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
Further Stage of International Preliminary Examination
Article 34(2)(d); Rule 66.4(a), (b)
19.26 When the applicant has responded to a written opinion, the examiner may, if necessary and if sufficient time remains for the applicant to respond and for the international preliminary examination report to be established (see paragraphs 19.10 and 19.11), issue one or more additional written opinions. Likewise, if the applicant so requests, the examiner may give him one or more additional opportunities to submit amendments or arguments.
19.27 The additional written opinion from the examiner should invite the applicant to submit a written reply together with, where appropriate, amendments. After receipt of this opinion, the applicant may respond by amending the claims, description and drawings or, if he disagrees with the opinion, submit arguments, as the case may be, or do both. The conditions for amendments set out in paragraphs 20.04 to 20.22 apply.
19.28 The examiner should apply the same standard of international preliminary examination in relation to matters of substance at all stages in the processing of the international application. However, after the International Searching Authority has established a first written opinion, he will not normally need to completely re-read the amended application if he has drafted his first written opinion in a comprehensive way (see paragraph 17.55) but he should concentrate on the amendments themselves and any related passages, and on the deficiencies indicated in his first written opinion.
19.29 The examiner should be guided by the overriding principle that an international preliminary examination report should be established after as few written opinions as possible, and he should control the procedure with this always in mind. The PCT provides that the process of communicating with the applicant described in paragraph 19.30 may be repeated if the International Preliminary Examining Authority so wishes. Nevertheless, if it is clear that the applicant is not making any real effort to deal with the examiner's objections, either by amendments or by counter-arguments, then at the conclusion of the first, or second, written opinion stage the examiner should establish the international preliminary examination report (see paragraph 19.47). If the examiner has discovered any relevant documents in a top-up search and intends to raise new objections based on them, he should issue a second written opinion to notify the applicant accordingly. If the examiner determines that the issuance of an additional written opinion would facilitate the final resolution of significant issues, the examiner should consider the issuance of such written opinion. The examiner may consider issuing an additional written opinion, if there are still objections that are required to be met, provided that there is sufficient time available for the establishment of the international preliminary examination report within the time limit set in the treaty, that the applicant is making a real effort to meet the examiner's objection and that the International Preliminary Examining Authority has adequate resources (see paragraphs 19.26 and 20.05). The examiner may also consider whether outstanding issues would best be resolved by a further written opinion, a telephone discussion or an interview.
19.30 If the matters are such that the applicant is likely to require time to consider them, the examiner may wish to issue an additional written opinion. If, however, there seems to be confusion about points in dispute, for example, if the applicant seems to have misunderstood the examiner's reasons, or if the applicant's own argument is not clear, then it may expedite matters if the examiner proposes an interview. On the other hand, if the matters to be resolved are minor, or can quickly and easily be explained and dealt with, then they might be settled more expeditiously by telephone discussion. Discussion with the applicant by interview or telephone is more fully considered in paragraphs 19.41 to 19.46.
19.31 Where a response to a written opinion is received in the form of arguments only, the written opinion is reconsidered in the light of those arguments. Where the response includes some amendments, other than rectification of obvious mistakes (Rule 66.5), the amended description, drawings, and/or claims are considered as in paragraphs 20.04 to 20.22. In such a case the international preliminary examination report should indicate that the applicant's arguments have been taken in account in establishing the international preliminary examination report. In addition, the examiner should comment on any relevant arguments made by the applicant.
19.32 Where the time limit set for response to a further written opinion expires without a response being received, the file is forwarded to the examiner who prepared the opinion, who proceeds to establish the international preliminary examination report as in Chapter 17.
19.33 Where a response is received after the expiration of the time limit and the report has not yet been established, then the response can be considered. But note Rule 66.4bis (amendments, arguments or rectification of obvious mistakes need not be taken into account). See also paragraph 20.05.