PCT International Search and Preliminary Examination Guidelines
PART V WRITTEN OPINION/INTERNATIONAL PRELIMINARY EXAMINATION REPORT
Chapter 17 Content of Written Opinions and the International Preliminary Examination Report
Cases Where Partial Written Opinion or No Written Opinion to Be Established
17.59 The statement in paragraph 17.09, that the written opinion should cover all the relevant issues, only sets out the general rule. There may be cases when either the Authority is not required to perform an international preliminary examination covering the whole of the international application, or else that it is more efficient to defer some matters until later. These may include:
(i) only inventions which have been searched need be the subject of international preliminary examination (Rule 66.1(e)) and consequently included within the written opinion;
(ii) cases where the international application relates to subject matter on which the International Preliminary Examining Authority is not required to carry out an international preliminary examination;
(iii) cases where the claims lack unity of invention;
(iv) situations in which a fundamental objection arises, for example, it is clear that certain claims lack novelty and that the claims will have to be drastically recast; or
(v) where the written opinion is established by the International Preliminary Examining Authority, the applicant may have submitted substantial amendments which add subject matter which goes beyond the disclosure of the international application as originally filed.
Article 34(4)(b); Rule 66.2(a)(i)
17.60 In the event that the examiner finds that the international application contains subject matter falling within Article 34(4)(a)(i) (that is, subject matter on which the International Authority is not required, under Rule 67 and Rule 43bis.1(b), to carry out examination) or that all the claims of the international application lack compliance with Article 34(4)(a)(ii) (that is, the description, the claims or the drawings are so unclear, or the claims are so inadequately supported by the description that no meaningful opinion can be formed), he indicates this defect or these defects in his first written opinion and does not go into the question, in that opinion, of whether the claimed invention appears to be novel, appears to involve an inventive step and is industrially applicable. (As discussed in Chapter 9, these instances should be rare.) Where any such defect affects only some of the claims, a similar approach is adopted in respect of such claims. These grounds for limiting the scope of the opinion are considered in detail in paragraph 9.17. It should be emphasized that, although the first written opinion is drawn up by the International Searching Authority, according to Rule 43bis.1(b), the conditions which are considered for this purpose are those which would apply to the International Preliminary Examining Authority.
− Written Opinion of the International Searching Authority
17.61 The written opinion of the International Searching Authority should be established for those inventions for which the international search report is established.
17.62 If the applicant does not comply with the invitation to pay the required additional fees, the written opinion of the International Searching Authority is established on the first claimed invention (main invention) and on those inventions for which additional fees have been paid. The examiner indicates which inventions form the basis of the written opinion.
− Written Opinion of the International Preliminary Examining Authority or the International Preliminary Examination Report
17.63 Where the International Searching Authority has already issued an invitation to pay additional international search fees, or where the International Searching Authority could have issued an invitation to pay additional search fees but chose not to, it may be appropriate for the International Preliminary Examining Authority to issue an "Invitation to Restrict or Pay Additional Fees" (Form PCT/IPEA/405).
Article 34(3)(c); Rules 68.4, 68.5
17.64 If the applicant does not comply with the invitation (by not paying the additional fees or by not restricting the claims either sufficiently or at all), the written opinion of the International Preliminary Examining Authority or international preliminary examination report is established on those parts of the international application which relate to what appears to be the first claimed invention (main invention) and the examiner indicates the relevant facts in such report.
17.65 The issues and processes concerning unity of invention, including payment of additional fees under protest, are covered in more detail in Chapter 10.
Dealing with Major Objections First
17.66 In the event that fundamental objections arise, including ones which have been introduced by amendment (only applicable to international preliminary examination), it may be more appropriate to deal with these objections before making a detailed examination; if, for example, the claims need re-casting, it may be pointless to raise objections to the clarity of some dependent claims or to a passage in the description which may have to be amended or even deleted as a consequence. However, if there are other major objections, these should be dealt with. The examiner should, at the first written opinion stage, seek to make the maximum impact with the broad aim of providing a useful international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty) if the applicant does not demand international preliminary examination and bringing proceedings to a conclusion without any undue delay in order to meet the relevant time limits if international preliminary examination is demanded (see paragraphs 19.07 to 19.10).