the demand is made, at least one applicant who is resident or national of a Contracting State bound by Chapter II. If the applicant does not have the right to make a demand, the demand is considered not to have been submitted.

Which States may be elected?

In relation to demands for PCT international preliminary examination filed on, or after, 1 January 2004, all Contracting States which are designated in the PCT international application and are bound by Chapter II of the PCT are elected. Please note that States whose designation has been withdrawn cannot subsequently be elected. If the applicant does not wish to elect a particular State, the election of that State may be withdrawn after a demand has been filed. It should be also noted that withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election.

Where should the demand for PCT international preliminary examination be submitted?

The demand must be made separately from the PCT international application, and be submitted directly to an PCT international Preliminary Examining Authority which is competent to carry out PCT international preliminary examination on the PCT international application concerned. Each receiving Office, except the PCT international Bureau as receiving Office, specifies one or more PCT international Preliminary Examining Authorities as competent to carry out PCT international preliminary examination on PCT international applications filed with it. In addition, different PCT international Preliminary Examining Authorities may be competent in relation to an PCT international application depending on the language in which the PCT international application was filed and on which PCT international Searching Authority carried out the PCT international search. Where several PCT international Preliminary Examining Authorities are competent in relation to a particular PCT international application, having regard to which receiving Office the PCT international application was filed with and the language of the PCT international application, the applicant may choose between them. Where the PCT international application is filed with the PCT international Bureau as receiving Office, the competent PCT international Preliminary Examining Authority is that which would have been competent if the PCT international application had been filed with a competent national (or regional) Office as receiving Office. The PCT international Preliminary Examining Authority or Authorities competent for PCT international applications filed with each national (or regional) Office acting as receiving Office, and the languages accepted for PCT international preliminary examination by each PCT international Preliminary Examining Authority, may be ascertained by consulting Annexes C and E. Finally, within the framework of the respective agreements relating to the functioning of certain’s Offices as PCT international Preliminary Examining Authorities, these Authorities may provide for limitations of their competence in respect of certain PCT international applications. In practice, the European Patent Office has limited its competence in respect of PCT international applications for which demands are filed on or after 1 March 2002 by applicants who are nationals or residents of certain States where these applications contain one or more claims relating to certain fields of technology.

If a demand is submitted to a receiving Office, an PCT international Searching Authority, an PCT international Preliminary Examining Authority which is not competent for the PCT international preliminary examination of the PCT international application, or the PCT international Bureau, that Office or that Authority or the PCT international Bureau, as the case may be, will mark on it the date of receipt, which will be considered to be the date on which the demand was received on behalf of the competent PCT international Preliminary Examining Authority.

When a demand is filed with a receiving Office, an PCT international Searching Authority, or an PCT international Preliminary Examining Authority which is not competent for the PCT international preliminary examination of the PCT international application, that Office or Authority may send the demand either directly to the competent PCT international Preliminary Examining Authority, or to the PCT international Bureau which will in turn forward the demand to the competent PCT international Preliminary Examining Authority.

If two or more PCT international Preliminary Examining Authorities are competent, the applicant will be invited, by the Office or Authority to which the demand was submitted, or by the PCT international Bureau, as the case may be, to indicate, within the time limit applicable under Rule 54bis.1(a), or within 15 days from the date of the invitation whichever is later, the competent PCT international Preliminary Examining Authority to which the demand should be transmitted. Where the applicant furnishes that indication, the demand will promptly be transmitted to the competent PCT international Preliminary Examining Authority. Where no indication is so furnished, the demand will be considered not to have been submitted, and the Office or Authority to which the demand was submitted, or the PCT international Bureau, as the case may, will declare that the demand is considered not to have been submitted.

At what stage of the procedure should the demand for PCT international preliminary examination be submitted?

A demand may be submitted at any time prior to the expiration of the following time limits, whichever expires later:

(i) three months from the date of transmittal to the applicant of the PCT international search report and the written opinion of the PCT international Searching Authority; or
(II of the PCT) 22 months from the priority date.

