6.3.9.3 General Notes on Form Completion

Date Published

Key Legislation:

Administrative Instructions under the PCT:

PCT ISPE Guidelines

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Sheets in forms

The following apply when completing forms:

  • If there is insufficient space in any Box provided, use a Supplemental Box sheet(s).

  • Inapplicable parts of the form are left blank.

    • Blank sheets may be omitted from the opinion but the first, second and sixth sheets, at least, will always be included.

    • Blank portions of the opinion may be shrunk when electronically prepared.

  • RIO will automatically enter a sheet total for the printed version of the opinion.

For more information, see PCT/GL/ISPE/12 at paragraphs 17.10, 17.13, 17.51 et seq, 17.64, 17.67, and 17.68.

Dates on documents

All documents from International Authorities related to the international application must show the date in a specific format. The format includes the Arabic number of the day, the name of the month, and the Arabic number of the year – for example, 02 February 1991. Dual format for dates is not required on any document except the request. See Ad. Inst. 110.

Matters raised in opinions

Matters raised in opinions should be as comprehensive and detailed as possible and to a standard consistent with Australian national examination. For example, the following should be reported under ‘Certain Observations on the International Examination’.

  • Issues relating to the clarity of claims, description, and drawing.

  • Whether the claims are fully supported by the description.

The report will not address any other discretionary matters – for example, multiple dependent claims, and independent claims in the two-part form. See PCT/GL/ISPE/12 at paragraphs 17.35 and 17.50.

Suggestions of possible amendments should be avoided

Explicit (as opposed to implicit) suggestions or recommendations of possible amendments which would avoid a negative statement in the report must not be made. This is because:

  • The very act of doing so may cause the applicant to feel restricted to responding as suggested, thereby denying themselves of other, possibly better, options.

  • The suggestion or recommendation could be wrong.

  • The examiner, for these suggested amendments, takes over the role of an attorney thereby vacating their own role. This results in the public and the applicant being without the services of an objective examiner.

However, it may sometimes be useful, if the examiner suggests in general terms, an acceptable form of amendment. An example is where an applicant is proceeding without professional assistance (such as a patent attorney). If the examiner does suggest amendments, they should make it clear that the suggestion is merely for the assistance of the applicant and that other forms of amendment will be considered. It is always the applicant's prerogative to amend how they think best.

Examiner as the ‘Authorised Officer’

At times the examiner who performs the examination is not the examiner responsible for authorising the case. They should pass the file containing the opinion or report to the responsible examiner for supervision.

If the responsible examiner is satisfied with the opinion or report, then they should indicate their name as ‘Authorised Officer’ and click Submit in RIO to dispatch the documents.

Quality assurance of International Preliminary Examination

Examination sections have prime responsibility for eliminating errors occurring in reports. They must aim to eliminate errors in reports with effective quality assurance procedures.

A preliminary examination checklist is provided at Annex H - IPE Quality Checklist.

Amended Reasons

Amended Reason Date Amended

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