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6.3.5.1 First IPE Action

Date Published

Also in this Chapter:​​​​​​​

Key Legislation:

Patent Cooperation Treaty (PCT):

  • Article 19 Amendment of the Claims Before the International Bureau 
  • Article 34 Procedure Before the International Preliminary Examining Authority 
  • Article 35 The International Preliminary Examination Report 

PCT Administrative Instructions:

  • s503 Method of Identifying Documents Cited in the International Search Report and the Written Opinion of the International Searching Authority
  • s611 Method of Identification of Documents in the International Preliminary Examination Report

Regulations under the PCT:

  • Rule 92bis Recording of Changes in Certain Indications in the Request or the Demand

PCT ISPE Guidelines:

  • para 17.06 Written Opinion(s) of the International Preliminary Examining Authority
  • para 17.22 Amendments Resulting in Gaps in Numbering
  • para 17.23 Amendments Going Beyond Original Disclosure
  • para 20.10-20.19 Additional Subject Matter

The first IPE action will be either an IPRPII or a second written opinion depending on the circumstances. In this regard the ISO (whether produced by the Australian Patent Office or some other International Authority) is deemed, for Australian purposes, to constitute the first written opinion of the international preliminary examination.

See Annex A for a completed example of form PCT/ISA/237.

At the commencement of international preliminary examination at 22 months after the priority date of the application the examiner will again consider the PCT application using the guidance contained in 6.3.8.1 Front Page and Notification Application Details and 6.3.9.3 General Notes on Form Completion and PCT Guidelines 17.06 provided that the applicant has filed amendments under Article 19 or 34 and/or submissions responsive to the ISO. If a second written opinion is required the examiner will complete form PCT/IPEA/408 and set the time limit for response at two months (one month for subsequent changes - see 6.3.3.2 Timeframe for Demand and IPRPII). However, if a response to the second written opinion is not received an IPRPII is not to be established until one month before the final date for that to occur, and account must be taken of any response filed before the report is established - see 6.3.6.1 Response to Opinion

Note: For issues related to Article 19 or 34 amendments resulting in gaps in numbering of the description pages, claim numbers and/or drawing sheets, See PCT Guideline 17.22. For issues related to Article 19 or 34 amendments going beyond original disclosure, See PCT Guidelines 17.23 and 20.10-20.19.

If the applicant does not file amendments and/or submissions responsive to the ISO before the IPE start date (see 6.3.3.2 Timeframe for Demand and IPRPII), then in view of the fact that the Demand will be, in effect, a response to the first written opinion, the Report is to be established immediately on the basis of the ISO. The only exception to this is if the examiner is certain that a finding made in the ISO is incorrect, in which case a second written opinion should be issued.

Where issues arise as to the completeness of the demand, e.g. submissions and/or Article 34 amendments referred to but not included, these will be handled by the PCT Unit and the file forwarded to the Examination section only after any further time allowed for filing the amendments or submissions has expired (usually one month). Consequently once the file has been transferred to the Examination section it will be ready for examination to proceed and no further extension of time is to be given by the Examiner.

Note: Requests by applicants for the examiner to defer examination or to issue an opinion instead of an IPRPII (other than when an examiner agrees the ISO was incorrect) should be refused.

Occasionally the applicant may refer to or submit Art 19 amendments when they file the Demand. When Art 19 amendments are referred to or submitted with the Demand and no evidence exists on file that Art 19 amendments had been received by the IB, the PCT unit should check at the WIPO’s “PatentScope” website (WIPO’s International Patent Applications “Advanced search” website) for an indication or other evidence that the IB has received the Art 19 Amendments. If the amendments are confirmed to have been received then the file is sent for examination as per the normal process. If there is no indication or evidence of any such filing of Art 19 amendments, the PCT unit should send a letter to the applicant seeking clarification as to whether they want examination to proceed disregarding the amendments filed with the Demand, or that they want to convert the amendments filed with the Demand to Art 34 amendments and examination to proceed having regard to the converted amendments. The PCT unit should retain the case until a response is received from the applicant. If Examiners cannot determine if the Art 19 amendments have been received from the IB they should contact the PCT unit for confirmation.

Where there are no matters arising from 6.3.8 Completing ISO, IPEO and IPRPII Forms and 6.3.9.3 General Notes on Form Completion, requiring an IPEO to issue, proceed to establish the IPRPII - see 6.3.7 IPRPII and Notification

Note:  Although, in principle, international preliminary examination is based on the documents cited in the ISR, the examiner should not be deterred from looking for additional relevant documents which they personally know, or have reason to suspect, exist, if the examiner can locate such documents in a short time from material available to them. Such documents shall be considered on the same footing as the documents cited in the ISR, and mentioned in the IPEO.

The following details are automatically filled in on the form (for further details on completing this part of the IPEO or the IPRPII form see 6.3.8 Completing ISO, IPEO and IPRPII Forms):

  • Address for correspondence

  • Applicant's or agent's file reference

  • International filing date

  • Priority date

  • Applicant

Note:

  1. Examiners must check the latest correspondence on file to ensure that all PCT Rule 92bis changes have been recorded by the PCT Unit.
  2. If any of the above application details have been updated, the examiner must enter the latest updated detail in the form.
  3. Two compulsory boxes on the first sheet of the IPEO or ISO, in Item 2, will be crossed automatically on the template. The two compulsory boxes are: Box I - Basis of the opinion, Box V - Reasoned statement under Article 35(2).
  4. Any document cited in an IPEO that was cited in the ISR may be cited in a shortened form, provided that the reference to the document is unambiguous. Any document cited in the IPEO which was not cited in the ISR shall be cited in the same form as required under Section 503 for ISR's. Similarly all documents cited in the ISO may be cited in shortened form. [Ad. Inst. 503 and Ad. Inst. 611]

Claim groupings used in an ISR in accordance with 6.1.11 Search Procedure, are not automatically transferable to an ISO, IPEO or IPRPII. For example, a citation may have been accorded an "X" category because it is a novelty citation or an inventive step citation.

Guidelines for the considerations for items for Boxes I-VIII in the opinion are given in 6.3.8 Completing ISO, IPEO and IPRPII Forms and 6.3.9.3 General Notes on Form Completion.

See Annex B for a completed example of form PCT/IPEA/408.

Amended Reasons

Amended Reason Date Amended

Published for testing
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