PCT International Search and Preliminary Examination Guidelines

PART I INTRODUCTION AND OVERVIEW

Chapter 3 Overview of the International Preliminary Examination Stage

Preliminary Matters

Filing of Demand

Article 31(6); Rule 54bis

3.07 The applicant should file the demand with the competent International Preliminary Examining Authority before the expiration of the later of the following time limits:

(a) three months from the date of transmittal to the applicant of the international search report or the declaration referred to in Article 17(2)(a), and the written opinion established under Rule 43bis.1; or

(b) 22 months from the priority date of the international application.

3.08 For transitional purposes, applicants should note that they must file the demand within 19 months of the priority date if they wish to gain the benefit of a 30-month international phase for the purposes of certain States which have made reservations with respect to modifications to Article 22(1), which came into force for most States on April 1, 2002. The States which notified a reservation in respect of this modification were published in PCT Gazette No. 08/2002, February 21, 2002. Subsequent withdrawals are also published in the PCT Gazette. Information may be obtained from the WIPO web site at www.wipo.int/pct.

Checking of Demand and Notification of Receipt

Rules 54bis, 59, 60, 61

3.09 The International Preliminary Examining Authority checks to ensure that it is competent to act as Authority for that application and that the demand is in the correct form and language, and was filed within the time limits specified in paragraph 3.07. If the Authority is not competent, it transmits the demand to the International Bureau; if there are any defects, the applicant is invited to correct them; if the demand was filed after the expiration of the period set in paragraph 3.07, it is considered not to have been made, and the International Preliminary Examining Authority so informs the applicant. If the demand is in order, the Authority indicates the date of receipt on the demand, transmits a copy to the International Bureau and notifies the applicant of receipt of the demand. These procedures are set out in detail in Chapter 18.

Rule 62

3.10 The International Bureau will then send the International Preliminary Examining Authority:

(a) a copy of the written opinion established by the International Searching Authority, unless the national Office or intergovernmental organization that acted as International Searching Authority is also acting as International Preliminary Examining Authority; and

(b) a copy of any amendments filed under Article 19 and any statement explaining the amendments and any impact that they might have on the description and drawings, unless the Authority has indicated that it has already received these.

Rule 62bis.1

3.11 If the written opinion of the International Searching Authority was not established in English or a language accepted by the International Preliminary Examining Authority, that Authority may request the International Bureau to translate the opinion into English. The translation is established within two months and copies sent to both to the International Preliminary Examining Authority and to the applicant, who may make written comments on the correctness of the translation and send them to the International Bureau and the International Preliminary Examining Authority.

Article 31(7); Rule 61

3.12 Upon receipt of the demand from the International Preliminary Examining Authority, the International Bureau also notifies elected Offices of their election and publishes information on the demand in the Gazette, though this does not occur prior to publication of the international application.

Commencement of International Preliminary Examination

Rule 69.1

3.13 The International Preliminary Examining Authority normally starts the international preliminary examination (see Chapter 19) 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.

3.14 The exceptions to the above are as follows:

Rule 69.1(c)

(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 before it has received a copy of the amendments concerned.

Rule 69.1(e)

(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 before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1(g) (see paragraph 18.04) has expired, whichever occurs first.

Rule 69.1(b), (d)

(c) If the national Office or intergovernmental organization that acts as International Searching Authority also acts as International Preliminary Examining Authority in respect of an application, the international preliminary examination may, if that national Office or intergovernmental 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 applicant has not indicated (under Rule 53.9(b)) in the statement of amendments that the 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).

(d) Where the statement concerning amendments contains such an indication that the start of the international preliminary examination is to be postponed, the International Preliminary Examining Authority does not start the international preliminary examination until whichever of the following occurs first:

(i) it receives a copy of any amendments made under Article 19;

(ii) it receives a notice from the applicant that he does not wish to make amendments under Article 19; or

(iii) the time limit under Rule 46.1 for filing Article 19 amendments expires.

Rules 69.1(a)

(e) 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 applicable time limit under Rule 54bis.1(a) (namely, until the expiration of the time limit for making a demand), unless Rule 69.1(b) applies, the International Preliminary Examining Authority does not start the international preliminary examination until the expiration of the said time limit.

3.15 As soon as examination is to begin, the international application is sent to an examiner, who is responsible for establishing the international preliminary examination report. Where the International Searching Authority which carried out the search and the International Preliminary Examining Authority are part of the same national Office, the international preliminary examination should preferably be performed by the examiner who was responsible for the international search.