PCT International Search and Preliminary Examination Guidelines

PART VI THE INTERNATIONAL PRELIMINARY EXAMINATION STAGE (OTHER THAN THE INTERNATIONAL PRELIMINARY REPORT)

Chapter 18 Preliminary Procedure on Receipt of the Demand

Basis for International Preliminary Examination

18.02 Box No. IV of the demand Form is divided into two parts. The first part provides for the statement concerning amendments. The second part provides for the indication of the language for the purposes of international preliminary examination. Details on both parts are given in the following paragraphs.

Statement Concerning Amendments

Rules 53.9, 60.1(f)

18.03 The first part of Box No. IV of the demand Form provides check boxes for the applicant to indicate the basis on which international preliminary examination should start. Where none of the boxes are marked or where the applicant has indicated that the international preliminary examination is to start on the basis of the international application as originally filed, the file is forwarded to the examiner as soon as all formal (including any required translation of the international application and/or of amendments, see paragraphs 22.12 to 22.14) and fee matters are resolved.

Article 34; Rules 60.1(g), 69.1(e); Section 602(a)(i) to (iii), (b)

18.04 Where the international preliminary examination is to take into account amendments under Article 34, but the applicant failed to submit them with the demand, the International Preliminary Examining Authority invites the applicant (Form PCT/IPEA/431) within a reasonable time limit fixed in the invitation to submit the amendments. Whether the amendments are submitted with the demand or subsequently, they are marked in accordance with Section 602(a)(i) to (iii) and (b) of the Administrative Instructions before the file is forwarded to the examiner.

Article 19; Rule 62.1; Section 602

18.05 Where the applicant has marked the appropriate check box in Box No. IV of the demand that amendments under Article 19 and any accompanying statement are to be taken into account, the International Preliminary Examining Authority indicates on the last sheet of the demand whether a copy of such amendments and any accompanying statement was actually submitted with the demand. Where no copy of the amendments under Article 19 was submitted with the demand, examination does not start until a copy of such amendment and any accompanying statement are received from the International Bureau. After the International Bureau receives the demand, it promptly transmits to the International Preliminary Examining Authority the copy of the amendments under Article 19 and any accompanying statement submitted as well as the letter required under Rule 46.5(b). The International Preliminary Examining Authority marks the copy of the amendments submitted with the demand or received later, in accordance with Section 602(a)(i) to (iii) and (b) of the Administrative Instructions before the file is forwarded to the examiner. If no amendments under Article 19 have been made at the time when the demand is received by the International Bureau, the International Preliminary Examining Authority is so informed by the International Bureau. However, any International Preliminary Examining Authority can waive the sending by mail of the information that no Article 19 amendments were received by the International Bureau (Form PCT/IB/337), but instead may opt to receive such information in electronic form.

Article 19; Rules 46.1, 53.9(b), 69.1(d)

18.06 If the same national Office or intergovernmental organization which acts as International Searching Authority is also to act as International Preliminary Examining Authority and wishes to start the international preliminary examination at the same time as the international search in accordance with Rule 69.1(b), but the demand includes a statement that the start of the international preliminary examination is to be postponed under Rule 53.9(b), the International Preliminary Examining Authority waits until it receives a copy of any amendments made under Article 19 or a notice from the applicant that he does not wish to make amendments under Article 19 before beginning the international preliminary examination. Where neither a copy of the amendments nor a notice has reached the International Preliminary Examining Authority by the expiration of 16 months from the priority date or two months from the date of transmittal of the international search report, whichever expires later (the time limit in accordance with Rule 46.1 for filing amendments under Article 19), examination starts on the basis of the documents in the file.

18.06A Where the applicant has marked the check box in Box No. IV, item 4 of the demand requesting that the start of the international preliminary examination be postponed until the expiration of the time limit for making a demand, unless Rule 69.1(b) applies, the International Preliminary Examining Authority waits until the expiration of the time limit before beginning the international preliminary examination.

Language for the Purposes of International Preliminary Examination

Rule 55.2

18.07 The second part of Box No. IV of the demand Form provides for the indication (on the dotted line) of the language in which international preliminary examination is to be carried out; it also provides check boxes to be marked depending on what that language is. That language will be:

Rule 55.2(a)

(i) the language in which the international application was filed (that will be the case in most instances);

Rule 55.2(b)

(ii) the language of a translation furnished for the purposes of the international search (in a case where the language in which the international application was filed is not a language in which the international search is to be carried out);

Rules 48.3(b), 55.2(b)

(iii) the language in which the international application was published (in a case where the language in which the international application was filed and the language in which the international search was carried out are not languages of publication; or

Rule 55.2(a), (a-bis), (b)

(iv) the language of a translation furnished for the purposes of international preliminary examination, provided that that language is a language accepted by the Authority and a language of publication (in a case where neither the language of a translation furnished for the purposes of international search nor the language of publication are languages accepted for the purposes of international preliminary examination). This translation must include any element referred to in Article 11(1)(iii)(d) or (e) furnished by the applicant under Rule 20.3(b), 20.5bis(b), 20.5bis(c) or 20.6(a) and any part of the description, claims or drawings furnished by the applicant under Rule 20.5(b), 20.5(c), 20.5bis(b), 20.5bis(c) or 20.6(a) which is considered to have been contained in the international application under Rule 20.6(b).

18.08 Where none of the check boxes is marked, the file is forwarded to the examiner as soon as it is determined what is the language in which international preliminary examination will be carried out (and when any required translation of the international application and/or of amendment) has been furnished) and when all other formal and fee matters are resolved.

Rules 55.2(c), 55.3(c),(d)

18.09 Where the international preliminary examination is to be carried out on the basis of a translation of the international application and/or of amendments, but the applicant failed to submit them with the demand (including translations of any late filed missing elements or parts of the application - see paragraph 18.07(iv)), the International Preliminary Examining Authority invites the applicant (Form PCT/IPEA/443) to submit the missing items within a reasonable time limit fixed in the invitation. The same applies where a letter required under Rule 66.8(a) or Rule 46.5(b) is not provided in the language of the translation of the application. Whether the sheets containing the translation and/or amendments are submitted with the demand or subsequently, they are marked in accordance with Section 602(a)(i) to (iii) and (b) of the Administrative Instructions before the file is forwarded to the examiner. Furthermore, where a translation filed according to Rule 55.2(a) does not comply with the physical requirements of Rule 11 to an extent necessary for the purposes of international preliminary examination, the International Preliminary Examining Authority will also invite the applicant to provide a correction of that translation. If the applicant fails to comply with an invitation to furnish a translation of an amendment, the amendment shall not be taken into account during international preliminary examination. If the applicant fails to comply with an invitation to furnish an accompanying letter, the amendment need not be taken into account during international preliminary examination.