1.3.2 Introduction International Examination

Date Published

The following procedures relating to international examination are supplementary to the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/8) and are intended to facilitate an understanding and application of the Guidelines by highlighting the essential steps to be taken by examiners and by directing their attention to the relevant passages of the Guidelines, PCT Articles, Rules and Administrative Instructions.

These procedures are to be used for international applications that were originally filed either at RO/AU, or any other country such as RO/NZ for which Australia is a competent International Searching Authority (ISA) and/or International Preliminary Examining Authority (IPEA) (see 1.10.6 Current Status of APO AS AN RO ISA and IPEA) as long as AU is the specified ISA and/or IPEA. The search may have been performed by another ISA.

Also, IP Australia acts as an ISA and IPEA for international applications filed with the USPTO. These applications are to be treated the same as any other international application for which AU is the ISA and/or IPEA. However, IP Australia will only act as an IPEA for international applications filed with the USPTO where we functioned as the ISA. COG should identify any excluded applications prior to the applications being forwarded to Examination sections. All excluded applications must be referred to Assistant General Manager B who will advise COG if an examination will not be conducted by IP Australia. COG will notify the USPTO using form PCT/ISA/224.

The Guidelines are formulated to comply with the Regulations under the PCT in force from 1 January 2004. They thus apply to all PCT applications filed on or after this date. Such applications are readily differentiable from those PCT applications filed prior to 2004 by the year component of the international application number PCT/AU20xx/123456 used on all official communications, publications and other official documents applying from that date.

Note:  The expanded numbering system PCT/AU/20xx/123456 and WO 20xx/123456 took effect from 1 January 2004, and in the case of Australia applies to all official communications, publications and other official documents in respect of all PCT application numbers and publication numbers whether the PCT application was filed before or after that date. The citing of pre 2004 documents in the new format extends to the citing of such documents in reports and opinions, even if the document has been cited in an earlier opinion or report according to the old format. However, the old numbering system will be retained for data held in the mainframe computer (PATADMIN, etc). This applies even for applications filed from 1 January 2004.

The primary objective of international examination is to formulate a preliminary and non-binding opinion on the questions of whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable. A secondary objective is to identify whether the claims appear to have any defects in the form or contents of the international application, the clarity of the claims, the description, and the drawings, or whether the claims are fully supported by the description. [Article 33(1) PCT/GL/ISPE/8 at para 3.02 and 19.02]

The purpose of a written opinion, issued by the International Searching Authority is to give a primary indication to the applicant of the defects which the examiner considers to exist in the application.  The opinion should be drafted in such a manner as to facilitate further international preliminary examination of the international application should it be amended, and, in particular, to avoid the need for extensive re-reading should the examiner wish to issue one or more additional written opinions during the international preliminary examination.  The report should be set out so that it will be easily used by designated offices.