2.20.8 Use of IPRP

Date Published

A PCT application may contain:

  • an ISO, if national phase entry occurs before the publication of the IPRPI at 30 months after the priority date;
  • an IPRPI, provided IPE has not been demanded; or
  • an IPRPII.

If a national phase application contains an ISO or IPRPI, it may also contain comments from the applicant in relation to the ISO.

IPRPI/IPRPIIs are relevant to examination considerations and therefore these reports must be utilised as per the guidelines set down in 2.1.9 Guidelines for Using IPRPI/IPRPIIs and Other Foreign Examination Reports (FERs) in Examination.  While IPRPI/IPRPIIs are advisory only and use some criteria that differ from certain requirements of the Act, e.g. multiply dependent claims, they are prepared using novelty and inventive step tests that are the same as, or more stringent than, the requirements of Australian law.

Where an IPRPI/IPRPII is missing from a case file, examiners should follow the procedures outlined in Determining Whether Article 19 and Article 34 Amendments are Considered During Examination.  

Translation of IPRPII

The IPRPII will be translated into English by the International Bureau if it is not already in English (as per Article 36 and Rule 44bis.3 and Rule 72).  Any annex (i.e. the Article 34 amendments) will be in the language of publication of the pamphlet, i.e. in the original language.  Where there is no translation of the IPRPII on file examiners should check Patentscope.  If the translation is available, a copy should be downloaded and added to the case file.

Where the amendments are not in English, it is the responsibility of the applicant to supply a translation within the time limit for entry into national phase as per Article 36(2) and Rule 74 (see also Translation of Amendments).

Note: Although the IPRPII is advisory, its annexes/replacement sheets (resulting from amendments made under Article 34) usually form part of the national phase application; see 2.20.10 Amendments and Corrections Prior to Examination.

Note: A PCT application filed before 1 January 2004, and which has entered the national phase, may contain an IPER if Australia is elected.  Examiners are unlikely to encounter national phase applications containing an IPER.  Nevertheless, the examination considerations discussed in this chapter for IPRPI/IPRPIIs apply equally to IPERs.