6.3.3.1 The Demand and IPRPII

Date Published

Also in this Chapter:​​​​​​​

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:

  • Paragraph 3.23 Nature of the International Preliminary Examination Report

  • Paragraphs 22.02 – 22.05 Determination of Competent International Preliminary Examining Authority and Marking of the Demand

No demand for international preliminary examination

The objectives of international examination (see 6.3.2 Introduction International Examination) are first achieved by establishing a Written Opinion of the International Search Authority (ISO). If there is no Demand filed for international preliminary examination, the International Bureau (IB) converts ISO 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.

Demand for international preliminary examination filed

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.

Australian office practice

The international preliminary examination will normally be performed by the examiner who did the International Search Report (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.

Time limits for international preliminary examination

The examiner responsible for the international preliminary examination must:

  • Ensure that an IPEO or IPRPII is established within the 20 working day time frame allowed by the Customer Service Charter, under normal circumstances.

  • Allow at least three days for the PCT Unit to process the IPEO or IPRPII.

The 20-working day period begins on one of:

  • The date of the start of international preliminary examination (Rule 69)

  • The date a response to a previous opinion is filed

  • 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)

The 20-working day period 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.

When unforeseen circumstances arise, such as the examiner being unexpectedly absent within the anticipated time frame which could 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.

Quality assurance

Quality assurance should be given a high priority. Thus both of the following, as a matter of practice, are referred to supervising examiners for review before transmission:

  • Third and subsequent IPEOs

  • Adverse IPRPIIs issued after a second IPEO (if the report is issued following a response to the previous opinion)

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

    • Merely repeating the substance of that previous opinion

  • IPRPIIs generally

  • ISOs

Considering amendments

Before international preliminary examination has commenced, the applicant may make amendments according to Article 34.2(b). The international preliminary examination is first directed to the claims, the description, and the drawings as contained in the international application at the time the international preliminary examination has commenced. This includes 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) (see Article 19, Article 34.2(b), and 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 the point where 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.

Workflow for international preliminary examination

International preliminary examination involves the following steps:

  1. The applicant demands international preliminary examination.

  2. The Demand is submitted directly to the competent IPEA.

    1. 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.

    2. 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.

  3. The IPEA may issue one or more written opinions.

    1. The applicant and the IPEA communicate with each other during the international preliminary examination.

    2. The applicant is given at least one opportunity to amend the claims, the description, and the drawings.

    3. 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.

      1. Instead, the IPEA it merely states — by a ‘Yes’ or ‘No’ — in relation to each claim whether such claim seems to satisfy the three criteria of novelty, inventive step, and industrial applicability.

      2. 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.

The first international preliminary examination action will either be:

 

  1. The report is communicated to the applicant and the national Offices of the States in which the applicant wishes to use the IPRPII (‘elected States’).

    • The applicant may also request copies of the documents cited that were not cited in the ISR to be communicated to the applicant and ‘elected states.’

Flowchart for international preliminary examination

Amended Reasons

Amended Reason Date Amended

Edited for better readability and accessibility. Edited for consistency with Style Manual. Added subheadings and On this Page menu. Added a flow chart

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