In addition, in respect of some Offices, in order to secure the full effect of the demand—including the delaying of the national phase until 30 months from the priority date—it must be submitted before the expiration of 19 months from the priority date. Since PCT international preliminary examination will normally not start before the PCT international search report and the written opinion of the PCT international Searching Authority are available and provided that the PCT international Preliminary Examining Authority will not start the preliminary examination before the expiration of the applicable time limit unless the applicant expressly requests an earlier start, the applicant will normally wish to take that report and opinion into account before deciding whether to proceed further on his quest for patent protection. Note, however, that the 19-month time limit will expire regardless of whether the establishment of the PCT international search report and the written opinion of the PCT international Searching Authority are delayed. On the other hand, the length of time available for the PCT international preliminary examination depends on the earliest possible submission of the demand after the PCT international search report and the written opinion of the PCT international Searching Authority are available, since the PCT international preliminary report on patentability (Chapter II of the PCT) must in most cases be established before the expiration of 28 months from the priority date, or 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 furnished by the applicant, if applicable, whichever period expires last. The more time available for the PCT international preliminary examination, the better will be the result and quality which can be expected. Therefore, a demand should be filed as soon as possible after the applicant’s evaluation of the PCT international search report and the written opinion of the PCT international Searching Authority has shown that it is worthwhile to pursue the PCT international application further.

What requirements as to form, contents and language must the demand for PCT international preliminary examination comply with?

The demand must either be made on a printed form to be filled in with the required indications or be presented as a computer printout complying with the Administrative Instructions. To facilitate preparation of the demand, the PCT international Bureau has prepared downloadable PDF (portable document format) versions on its website. There are two PDF versions of the form, an editable form that may be downloaded and completed using a computer, and a simple PDF form that may be printed out and filled in using a typewriter.

The completed demand must identify the applicant and the PCT international application to which it relates. The demand contains a petition that the PCT international application be the subject of PCT international preliminary examination. The filing of the demand constitutes the automatic election of all Contracting States which are designated and which are bound by Chapter II of the PCT. It must, where applicable, contain a statement concerning amendments, on the basis of which the PCT international preliminary examination will start and an indication of the language in which PCT international preliminary examination will be carried out. The demand must be in the language of the PCT international application or, if the PCT international application has been filed in a language other than the language in which it is published, in the language of publication. However, where a translation of the PCT international application is required because the PCT international Preliminary Examining Authority accepts neither the language in which the PCT international application is filed nor the language in which the PCT international application is published, the demand must be in the language of that translation. The demand must be signed.

What are the requirements with respect to the identification of the PCT international application?

The PCT international application must be identified by its PCT international application number, filing date and title. If the PCT international application number is not known to the applicant at the time of filing of the demand, the name of the receiving Office with which the PCT international application was filed must be indicated. The title of the invention must be the same as that which appears in the pamphlet.

Can the applicant amend the claims, the description and the drawings before and during the PCT international preliminary examination?

The applicant has the right to amend the claims, the description and the drawings before the start of the PCT international preliminary examination and also during the examination, if time permits, until the preparation of the PCT international preliminary report on patentability (Chapter II OF THE PCT). As far as the claims are concerned, this is in fact the second opportunity to amend them before the PCT international preliminary examination starts; the first opportunity is offered by the possibility of submitting amendments under Article 19 to the PCT international Bureau.

What is the purpose of indicating the basis for PCT international preliminary examination? Do the statement concerning amendments and the indication of the language for the purposes of the PCT international preliminary examination have to be filled in?

(i) The statement concerning amendments should be completed, since it enables the PCT international Preliminary Examining Authority to identify those documents which will serve as the basis for the start of the PCT international preliminary examination with a view to starting it as soon as possible. However, failure to complete the statement or to complete it correctly is not fatal to the application. In particular, if no amendments have been filed under Article 19 or Article 34 and if the applicant does not wish to file such amendments at the time when he files the demand, the result will simply be that the PCT international preliminary examination will start on the basis of the PCT international application as originally filed. The applicant will not be precluded from making amendments at a later stage of the PCT international preliminary examination, provided that they reach the PCT international Preliminary Examining Authority in sufficient time to be taken into account. On the other hand, if there have been amendments but they are not indicated, or if the applicant wishes later to file amendments but does not so indicate, the start of the PCT international preliminary examination may be delayed or the applicant may find that there is insufficient time at a later stage to have his intended amendments taken into account.
(ii) Completing the indication of the language for the purposes of the PCT international preliminary examination and its associated check-boxes helps the PCT international Preliminary Examining Authority determine quickly, with a view to starting PCT international preliminary examination as soon as possible, whether the demand and the PCT international application are in a language accepted by that Authority, or whether a translation of the PCT international application is required. Completing the indication also helps the PCT international Preliminary Examining Authority decide whether any amendments filed with the demand are in the appropriate language.

