PCT International Search and Preliminary Examination Guidelines
PART VI THE INTERNATIONAL PRELIMINARY EXAMINATION STAGE (OTHER THAN THE INTERNATIONAL PRELIMINARY REPORT)
Chapter 19 Examination Procedure Before The International Preliminary Examining Authority
Start of, and Time Limit for, International Preliminary Examination
19.06 Prior to the start of international preliminary examination of an international application, the applicant must, of course, have filed a demand (Form PCT/IPEA/401) that his international application be made the subject of an international preliminary examination. Chapter 18 gives details of the actions which take place on receipt of the demand before the examiner begins the international preliminary examination itself.
19.07 The International Preliminary Examining Authority normally starts the international preliminary examination when it is in possession of:
(i) the demand;
(ii) the amount due (in full) for the handling fee and the preliminary examination fee, including, where applicable, the late payment fee under Rule 58bis.2;
(iii) if the applicant is required to furnish a translation under Rule 55.2, that translation; and
(iv) either the international search report or the declaration by the International Searching Authority under Article 17(2)(a) that no international search report will be established, and the written opinion established under Rule 43bis.1.
19.08 The exceptions to the above are as follows:
(a) Where the statement concerning amendments contains an indication that amendments under Article 19 are to be taken into account (Rule 53.9(a)(i)), the International Preliminary Examining Authority does not start the international preliminary examination until it receives a copy of the amendments concerned.
(b) Where the statement concerning amendments contains an indication that amendments under Article 34 are submitted with the demand (Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Authority does not start the international preliminary examination until it receives the amendments or the time limit fixed in the invitation referred to in Rule 60.1(g) expires (see paragraph 18.04), whichever occurs first.
Rule 69.1(b) and (d)
(c) If the national Office or intergovernmental organization that acts as International Searching Authority also acts as International Preliminary Examining Authority, the international preliminary examination may, if that Office or organization so wishes, start at the same time as the international search (subject to the possible need to invite the applicant to provide copies of amendments under Article 34, as noted in paragraph (b), above), provided that the applicant has not indicated (under Rule 53.9(b)) in the statement of amendments that examination is to be postponed until after the expiry of the time limit for filing amendments under Article 19 (such amendments only being permitted after the international search report has been received). Where the statement concerning amendments contains such an indication, the International Preliminary Examining Authority does not start the international preliminary examination until it receives a copy of any amendments made under Article 19, or a subsequent notice from the applicant that he does not wish to make amendments under Article 19, or the time limit under Rule 46.1 for filing Article 19 amendments expires, whichever occurs first.
(d) Where the statement concerning amendments contains an indication that the start of the international preliminary examination is to be postponed until the expiration of the time limit for making a demand, unless Rule 69.1(b) applies (see subparagraph (c)), the International Preliminary Examining Authority does not start the international preliminary examination until the expiration of the said time limit. The applicant's purpose of making such an indication may be to ask the International Preliminary Examining Authority to wait for the filing of amendments. Nevertheless, if such an indication has been made, the International Preliminary Examining Authority should not start the international preliminary examination before the expiration of the said time limit regardless of whether it receives any amendments under Article 19 and/or under Article 34 before the expiration of the said time limit.
19.09 Any supplementary international search reports which are transmitted to the Authority in sufficient time should be taken into account for the purpose of a written opinion or international preliminary examination report as if they were a part of the main international search report. On the other hand, supplementary international search reports do not need to be taken into account if they are received by the Authority after it has started to draw up an opinion or report.
Time Limit for Completing Examination
19.10 The time limit for the establishment of the international preliminary examination report is the same for all International Preliminary Examining Authorities and is set out in Rule 69.2. This time limit may not exceed whichever expires last of:
(i) 28 months from the priority date;
(ii) six months from the time period provided under Rule 69.1 for the start of the international preliminary examination; or
(iii) six months from the date of receipt by the International Preliminary Examining Authority of the translation furnished under Rule 55.2.
19.11 If, in case of lack of unity of invention, the time limit cannot be met, the international preliminary examination report must be established promptly after the receipt of additional preliminary examination fees or after the expiration of the time limit for payment of such fees, if no such payment is made.
19.12 Where the International Preliminary Examining Authority is part of the same national Office or intergovernmental organization as the International Searching Authority, the international search and the international preliminary examination may start at the same time. In such a situation, if the application does not comply with Article 34(2)(c), the International Searching Authority will issue a written opinion. Any further written opinions will be issued by the International Preliminary Examining Authority. However, if a positive international preliminary examination report can be issued, the International Preliminary Examining Authority may establish the international preliminary examination report directly without the issuance of a written opinion by the International Searching Authority. See paragraph 19.22.