6.3.3.1 The Demand and IPRPII

Also in this Chapter:​​​​​​​

• 6.3.3.2 Timeframe for Demand and IPRPII

Key Legislation:

Patent Cooperation Treaty:

• Article 19 Amendment of the Claims Before the International Bureau
• Article 34.2 Procedure Before the International Preliminary Examining Authority 

Regulations under the PCT:

• Rule 66 Procedure before the International Preliminary Examining Authority
• Rule 69 Start of and Time Limit for International Preliminary Examination
• Rule 91 Rectification of Obvious Mistakes in the International Application and Other Documents

PCT ISPE Guidelines:

• para 3.23 Nature of the International Preliminary Examination Report
• para 22.02-22.05 Determination of Competent International Preliminary Examining Authority and Marking of the Demand

Related Chapters:

• 3.2 Customer Service Charter (Timeliness Standards)
• 6.3.2 Introduction International Examination
• 6.3.5.1 First IPE Action

The objectives of international examination (see 6.3.2 Introduction International Examination) are achieved by establishing, firstly, a Written Opinion of the International Search Authority (ISO), which, provided no Demand is filed for international preliminary examination, is converted by the International Bureau (IB) into an examination report entitled "International Preliminary Report on Patentability (Chapter I)" (IPRPI) and issued 30 months after the priority date of the application.

For many PCT contracting States that do not have an examining capability this examination report serves as the only examination report in relation to the particular application. The ISO therefore serves an important role and the examination must be carried out according to a high standard.

If international preliminary examination is demanded, the objective of international examination is achieved by establishing an examination report entitled "International Preliminary Report on Patentability (Chapter II)" (IPRPII).

The IPRPII is issued at 30 months after the priority date, as with the IPRPI. No IPRPI is issued if international preliminary examination occurs. The IPRPII should be preceded by at least one written opinion of the International Examining Authority (IPEO) if and only if important matters arise. Unimportant matters, even if recognised, are not to be raised in international preliminary examination.

The international preliminary examination will normally be performed by the examiner who did the ISR and the ISO. If this examiner is not available and another examiner authorised the ISR, then this examiner should perform the examination. If this examiner is also not available, the section which has current responsibility for the relevant IPC subclass is responsible for the conduct of the international preliminary examination.

When unforeseen circumstances arise, such as the examiner being unexpectedly absent within the anticipated time frame, and this is likely to prevent an international preliminary examination action being completed within its target time, counter measures should be adopted where practical. For example, transferring the case file to another examiner for completion should be contemplated.

Note: The examiner responsible for the international preliminary examination must ensure that, under normal circumstances, an IPEO or IPRPII is established within the 20 working day time frame allowed by the Customer Service Charter (Timeliness Standards). The examiner must also allow at least three days for the PCT Unit to process the IPEO or IPRPII. The 20 working day period begins on the date of the start of international preliminary examination (Rule 69), the date a response to a previous opinion is filed, or the date of the most recent Office action (such as where the PCT Unit forwards the case file to the examiner when there has been no response to an IPEO), and ends on the date of dispatch from IP Australia. If an invitation to pay an additional examination fee is issued, the 20 working day period starts on the date that fee is paid. If the IPEO or IPRPII is not established within the time frame stated above, an apology must accompany the opinion/report.

Quality assurance should be given a high priority. Thus:

• third and subsequent IPEOs, and

• adverse IPRPIIs issued after a second IPEO - but only if the report is issued following a response to the previous opinion

are, as a matter of practice, to be referred to supervising examiners for review before transmission.

Supervising examiners do not, however, need to routinely supervise:

• adverse IPRPIIs that are issued after a second opinion without a response to the previous opinion having been received, and merely repeat the substance of that previous opinion;

• IPRPII's generally; or

• ISO's.

Before international preliminary examination has commenced, the applicant may make amendments according to Article 34.2(b) and the international preliminary examination shall initially be directed to the claims, the description, and the drawings, as contained in the international application at the time the international preliminary examination has commenced, including any amendments made according to Article 19 (claims only), to the extent that they are not superseded or reversed by the amendments under Article 34.2(b). [Article 19 Article 34.2(b) Rule 66.1]

In the case of the ISO, there is no provision in the PCT to amend the claims, description or drawings up to this stage in the life of a PCT application when the ISO is produced, other than to correct an obvious error under Rule 91. A Rule 91 amendment does not alter the scope of the claims, description or drawings.

International preliminary examination involves the following steps:

1. The applicant demands international preliminary examination.

2. The Demand is submitted directly to the competent IPEA (but see paragraphs 22.02 - 22.05 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/12) concerning Demands not submitted to the competent IPEA); that IPEA conducts the international preliminary examination which is essentially directed to the questions whether the claimed invention is new, involves an inventive step (is non-obvious) and is industrially applicable.

3. The IPEA may issue one or more written opinions, and the applicant and the IPEA communicate with each other during the international preliminary examination, and the applicant is given at least one opportunity to amend the claims, the description, and the drawings. The IPEA issues its report which does not contain any statement on the question whether or not the claimed invention is or seems to be patentable according to the law of any country; it merely states-by a "Yes" or "No"-in relation to each claim whether such claim seems to satisfy the said three criteria and each such statement is accompanied by citations and other explanations (see paragraph 3.23 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/12)) finally.

4. The report and, where requested, copies of the documents cited therein which were not cited in the ISR, are communicated to the applicant and the national Offices of the States in which the applicant wishes to use the IPRPII ("elected States").

The first international preliminary examination action will either be a second IPEO (as the ISO is treated as the first IPEO) or an IPRPII (see 6.3.5.1 First IPE Action for further guidance).