6.3.8.1 Front Page and Notification Application Details

Also in this Chapter:​​​​​​​

• 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs

• 6.3.8.3 Box II Priority

• 6.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability

• 6.3.8.5 Box IV Unity of Invention

• 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability

• 6.3.8.7 Box VI Certain Documents Cited

• 6.3.8.8 Box VII Certain Defects

• 6.3.8.9 Box VIII Certain Observations

Key Legislation:

​​​​​​​PCT Administrative Instructions:

• s105 Identification of International Application with Two or More Applicants

• s108 Correspondence Intended for the Applicant

• s607 Rectifications of Obvious Mistakes under Rule 91

Regulations under the PCT:

• Rule 26bis.3 Restoration of Right of Priority by Receiving Office

• Rule 46.5 Form of Amendments

• Rule 66.8 Form of Amendments​​​​

• Rule 70.16 Annexes to the Report​​​​​​​

• Rule 91.2 ​​​​​​​​​​​​​​Requests for Rectification

• Rule 92bis Recording of Changes in Certain Indications in the Request or the Demand

Related Chapters:

• 6.3.5.1 First IPE action

• RIO and Intelledox - Processing PCT Tasks

• RIO and Intelledox - Attaching Annexes to IPRPII

• 6.1.12 Search Report and Notification Form Completion

On this page

• Address for correspondence

• Date of mailing

• Applicant's or agent's file reference

• Reply due date

• International application number

• International filing date

• Priority date

• IPC symbols

• Applicant

• Annexes

• Attaching Annexes to the IPRPII

• Sequence Listing

Address for correspondence

The PCT Unit captures the address for correspondence from the PCT Request Form (PCT/RO/101) when the file is created (see Ad. Inst. 108).

When an agent represents the applicant, the address for service is listed in Box IV of the PCT Request form.

For applicants processing their own applications, the address for service is listed in Box II of the PCT Request form.

Examiners should check correspondence on file for any changes in the applicant or address of service.

Note:

1. For applicants not using the services of a Patent Attorney, the address for service may not be in the proper format and will need to be corrected, and it may not include the name of the addressee.

2. No change of address for correspondence is allowed unless the applicant has filed a request under PCT Rule 92 bis.

Date of mailing

The date of mailing is automatically filled in when the report is dispatched.

In the case of an International Search Opinion (ISO), the date of mailing shown on the ISO must be the same as the date of mailing shown on the International Search Report (ISR).

Applicant's or agent's file reference

The PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file is created. The data is pre-populated on the PCT Forms when using RIO. Any subsequent change made by an attorney (such as addition of initials) is not required to be entered on the Forms by the examiner.

Note: If the file reference is significantly different from the original – for example, a totally different number – then the new reference should be used and the change should be communicated to the PCT unit. The PCT Unit will inform the International Bureau (IB) of the change. Additions of initials at the end of the original file references are not considered a significant change.

Reply due date

The ISO is considered to be the first International Preliminary Examination Opinion (IPEO) - see 6.3.5.1 First IPE action. In international preliminary examination for PCT applications, a second IPEO is required. Examiners should complete form PCT/IPEA/408 and set the time limit for response at two months.

For subsequent opinions set the time limit to one month.

International application number

The application number will automatically appear in all relevant places in the notification and report forms after all the dialog boxes for data entry have been completed.

International filing date

The PCT Unit upon receipt of the PCT application assigns this date. This date is recorded on the PCT Request Form.

Priority date

This information is given in the PCT Request form (PCT/RO/101) in Box VI. This data is initially captured by the PCT Unit and automatically appears in the template. The examiner must check that the correct priority date has been captured.

In instances where there has been a request by the applicant to restore the right of priority under PCT Rule 26bis.3 and the request for restoration has been refused, the priority date shown in the application details should still be the date given in the PCT request.​​​​​​​ For more information on requests to restore the right of priority, see 7.11.3 Restoration of the Right of Priority under the PCT.

Note: Inform the PCT Unit if an error in the priority date is found.

IPC symbols

All relevant IPC symbols will be automatically added to the report based on concordance with the CPC classifications completed by CPC Classifiers. The report cannot be completed if CPC Classification has not been finalised. All IPC symbols are to be validated on the date of completion of search reports and examination reports. For intermediate reports that do not have a date of completion (such as examination opinions), the IPC symbols are to be validated for the system date (i.e. today's date). RIO will print this system date as the ‘Action Date’ below the IPC symbols. The validation and the ST.10/C display will be used wherever the IPC symbols are presented (in the IPC box) in any report.

Applicant

The PCT Unit captures applicant data and it will automatically appear in the template.

When there is more than one applicant indicated in the Request, only the first mentioned applicant has to be indicated in the International Search Report. The other applicants, if any, are indicated by the words ‘et al’ following the first applicant's name (see Ad. Inst. 105).

