6.1.5.1 Abstract

Also in this Chapter:

• 6.1.5.2 Title​​​​​​​​​​​​​​

Key Legislation:

Regulations under the PCT:

• Rule 8 The Abstract

• Rule 8.1 Contents and Form of the Abstract

• Rule 8.2 Figure

• Rule 8.3 Guiding Principles in Drafting

• Rule 26.1 Invitation under Article 14(1)(b) to Correct

• Rule 26.2 Time Limit for Correction

• Rule 28.1 Note on Certain Defects

• Rule 37.1 Lack of Title

• Rule 38.1 Lack of Abstract

• Rule 38.3 Modification of Abstract

PCT ISPE Guidelines:

• Paragraph 15.34

• Paragraph 15.38

• Paragraphs 16.33 and 16.36 - 16.39

Patent Cooperation Treaty (PCT):

• Article 14 Certain Defects in the International Application

Related Chapters:

• Annex B Completed ISR

• Annex C Completed ISR

On this Page

• No abstract or title

• Requirements of the abstract

• When an examiner is required to draft an abstract

• Applicant reply for examiner-prepared abstracts

  • Introduction

  • Issuing a search report with an invitation to comment

  • Consideration of the applicant’s response

No abstract or title

Where the international application lacks a title and/or abstract either the PCT Unit, or the relevant Receiving Office (RO) — such as NZ — should find this in their routine check and notify the applicant accordingly. One month will be allowed from the mailing date of the notification for a reply. The RO should also notify the International Searching Authority (ISA) that an invitation has been sent (see Rule 37.1, Rule 38.1, and PCT/GL/ISPE/12 at paragraph 15.34).

Requirements of the abstract

The adequacy of applicant's abstract and selected figure needs to be considered (see PCT/GL/ISPE/12 at paragraph 15.38, paragraph 16.33 et seq., Rule 8, Rule 8.1(a), Rule 8.3).

The World Intellectual Property Organisation (WIPO) guidelines for the preparation of abstracts are available at the WIPO internet site.

Examiners should have particular regard to the following when assessing or drafting abstracts (because of practical difficulties experienced by the IB with publication):

• The abstract must provide a summary of the technical information about the disclosure as contained in the description, claims and drawings.

• The abstract should be drafted so as to serve as an efficient scanning tool for searching purposes in the art.

• The abstract should be as concise as the disclosure permits, preferably not exceeding 150 words.

• Phrases which can be implied should not be used, such as, ‘This disclosure concerns,’ ‘The invention defined by this disclosure,’ and ‘This invention relates to’.

• Only one figure should be selected unless this would lead to inadequate disclosure.

  • The inclusion of more than two figures should only be considered in extreme circumstances where necessary information cannot be otherwise conveyed.

  • Where none of the figures is considered useful for the understanding of the invention then no figure should be selected — even where the applicant has suggested a figure (see Rule 8.2(b)).

• Abstracts may be incomprehensible if the numerals on the selected figure(s) do not correspond with those in the text.

• An absence of reference numerals of the figures must be accepted as the search examiner has no mechanism to initiate their provision.

The review of the abstract should be conducted in a way that does not increase the elapsed time for completion of the search. This review should be completed in parallel with other steps in the process.

When an examiner is required to draft an abstract

Where an abstract has not been filed with the international application the examiner is not required to draft the abstract, except in the circumstances detailed below. This prevents time being wasted on preparation of an abstract for an international application that may ultimately be withdrawn.

The examiner is required to draft the abstract in any one of the following circumstances:

• The PCT unit has notified the applicant to rectify the deficiency, but the applicant failed to respond within the time limit.

• No abstract has been filed and PCT Unit or relevant RO has omitted to invite the applicant to rectify the deficiency.

  • The examiner should report the oversight to the PCT Unit which shall either immediately notify the applicant and allow one month for a reply or notify the relevant RO who will notify the applicant.

  • If this one month time limit falls outside the period allowed for the search report to be established, the examiner does not notify PCT Unit but instead drafts the abstract themselves (see Rule 26.1 and Rule 28.1).

• The abstract filed either with the international application or within the time limit under Rule 26.2 does not comply with Rules 8.1(a) – (c) (see Rule 8, Rule 26.2).

  • It is office practice that the examiner is not required to draft a new abstract when reference signs (or parentheses around reference signs) have been omitted from the filed abstract (see Rule 8.1(d)).

It is the office practice that the examiner drafts the abstract although Article 14(1)(b) and the PCT Guideline 16.39 appear to be contradictory in this matter.

Applicant reply for examiner-prepared abstracts

Introduction

An applicant can comment on an examiner-prepared abstract when the originally filed abstract does not comply with Rule 8 and the examiner must prepare a more appropriate abstract. In this event the examiner establishes an appropriate abstract and (where appropriate) submits it for supervision (see PCT/GL/ISPE/12 at paragraph 16.36).

The applicant then comment on the abstract prepared by the examiner after it has been established in the International Search Report (ISR) (see search report form PCT/ISA/210, first sheet, item 5, second option at Annex B). This is the only invitation to comment issued to the applicant.

Issuing a search report with an invitation to comment

The search examiner completes the ISR using form PCT/ISA/210 (Annexes B and C show completed examples) and the International Search Opinion (ISO) (see Front Page and Notification Application Details and RIO - Processing PCT Tasks). Where appropriate, this report is sent to the person responsible for supervision. See 6.1.12 Search Report and Notification Form Completion for final examiner and PCT Unit processing.

The applicant is allowed one month from the date of mailing of the report to respond to the examiner's abstract in the report (see Rule 38.3, PCT/GL/ISPE/12 at para 16.37).

Consideration of the applicant’s response

If the one month (and five days extra time to permit forwarding in case filing is at a sub-office) allowed for comment by the applicant has expired without the applicant commenting, the report including the abstract prepared by this authority shall be deemed to be established.

If the applicant does comment, the PCT Unit will refer the case file, including comment, to the originating section for search examiner consideration (see PCT/GL/ISPE/12 at paragraph 16.38).

The search examiner should consider the comments received from the applicant and, in consultation with a senior examiner, decide whether the abstract requires amendment. If this Authority does amend the abstract previously established, it will notify the International Bureau (IB) and the applicant using form PCT/ISA/205. Annex I shows an example of how the search examiner will complete the ISA/205 form.

Note: If no changes are necessary, the ISA/205 form should still be completed and should state why the changes were not made.