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

Also in this Chapter:

• 6.3.8.1 Front Page and Notification Application Details

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

• 6.3.8.3 Box II Priority​​​​​​​

• 6.3.8.5 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:

Patent Cooperation Treaty (PCT):

• Article 17 Procedure Before the International Searching Authority

• Article 33 The International Preliminary Examination

• Article 34 Procedure Before the International Preliminary Examining Authority 

Administrative Instructions under the PCT:

• Annex C INSTRUCTIONS RELATING TO THE PRESENTATION OF NUCLEOTIDE AND AMINO ACID SEQUENCE LISTINGS IN INTERNATIONAL PATENT APPLICATIONS UNDER THE PCT

Regulations under the PCT:

• Rule 66.2 Written Opinion of the International Preliminary Examining Authority

• Rule 67.1 Definition

PCT ISPE Guidelines

• Paragraph 9.39 Sequence Listings

• Paragraph 16.28-16.29 Restriction of the Subject of the International Search

• Paragraph 17.09 Overview of Content

• Paragraph 17.32-17.37 Box No. III: Non-Establishment of Opinion with Regard to Novelty, Inventive Step and Industrial Applicability

• Paragraph 17.60 Excluded Subject Matter

• Paragraph 18.13 Documents, Etc., for the International Preliminary Examining Authority

• Paragraph 18.18 Nucleotide and/or Amino Acid Sequence Listings

• Paragraph 19.22 Cases Where No Written Opinion Is Required

• Paragraph 19.25 Claims for Which No International Search Report Has Been Established

Related Chapters:

• 6.3.5.1 First IPE Action

• 6.3.8.5 Box IV Unity of Invention

• 6.3.8.8 Box VII Certain Defects

• Annex O

• RIO - Processing PCT Tasks - Box III

On this page

• Introduction

  • Excluded subject matter

• Restriction of opinion due to issues of clarity and support

• Other circumstances of non-establishment of opinion with regard to novelty, inventive step and industrial applicability

  • Declaration under Article 17 issued instead of an ISR established

  • Nucleotide and/or amino acid sequence listing

  • Omnibus claims

Introduction

An International Authority is not required to examine the subject matter of a PCT application to the extent that it is any of items i – vi below (Rule 67.1).

Subject matter specified in Rule 67.1

1. Scientific and mathematical theories

2. Plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes

3. Schemes, rules or methods of doing business performing purely mental acts or playing games

4. Methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods

5. Mere presentations of information

6. Computer programs

However, note that the agreement between WIPO and Australia is such that any subject matter which is examined under national grant procedures is not excluded. For more information, see Article 17(2)(a)(i), Rule 67, and PCT/GL/ISPE/12 paragraph 17.32.

For subject matter under Rule 67.1 which is not excluded under Australian law – for example, methods of treatment of humans, examiners should:

• Disregard Box III (‘Non-establishment of opinion...’) of PCT/ISA/237, PCT/IPEA/408 or PCT/ISA/409.

• Establish the written opinion or IPRPII with regard to novelty, inventive step and industrial applicability in the usual way.

Excluded subject matter

Where excluded subject matter under Australian law has not been claimed, see 6.3.8.5 Box IV Unity of Invention.

Where some or all claims define excluded subject matter, this observation must be included in Box III checkbox 3 of:

• International Search Opinion (ISO) form PCT/ISA/237  

• International Preliminary Examination Opinion (IPEO) form PCT/IPEA/408

• International Preliminary Report on Patentability Chapter 2 (IPRPII) form PCT/IPEA/409.

Additionally, checkbox 6 in Box III of the above forms will need to be checked to record the fact that no international search has been established for the specified claims.

Restriction of opinion due to issues of clarity and support

In the ISO, IPEO and IPRPII forms:

• checkbox 4 in Box III is for instances where the description, claims, or drawings are so unclear that no meaningful opinion can be formed on the questions of novelty, inventive step, or industrial applicability of the claimed invention

• checkbox 5 in Box III is for instances where the claims are so inadequately supported by the description that no meaningful opinion can be formed on the questions of novelty, inventive step, or industrial applicability of the claimed invention.

In these instances, the ISO and IPEO may be restricted to those claims that are sufficiently clear and supported by the description to enable an opinion to be prepared (4th and 5th checkboxes).

For more information see Rule 66.2(a), PCT/GL/ISPE/12 paragraphs 18.13, 18.18, 19.22(vi), 17.09, 17.32, 17.34, and 17.60.

Applicants must be given at least one opportunity to consider these observations before an IPRPII is established (see 6.3.5.1 First IPE Action). The ISO counts as at least one opportunity.

The issues of clarity and descriptive support of claims may be raised separately to considerations of novelty, inventive step and industrial applicability at Box VIII of the written opinion or IPRPII. See 6.3.8.9 Box VIII Certain Observations.

Other circumstances of non-establishment of opinion with regard to novelty, inventive step and industrial applicability

Declaration under Article 17 issued instead of an ISR established

Where the International Search Authority (ISA) has not established an International Search Report (ISR) for all or some of the claims, and instead issued a declaration under Article 17 (relating to excluded subject matter, clarity or full support), the questions of novelty, inventive step and industrial applicability cannot be addressed. This is because there are no documents to consider under Article 33(6), and such reasoning is added to the 'non-establishment' Box of the ISO, IPEO and IPRPII form. Note that this applies even where Article 34 amendments may have overcome consideration under Article 34(4)(a)(ii). See Article 33(6) and PCT/GL/ISPE/12 at paragraph 19.25.

For those claims of the nature described above, the questions of novelty, inventive step and industrial applicability will not be addressed (PCT/GL/ISPE/12 at paragraph 17.60).

Nucleotide and/or amino acid sequence listing

Box III checkbox 7 of the ISO, IPEO and IPRPII form relates to nucleotide and/or amino acid sequence listings. Specifically, if a nucleotide and/or amino acid sequence listing information is not supplied or if the listing does not comply with the Administrative Instructions standards (Annex C), then this will preclude any meaningful search or international preliminary examination from being carried out. 

In addition, checkbox 6 in Box III of the above forms will need to be checked to record the fact that no international search has been established for the specified claims. In the case of a PCT search, checkbox 2 in Box II of the ISR should also be checked. 

See PCT/GL/ISPE/12 at paragraphs 9.39, 16.28-16.29, and 17.37.

Omnibus claims

For instructions on completing Box III in respect of Omnibus claims see 6.3.8.8 Box VII Certain Defects and see Annex O for example.

Note: Examiners should NOT fill out Box III of the ISO, IPEO and IPRP when no international search report has been established due to lack of unity of invention. Instead, item 3 of Box IV of the ISO, IPEO and IPRP is to be filled out in these circumstances – see 6.3.8.5 Box IV Unity of Invention.