The first mentioned applicant can be found in Box II of the PCT Request form, the second applicant in Box III, and further applicants will be listed on the continuation sheet if there are more than two applicants.

Examples

1. AMERICAN EXPLOSIVES INC. et al.

2. SMITH, John Doe

Annexes

Sheets to be annexed to the IPRPII (PCT/IPEA/409).

• Sheets of description, claims and/or drawings which have been amended under Article 19 or Article 34 amendments.

• Sheets containing rectifications authorised by the International Preliminary Examining Authority (IPEA).

• Any accompanying letters related to the above amendments or rectifications, unless the sheets were superseded or cancelled.

  • Only annex accompanying letters which draw attention to the differences between the replaced and the replacement sheets and/or provide basis/reasons for the amendments.

  • If the letter does not identify the differences, include marked up copies with the annexes.

• Sheets containing rectifications that the IPEA decided could not be taken into account and any accompanying letters.

• Superseded sheets and any accompanying letters where the IPEA either considers that the superseding sheets contain an amendment that goes beyond disclosure or the superseding sheets were not accompanied by an applicant's letter indicating the basis for amendments. 

  • Where the examiner considers replacement sheets contain amendments that go beyond the disclosure, the examiner will need to email the PCT unit to draw their attention to this situation. The PCT Unit will need to mark such sheets as ‘SUPERSEDED REPLACEMENT SHEET’ (RULE 70.16(b)).

Examiners should note that when claims are amended under Article 19 or 34, the applicant is required to file replacement sheets containing a complete set of claims (see 6.3.9.1 Article 19 or Article 34(2)(b) Amendments). In this situation, all replacement sheets must be annexed to the report even though there may not be an amendment on each sheet. Where the replacement sheets do not include a complete set of claims, examiners should contact the PCT Unit. The PCT unit will send an invitation to the applicant to submit replacement sheets containing a complete set of claims.

Any ‘Substitute Sheets (Rule 26)’ or ‘RECTIFIED SHEETS (Rule 91.1)’ filed before the Demand is filed are not authorised by the IPEA and are not to be included as annexes to the IPRPII. These are considered to be part of the application as filed.

See Rule 46.5, Rule 66.8​​​​, Rule 70.16​​​​​​​, Rule 91.2​​​​​​​, and Ad. Inst. 607​​​​​​​.

Attaching Annexes to the IPRPII

Examiners need to attach annexes to the IPRPII in RIO. Refer to the guidance above and ‘The Basis of the report (Box I)’ to determine which documents should be annexed to the report. See RIO Manual Attaching Annexes to IPRPII for information on how to attach annexes to IPRPII.

Examiners will need to ensure that they have correctly identified:

1. The Basis of the report at Item 2 of Box I, which begins with ‘With regard to the elements of the international application, this report is based on…’.

2. Any amended sheets which go beyond the original disclosure at Item 4 of Box I.​​​​​​​

See Annex D - IPRPII for an example of the full text of the items in Box I.

To attach annexes to the case file

1. Refer to what is entered in Box I, Item 2 in the template for preparing the IPRPII.

2. Identify which attachments relate to the amendments entered in Box I, Item 2 and select these for attachment.

Note: The amendments or rectified sheets should be available as separate files in RIO. That is, for Article 34 amendments, there will be separate files for the response, and clean and marked-up versions of each part of the specification that is being amended. If separate versions of documents are absent from the case file in RIO, examiners should inform the PCT unit.

Additionally, the annexed sheets:

• must match the amendments indicated in Box I of the IPRPII, with no additional pages to those indicated or no blank pages (unless denoted as intentionally left blank)

• must have correct page numbering

• are properly stamped with ‘Amended Sheet IPEA/AU’ for amendments.

  • Note that Superseded sheets require further steps, as described in the note below.

If there are any issues with the amendments or rectified sheets on the case file, please contact the PCT Unit for assistance.

Note: 

1. Examiners are not required to enter the number of sheets comprising the annexes at Item 3a of the first page of the IPRPII. This will be automatically calculated by RIO.

2. Where the annex consists of replacement sheets which the examiner has found to go beyond the disclosure, the examiner will need to email the PCT Unit to draw their attention to this situation. The PCT Unit will need to mark such sheets as ‘SUPERSEDED REPLACEMENT SHEET (RULE 70.16(b))’.

Sequence Listing

If a sequence listing is provided, the examiner must enter the type and number of electronic carriers annexed to the IPRPII at Item 3b of the first sheet of the IPRPII. These electronic carriers will have been provided after the application was filed for the purposes of search and/or examination, or received as Article 19 or 34 amendments. The electronic carrier(s) is(are) to be sent to the IB by the PCT unit.​​​​​​​

See 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings for more information on sequence listings.