6.3.9.3 General Notes on Form Completion

Also in this Chapter:

• 6.3.9.1 Article 19 or Article 34(2)(b) Amendments
• 6.3.9.2 Formalities​​​​​​​
• 6.3.9.4 Rule 91 Obvious Mistakes in Documents
• 6.3.9.5 Processing withdrawals of PCTs

Key Legislation:

Administrative Instructions under the PCT:

• s110 Dates

PCT ISPE Guidelines

• para 17.10 Form of Opinion or Report
• para 17.13 Box No. I: Basis of the Written Opinion
• para 17.35 Box No. III: Non-Establishment of Opinion with Regard to Novelty, Inventive Step and Industrial Applicability
• para 17.50 Box No. VIII: Certain Observations on the International Application
• para 17.51 Finalization of the Report
• para 17.64 Lack of Unity of Invention
• para 17.67 Citation of Certain Documents in the International Search Report
• para 17.68 Additional Documents Taken Into Consideration in Certain Cases

Related Chapters:

• Annex H - IPE Quality Checklist

When completing forms [PCT/GL/ISPE/12 at para 17.10, 17.13, 17.51 et seq, 17.64, 17.67, 17.68]:

• 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; when electronically prepared, blank portions of the opinion may be shrunk; RIO will automatically enter a sheet total for the printed version of the opinion.

The date on all documents emanating from International Authorities relating to the international application shall be indicated by the Arabic number of the day, by the name of the month, and by the Arabic number of the year, for example, 02 February 1991. Dual format for dates is not required on any document except the request. [Ad. Inst. 110]

Matters raised in opinions should be as comprehensive and detailed as possible and to a standard consistent with Australian national examination. For example, issues relating to the clarity of claims, description, and drawing or on the question whether the claims are fully supported by the description will be reported under "Certain Observations on the International Examination". The report will not address any other discretionary matters, e.g. multiple dependent claims, and independent claims in the two-part form. [PCT/GL/ISPE/12 at para 17.35, 17.50]

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 to itself other, possibly better, options;

• the suggestion or recommendation could be wrong; and

• 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, for example, where an applicant is proceeding without professional assistance (such as a patent attorney), if the examiner suggests, in general terms, an acceptable form of amendment; but if the examiner does so, 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 it thinks best.

If the examiner who performs the examination is not the responsible examiner then they should pass the opinion/report and file to the responsible examiner for supervision.

If the responsible examiner is satisfied with the opinion/report then they should indicate their name as "Authorised Officer" and click SUBMIT in RIO to dispatch the documents.

Examination sections have prime responsibility for eliminating the 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.