6.3.7 IPRPII and Notification

Also in this Chapter:

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

• 6.3.2 Introduction International 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

• 6.3.8 Completing ISO, IPEO and IPRPII Forms

• 6.3.9 General Considerations

• 6.3.10 Annexes​​​​​​​​​​​​​​

Key Legislation:

Patent Cooperation Treaty (PCT)

• Article 35 The International Preliminary Examination Report

PCT Administrative Instructions:

• s503 Method of Identifying Documents Cited in the International Search Report and the Written Opinion of the International Searching Authority

• s611 Method of Identification of Documents in the International Preliminary Examination Report

Regulations under the PCT:

• Rule 43.5 Citations

• Rule 70.7 Citations under Article 35(2)

Related Chapters:

• 6.3.8.1 Front Page and Notification Application Details

• Annex C - Notification of Transmittal of IPRPII

• Annex D - IPRPII

• RIO - Patent Cooperation Treaty (PCT) Tasks

• RIO - Attaching Annexes to IPRPII

On this page

• International Preliminary Report on Patentability Chapter 2 (IPRPII)

  • Details on the forms

    • Date of completion of the report

  • Documents cited

• Attaching Annexes to the IPRPII

International Preliminary Report on Patentability Chapter 2 (IPRPII)

The final response comprises:

• Notification of Transmittal form PCT/IPEA/416

• IPRPII form PCT/IPEA/409.

The above forms are available as a single template under ‘PCT/IPEA/409’.

See Annex C - Notification of Transmittal of IPRPII and Annex D - IPRPII for completed examples of forms PCT/IPEA/416 and PCT/IPEA/409, respectively.

The applicant receives both the Notification of Transmittal and the IPRPII. WIPO is only sent the IPRPII.

Details on the forms

The following details are automatically filled in on the forms.

• Address for correspondence

• Applicant's or agent's file reference

• International filing date

• Priority date

• Applicant

For further details on completing this part of the IPRPII form see 6.3.8.1 Front Page and Notification Application Details.

Two compulsory boxes in Item 4 on the first sheet of the IPRPII will be crossed automatically on the template. The two compulsory boxes are Box I - Basis of the report and Box V - Reasoned statement under Article 35(2).

Date of completion of the report

The ‘date of completion of this report’ will be the date that the authorising officer completes or concurs with the report. This date will be the date of establishment of the report and should not be after the mailing date shown on the Notification of Transmittal sheet of the written report.

Where a corrected report is required to be issued, the ‘date of completion of this report’ shown in the report should be the date of completion of the original report. An exception to this is when the correction is one of real substance and the applicant would be procedurally disadvantaged by having the date of completion as that of the original report. In situations like this, the actual date of completion of the corrected report should be shown.

Documents cited

Any document cited in the IPRPII which was previously cited in the International Search Report (ISR) may be cited in a shortened form, provided that the reference to the document is unambiguous.

Any document cited in the IPRPII which was not cited in the ISR shall be cited in the same form as required under Section 503 for ISR's.

No document should be cited for the first time in an IPRPII. Any new citation should be raised first in an IPEO.

See Rule 43.5, Rule 70.7, Ad. Inst. 503, and Ad. Inst. 611.

Attaching Annexes to the IPRPII

Examiners will need to attach the Annexes. Follow the guidance in Attaching Annexes to the IPRPII.

Note:

1. Examiners must check the latest correspondence on file to ensure that any PCT Rule 92bis changes have been recorded by the PCT Unit.  

2. Use a Supplemental Box sheet(s) if there is insufficient space in any Box provided and remember to indicate the Box number I-VIII from which it is a continuation.