6.3.6.1 Response to Opinion

Also in this Chapter:​​​​​​​

• 6.3.6.2 Extensions of Time to Respond to Opinions

Key Legislation:

Regulations under the PCT:

• Rule 6.2 References to Other Parts of the International Application

• Rule 66.2 Written Opinion of the International Preliminary Examining Authority

• Rule 66.4 Additional Opportunity for Submitting Amendments or Arguments

• Rule 66.4bis Consideration of Amendments, Arguments and Rectifications of Obvious Mistakes

• Rule 66.5 Amendment

• Rule 66.6 Informal Communications with the Applicant

• Rule 66.8 Form of Amendments

PCT ISPE Guidelines:

• Paragraph 19.31 Further Stage of International Preliminary Examination

• Paragraph 19.34-19.35 Correction of International Preliminary Examination Report

• Paragraph 20.04 Making Amendments: General Considerations

Related Chapters:

• 6.3.6.2 Extensions of Time to Respond to Opinions

• 6.3.7 IPRPII and Notification

• 6.3.9.3 General Notes on Form Completion

• RIO - Patent Cooperation Treaty (PCT) Tasks

• RIO and Intelledox - Processing PCT Tasks

• RIO - Creating general correspondence tasks

On this page

• When no response has been received

• Where a response has been received

  • Response is arguments only

  • Response includes amendments

• Determining whether to issue an opinion or establish the IPRPII

  • Timing considerations

• Resuming examination after an IPRPII has been issued

  • Type of circumstance for re-opening international preliminary examination

When no response has been received

Examiners should establish the International Preliminary Report on Patentability Chapter 2 (IPRPII) if there is no response to an Opinion and there is less than one month remaining to establish the IPRPII. Examiners should establish the report as detailed in 6.3.7 IPRPII and Notification (and noting Rule 66.4bis). The PCT Unit will forward these files to the section which issued the opinion when less than one month remains.

Where a response has been received

Response is arguments only

Where a response is received in the form of arguments only, examiners should reconsider the International Preliminary Examination Opinion (IPEO) in the light of those arguments. See Rule 66.4(b) and PCT/GL/ISPE/12 at paragraph 19.31 et seq.

Response includes amendments

Where a response is received which includes amendments, examiners should consider the amended description, drawings, and/or claims as described in 6.3.9.3 General Notes on Form Completion (PCT/GL/ISPE/12 at paragraph 20.04 et seq). Based upon Rule 66.5, ‘Any change, other than....... obvious mistake,....... shall be considered an amendment’.

Where a response contains amendments but is missing the letter explaining the differences between the replaced sheets and the replacement sheets (see the second sentence of Rule 66.8(a)), then – unless the presence of this letter is critical for understanding the amendments – its absence should not interrupt processing. The response should still receive immediate detailed consideration. Where, due to exceptional circumstances, the letter is required and time permits, then a request for this letter may be despatched using form PCT/IPEA/424. See RIO for Patents Manual (Create Correspondence Task) for guidance on creating this form.

Where a response is received after the PCT Unit has forwarded the file to an examination section to establish the report, but the report has not yet been established, then that response may be considered if it is reasonable to do so. In this regard, note Rule 66.4bis (amendments or arguments of obvious mistakes need not be taken into account).

Determining whether to issue an opinion or establish the IPRPII

To determine whether an opinion should be issued or the IPRPII should be established in light of an applicant’s response, the examiner must consider both:

• the nature of any outstanding issues

• the time remaining before the final date for establishing the IPRPII.

If there are still general international preliminary examination considerations (Rule 66.2 matters) which apply, then the examiner should issue another opinion provided there is sufficient time remaining to do so.

Timing considerations

As a general rule, if there is more than 3 months to go until the final date for establishing the IPRPII, then this is considered to be sufficient time for the applicant to make a further response and for the examiner to properly consider that response. If an IPEO is issued, the time limit set in this opinion should be one month.

If less than 3 months remains, either the IPRPII should be established – or, if the circumstances favour it, the examiner may make informal communication with the applicant. See Note below and 6.3.6.2 Extensions of Time to Respond to Opinions for further information.

If, after consideration of an applicant’s response, there are no outstanding issues or the only outstanding issue relates to Rule 6.2(a) matters (omnibus claims), the examiner should establish the IPRPII regardless of any timing considerations.

Note: 

Where an informal communication is made with the applicant (Rule 66.6), it should be formalised by a subsequent despatch summarising the content and results of such a communication. Contact the PCT Unit for forms PCT/IPEA/428 and PCT/IPEA/429.

Resuming examination after an IPRPII has been issued

There is no barrier to resuming international preliminary examination after an IPRPII has been issued, provided the circumstances justify such an action. Any replacement report resulting from the re-opening of international preliminary examination should be clearly labelled as such so that elected offices are aware of its status (PCT/GL/ISPE/12 at paragraphs 19.34 and 19.35).

The PCT Unit will advise WIPO to disregard the earlier report. If the resulting response is a further IPEO, then this opinion will be sent to the applicant only. However, when the resulting response is another IPRPII, this will be sent to both the applicant and WIPO as a ‘corrected version’ of the IPRPII.

Type of circumstance for re-opening international preliminary examination

A circumstance prima facie justifying the re-opening of international preliminary examination is where the IPRPII was issued earlier than it otherwise would have, by reason of an error or omission on the part of either the Commissioner, applicant or attorney. For example, where it had been the intention of the applicant to respond but because of an omission by the applicant's attorney no response had been made.  

Where examiners become aware of circumstances that prima facie justify the resumption of international preliminary examination after an IPRPII has been issued, they should bring the matter to the attention of their Supervising Examiner. The Supervising Examiner should then consult with OEP.

Note: Once examination of a particular application has been re-opened, any subsequent request to re-open examination of that application should not be entertained.