PROCESSING OF THE DEMAND FOR PCT INTERNATIONAL PRELIMINARY EXAMINATION

What happens to the demand for PCT international preliminary examination once it has been received?

The PCT international Preliminary Examining Authority promptly notifies the applicant of the date of receipt of the demand, and then examines the demand to ascertain whether it meets all the requirements. If it does not, the PCT international Preliminary Examining Authority invites the applicant to comply. The PCT international Preliminary Examining Authority sends the demand or a copy thereof to the PCT international Bureau. The PCT international Bureau then notifies Offices of their election and informs the applicant that it has done so.

THE PCT INTERNATIONAL PRELIMINARY EXAMINATION

When does the PCT international preliminary examination start?

The PCT international Preliminary Examining Authority starts the PCT international preliminary examination when it is in possession of the demand, the amount due for the handling fee and the preliminary examination fee, and of either the PCT international search report and the written opinion or a declaration by the PCT international Searching Authority that no PCT international search report will be established. Even if the PCT international Preliminary Examining Authority is in possession of all of the above, however, it may not start the PCT international preliminary examination before the expiration of the applicable time limit unless the applicant expressly requests an earlier start.

If the competent PCT international Preliminary Examining Authority is part of the same (national or regional) Office as the competent PCT international Searching Authority, the PCT international preliminary examination may, if the Office wishes and except where the applicant has requested that the PCT international preliminary examination be postponed.

What is the purpose of the PCT international preliminary examination?

As already stated above, the purpose of the PCT international preliminary examination is to formulate an opinion—which is “preliminary” (since a final opinion will be formulated only in the national phase by the national or regional Patent Office or by a competent national or regional court) and “non-binding”—on whether the claimed invention appears (i) to be novel, (ii) to involve an inventive step (to be non-obvious), and (iii) to be industrially applicable. While there is not a fully uniform approach to these criteria in national laws, their application under the PCT during the PCT international preliminary examination procedure is such that the PCT international preliminary report on patentability (Chapter II of the PCT) gives a good idea of the likely results in the national phase.

For the purposes of the PCT international preliminary examination, a claimed invention is considered novel if it is not anticipated by the prior art. For the purposes of the PCT international preliminary examination, a claimed invention is considered to involve an inventive step if it is not, at the prescribed relevant date, obvious to a person skilled in the art. For the purposes of the PCT international preliminary examination, a claimed invention is considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry.

What documents form the basis of the PCT international preliminary examination?

The PCT international preliminary examination is based on the claims, the description and the drawings comprised in the PCT international application. Amendments to the claims under Article 19 made before the demand was filed are taken into account unless they are superseded by a subsequent amendment under Article 34 or considered as reversed by an amendment under Article 34. Amendments made after the demand is filed, whether under Article 19 or under Article 34, are also taken into account for the purposes of the PCT international preliminary examination, except that they need not be taken into account for the purposes of a written opinion of the PCT international Preliminary Examining Authority or the PCT international preliminary report on patentability (Chapter II of the PCT) if they are received after the PCT international Preliminary Examining Authority has begun to draw up that opinion or report.

What happens if no PCT international search report has been established in respect of certain claims?

Claims relating to inventions in respect of which no PCT international search report has been established need not be the subject of PCT international preliminary examination and any written opinion of the PCT international Preliminary Examining Authority, as well as the PCT international preliminary report on patentability (Chapter II of the PCT), will so indicate.

What is a written opinion?

A written opinion is a notification, issued by the PCT international Preliminary Examining Authority to the applicant, which indicates any comments by the Authority. The written opinion must fully state the reasons for it, must invite the applicant to submit a written reply and must fix a time limit for the reply usually two months, but extendible at the applicant’s request. There may be no written opinion if the Authority has no such comments to make in which case the Authority will proceed directly to the issuance of the PCT international preliminary report on patentability (Chapter II of the PCT). The Authority may issue one or more additional written opinions if time permits, particularly if the applicant makes a prompt and serious attempt to address the Authority’s comments by argument or amendment.

