6.3.3.2 Timeframe for Demand and IPRPII

• 6.3.3.1 The Demand and IPRPII

Patent Cooperation Treaty (PCT):

• Article 17 Procedure Before the International Searching Authority 

• Article 19 Amendment of the Claims Before the International Bureau 

• Article 31 Demand for International Preliminary Examination 

• Article 34 Procedure Before the International Preliminary Examining Authority

Regulations under the PCT:

• Rule 43bis.1 Written Opinion

• Rule 53.9(a)(i) Statement Concerning Amendments

• Rule 54bis.1(a) Time Limit for Making a Demand 

• Rule 55.2 Translation of International Application

• Rule 58bis.2 Late Payment Fee

• Rule 60.1(g) Defects in the Demand

• Rule 61.1 Notification to the International Bureau and the Applicant

• Rule 69.1 Start of International Preliminary Examination

PCT ISPE Guidelines:

• Paragraph 3.13 Commencement of International Preliminary Examination

• Paragraph 3.24 Time Limit for Establishing the International Preliminary Examination Report

• Chapter 19 Examination Procedure Before The International Preliminary Examining Authority

  • Paragraph 19.08 Start of Examination

• 6.3.9.1 Article 19 or Article 34(2)(b) Amendments

• Annex P

• RIO – Navigating RIO for PCT tasks

• Timeframe for filing of Demand

• IP Australia workflow for receipt of Demand

  • The ‘start’ date

  • ISO prepared by another authority

• Exceptions to timeframes for International Preliminary Examination

  • International Preliminary Examination starting at same time as International Search

  • Article 19 amendments

  • Postponement

  • No amendments in spite of indication of amendments

• Guidelines for PCT Amendments

• Timeframe for establishment of IPRPII

• IP Australia practice

The applicant must file the Demand with the competent International Preliminary Examining Authority (IPEA) before the expiration of the later of the following time limits (see Article 17(2)(a), Rule 43bis.1) either:

• Three months from the date of transmittal to the applicant of:

  • The International Search Report (ISR) and International Search Opinion (ISO) established under Rule 43bis.1

  • The declaration referred to in Article 17(2)(a) that no ISR will be established (and, the ISO established under Rule 43bis.1)

• 22 months from the priority date of the international application

See Annex P for a timeline of typical international application process from first filing to National Phase Entry.

Demands for international preliminary examination are received by the PCT Unit, which in turn notifies the International Bureau (IB) provided that the following all apply (see Article 31 and Rule 61.1):

• The applicant has not indicated on the Demand that examination is to be postponed.

• Copies of any amendments referred to by the applicant are available.

• All other formal requirements have been met.

The PCT Unit will then forward the file to the Examination section with current responsibility for the relevant class once the formal ‘start’ date (see below) for international preliminary examination is reached.

Otherwise, the file will be so forwarded when the amendments become available or after expiration of the appropriate time limits.

The International Preliminary Examining Authority normally starts the International Preliminary Examination (the ‘start’ date) when (see PCT/GL/ISPE/12 at paragraph 3.13) it is in the possession of all of the following:

• the demand

• the amount due (in full) for the handling fee and the international preliminary examination fee including, where applicable, the late payment fee under Rule 58bis.2

• a translation if the applicant is required to furnish a translation under Rule 55.2

• either:

  • the ISR and the ISO established under Rule 43bis.1

  • a notice of the declaration by the International Search Authority (ISA) under Article 17(2)(a) that no ISR will be established

An exception is when the applicant expressly requests to postpone the start of the international preliminary examination until the expiration of the applicable time limit under Rule 54bis.1(a).

Where an ISO which has been prepared by another authority is not on file, the examiner is to:

• contact PCT unit and ask them to request the ISO from the IB

• wait until they receive the ISO before carrying out international preliminary examination

However, exceptions to this requirement can arise in the following cases (see PCT/GL/ISPE/12 at paragraph 19.08):

An international preliminary examination may start at the same time as the international search provided:

• That national Office or intergovernmental organization that acts as the ISA and IPEA so wishes.

• The examination is not to be postponed according to the statement concerning amendments.

The ISO will still be issued by the ISA, with subsequent opinions and the International Preliminary Report on Patentability Chapter 2 (IPRPII) issued by the IPEA. The only exception to this is if the ISO would be ‘clear,’ in which case the IPEA will issue an IPRPII instead of a clear International Preliminary Examination Opinion (IPEO).

Where the statement concerning amendments contains an indication that amendments under Article 19 (see 6.3.9.1 Article 19 or Article 34(2)(b) Amendments) are to be taken into account (Rule 53.9(a)(i)), the IPEA does not start the international preliminary examination before it has received a copy of the amendments concerned.

Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed (Rule 53.9(b)), the IPEA does not start the international preliminary examination before whichever of the following occurs first:

• It has received a copy of any amendments made under Article 19.

• It has received a notice from the applicant that they do not wish to make amendments under Article 19.

• The later of:

  • Elapsing three months from the transmittal of the ISR and ISO or of the declaration that no ISR will be established.

  • The expiration of 22 months from the priority date.

Where both:

• the statement concerning amendments contains an indication that amendments under Article 34 (see 6.3.9.1 Article 19 or Article 34(2)(b) Amendments) are submitted with the Demand (Rule 53.9(c))

• no such amendments have, in fact, been submitted

The IPEA does not start the international preliminary examination before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1(g) has expired, whichever occurs first (see also: Rule 53.9(c)).

These examination procedures before the IPEA are set out in detail in Chapter 19 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/12), see Rule 60.1(g).

PCT applications are deemed amended when the applicant files amendments (i.e. the concept of ‘proposed amendments’ in national examination does not exist).

The IPRPII must be established within whichever expires last of (see Rule 69.2 and PCT/GL/ISPE/12 at paragraph 3.24):

• 28 months from the priority date

• six months from the time provided under Rule 69.1 for the start of the international preliminary examination

• six months from the date of receipt by the IPEA of the translation furnished under Rule 55.2

The start date of the international preliminary examination is determined by Rule 69.1.

The report establishment date can be found in the Key Dates field of the Summary screen (‘Final Date to establish IPRPII’).

So far as Australia is concerned, while it is in the international phase, a PCT application effectively proceeds as both an application for a patent and for a patent of addition. An indication of the form or form(s) of protection in respect of which a PCT application is made is only effective when the indication is given to a designated Office when performing the acts required for national phase entry (although reference to a parent application can be made in the Request). Our systems do not recognise an application as being for one or another form of protection until entry into the national phase has occurred.