6.3.2 Introduction International Examination

• 6.3.1 Procedural Outline - Written Opinion of the ISA and International Preliminary Examination

• 6.3.3 The Demand and IPRPII

• 6.3.4 Top-up Search

• 6.3.5 First IPE action

• 6.3.6 Response to Opinion

• 6.3.7 IPRPII and Notification

• 6.3.8 Completing ISO, IPEO and IPRPII Forms

• 6.3.9 General Considerations

• 6.3.10 Annexes

Patent Cooperation Treaty (PCT):

• Article 33(1) The International Preliminary Examination

PCT ISPE Guidelines:

• Paragraph 3.02 Introduction

• Paragraph 19.02 General

Related Chapters:

• 6.1.6 Subjects to be Excluded from the Search

• 6.1.7.3 PCT Articles 5 and 6

• 6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims

• 6.3.8.6.1 Novelty

• 6.3.8.6.2 Inventive Step

• 6.3.8.6.3 Industrial Applicability

• 6.9.6 Current Status of APO as an RO ISA and IPEA

• Introduction

• Filings with the USPTO

• Objectives of international search and examination

• PCT application numbering systems

The following procedures relating to international examination are supplementary to the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/12). These are intended to facilitate an understanding and application of the Guidelines by:

• Highlighting the essential steps to be taken by examiners

• Directing examiners’ 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 in Australia as a Receiving Office (RO/AU)

• international applications that were originally filed in any other country such as New Zealand as a Receiving Office (RO/NZ) for which both:

  • Australia is a competent International Searching Authority (ISA) and/or International Preliminary Examining Authority (IPEA) (see 6.9.6 Current Status of APO as an RO ISA and IPEA).

  • Australia 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 US Patent and Trademark Office (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.

Customer Experience Group (CEG) should identify any excluded applications prior to the applications being forwarded to Examination sections. All excluded applications must be referred to the Assistant General Manager – Policy and Technical who will advise CEG if an examination will not be conducted by IP Australia. CEG will notify the USPTO using form PCT/ISA/224.

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 (see 6.3.8.6.1 Novelty)

• to involve an inventive step/to be non-obvious (see 6.3.8.6.2 Inventive Step)

• to be industrially applicable (see 6.3.8.6.3 Industrial Applicability)

A secondary objective is to identify:

• whether the claims appear to have any defects in the form or contents of the international application (see 6.1.6 Subjects to be Excluded from the Search)

• the clarity of the claims, the description, and the drawings (see 6.1.7.4 Claims Lacking Clarity and Excessive/Multitudinous Claims)

• whether the claims are fully supported by the description (see 6.1.7.3 PCT Articles 5 and 6)

See also: Article 33(1) and PCT/GL/ISPE/12 at paragraphs 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

• 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.

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. 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.