How may the applicant react to a written opinion by the PCT international Preliminary Examining Authority? May the applicant amend the PCT international application at this stage?

The applicant may ask for further clarifications from the PCT international Preliminary Examining Authority and may himself give clarifications to it, since the PCT expressly provides that the applicant has a right to communicate orally, by telephone or personally, or in writing with the Authority.

Will amendments and arguments always be taken into account?

Amendments and arguments submitted will be taken into account if they are received in sufficient time. In view of the limited time available for PCT international preliminary examination, however, it is in the applicant’s interest to reply as soon as possible to any written opinion. Amendments or arguments need not be taken into account by the PCT international Preliminary Examining Authority for the purposes of a written opinion or the PCT international preliminary report on patentability (Chapter II of the PCT) if they are received after the Authority has begun to draw up that opinion or report.

It should be noted that the PCT international Preliminary Examining Authority cannot force the applicant to make any change in the PCT international application. In other words the applicant may disregard any opinion of the said Authority, either wholly or in part. Such an attitude may lead to an unfavorable or less favorable PCT international preliminary report on patentability (Chapter II of the PCT), but the applicant may prefer such a report (in the hope that he will overcome, in the national phase, any difficulties that it may cause him) to a change which he does not believe in.

May amendments include new matter in the PCT international application?

As for amendments under Article 19, amendments under Article 34(2)(b) may not go beyond the disclosure in the PCT international application as filed. If the PCT international Preliminary Examining Authority considers that any amendments do not comply with this requirement, it will comment accordingly in any written opinion and in the PCT international preliminary report on patentability (Chapter II of the PCT), and the report will be established as if such amendment had not been made.

What must be done to effect amendments to the PCT international application before the PCT international Preliminary Examining Authority?

The applicant must submit a replacement sheet for every sheet which, on account of an amendment, differs from the sheet previously filed. The amendment must be submitted with a letter which explains the difference between the replaced sheet and the replacement sheet and which preferably explains the reasons for the amendment. Where the amendment consists in the deletion of passages or in minor alterations or additions, the alterations or additions may be made on a copy of the relevant sheet of the PCT international application, provided that the clarity and direct reproducibility of that sheet are not adversely affected. No replacement sheet is required where the amendment results in the cancellation of an entire sheet; such an amendment may be communicated in a letter which preferably explains the reasons for the amendment. Where the PCT international preliminary examination is carried out on the basis of a translation of the PCT international application, any amendments must be in the language of that translation. Where such amendments have been or are filed in another language, a translation of the amendments into the language in which the PCT international preliminary examination is carried out must also be furnished. No fee is payable in respect of filing any amendments.

What happens where the PCT international Preliminary Examining Authority finds that “unity of invention” is lacking?

If the PCT international Preliminary Examining Authority considers that the PCT international application does not comply with the unity of invention requirement, it may choose between two courses of action: it may carry out the PCT international preliminary examination on the entire PCT international application and express its views on the lack of unity of invention in the PCT international preliminary report on patentability (Chapter II of the PCT), or it may invite the applicant, at his option, either to restrict the claims so that they meet the requirement or to pay additional fees. If the applicant chooses to restrict the claims as required, the examination is carried out on the claims as restricted. If the applicant chooses to pay the additional fees, the PCT international preliminary examination is carried out on the claims for the main invention and those claims in respect of which additional fees were paid, and the report will indicate that such additional fees have been paid. The additional fees may be paid under protest, in which case procedures similar to those explained in relation to the PCT international search apply. If the applicant neither restricts the claims nor pays additional fees, the examination is carried out on the main invention as identified by the PCT international Preliminary Examining Authority or the applicant.

A finding of lack of unity of invention may continue to be important during the national phase. Any elected Office which agrees with the finding of lack of unity may, during the national procedure, require the applicant to restrict the claims or to divide the application into a number of divisional applications, or to pay special fees in order to maintain those parts of the PCT international application which do not relate to the main invention.

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.