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

Address for correspondence [Ad. Inst. 108]

PCT Unit captures this data from the PCT Request Form (PCT/RO/101) when the file is created.

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.

Note:

Check correspondence on file for any changes in the applicant or address of service.
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.
No change of address for correspondence is allowed unless the applicant has filed a request under PCT Rule 92 bis.

Date of mailing

Leave this space blank.

RIO fills in this box when the report is dispatched.

In the case of an ISO, the date of mailing shown on the ISO must be the same as the date of mailing shown on the ISR - Search Report and Notification Form Completion.

Applicant's or agent's file reference

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

Note: If the file reference is significantly different from the original e.g. 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 IB of the change. Additions of initials at the end of the original file references are not considered a significant change.

Reply due date

In international preliminary examination for PCT applications, a second IPEO is required (the ISO being considered to be the first IPEO - see 6.3.5.1 First IPE action). 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. Even if the file indicates that there has been a request by the applicant to restore the right of priority under PCT Rule 26bis.3 – see 7.11.4 Restoration of the Right of Priority under the PCT - and the request for restoration has been refused, the priority date shown in the application details should still be whichever date is given in the PCT request.

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 (i.e. examination opinions) that do not have a date of completion, the IPC symbols are to be validated for the system date (i.e. today's date) and the RIO system will print this 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 [Ad. Inst. 105]

PCT Unit captures this data and, will automatically appear in the template.

When there is more than one applicant indicated in the Request, only the first mentioned of these 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. The first mentioned applicant is indicated in Box II of the PCT Request form, a second applicant is listed in Box III, further applicants will be listed on the continuation sheet if there are more than two applicants.

Example (a) AMERICAN EXPLOSIVES INC. et al.

Example (b) SMITH, John Doe

Annexes [Rule 46.5, Rule 66.8, Rule 70.16, Rule 91.2, Ad Inst 607]

The following sheets are required to be annexed to the IPRPII (PCT/IPEA/409):

sheets of description, claims and/or drawings which have been amended (Article 19, Article 34 amendments) and/or sheets containing rectifications authorised by the IPEA, and any accompanying letters, unless those sheets were superseded or cancelled;

Note: Only those letters which draw attention to the differences between the replaced and the replacement sheets and/or provide basis/reasons for the amendments should be annexed. Where the letter does not identify the differences, the marked up copies should be included with the annexes.

sheets containing rectifications that the IPEA decided could not be taken into account and any accompanying letters; and
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 MDB-PCT 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. 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 who 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 (that is, are not authorised by the IPEA) are not to be included as annexes to the IPRPII. These are considered to be part of the application as filed.

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 on how to attach annexes Attaching Annexes to IPRPII.

Examiners will need to ensure that they have correctly identified:

The Basis of the report at Item 2 of Box I (‘With regard to the elements of the international application, this report is based on…’);
Any amended sheets which go beyond the original disclosure at Item 4 of Box I.

To attach annexes to the case file:

Refer to what is entered in Box I, Item 2 in the template for preparing the IPRPII;
Identify which attachments relate to the amendments entered in Box I, Item 2 and select these for attachment.

Note: the amendments/rectified sheets should be available as separate files (i.e. for Article 34 amendments, there will be separate files for the response; clean copy; and marked-up copy).

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; and

are properly stamped with "Amended Sheet IPEA/AU" for amendments (noting that Superseded sheets require further steps, as noted below)

If there are any issues with the amendments/rectified sheets on the case file, please contact the PCT Unit (MDB-PCT) for assistance.

Note: 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.

Note: Where the annex consists of replacement sheets which the examiner has found go beyond the disclosure, the examiner will need to email MDB-PCT 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 is also required to enter at Item 3b of the first sheet of the IPRPII the type and number of electronic carriers annexed to the IPRPII. Such electronic carriers will have been furnished subsequently to the filing of the application 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.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	09 Jun 2023
Published for testing	09 Jun 2023
Published for testing	06 Jun 2023

6.3.8.1 Front Page and Notification Application Details

Also in this Chapter:​​​​​​​

Key Legislation: