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
Content of the Opinion or Report
Overview of Content
Rules 43bis, 66.1bis, 66.2(a), 70.2(c) and (d)
17.09 Any written opinion should usually cover all matters referred to in Rule 66.2. Such matters may be:
(i) whether any of the situations referred to in Article 34(4) apply (subject matter of the application not required to be examined by the International Preliminary Examining Authority or meaningful opinion on novelty, inventive step or industrial applicability not possible because of lack of clarity or because the claims are not adequately supported by the description),
(ii) an apparent failure to meet the criteria of novelty, inventive step or industrial applicability,
(iii) defects in the form or contents of the international application insofar as checked by that Authority (for example, failure to comply with one or more of the requirements specified in Rules 5 to 11),
(iv) amendments which appear to go beyond the disclosure of the international application as filed or which do not comply with Rule 46.5(b)(iii) or Rule 66.8(a) (see paragraph 17.23) (only applicable for International Preliminary Examining Authority procedures),
(v) an apparent lack of clarity in the claims, the description or the drawings or of support for the claims in the description such as would require some observations to be made in this respect in the international preliminary examination report should such report be established on the basis of the international application without further amendment insofar as checked by that Authority,
(vi) that a claim is directed to an invention on which no international search report has been established, and
(vii) nucleotide and/or amino acid sequence listings not being available in such a form that a meaningful international preliminary examination can be carried out.
17.10 Written opinions are established in a standard format using Form PCT/ISA/237 (for the opinion of an International Searching Authority) or PCT/IPEA/408 (for an opinion of the International Preliminary Examining Authority). International preliminary examination reports (given the title “international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)”) are established using Form PCT/IPEA/409. Apart from the cover sheet, containing generally bibliographic details and any notification of action that the applicant may be invited to take, these follow the same format, including whichever of the following parts are appropriate to the particular international application:
(i) Basis of the opinion or report;
(ii) Priority;
(iii) Non-establishment of opinion with regard to novelty, inventive step and industrial applicability;
(iv) Lack of unity of invention;
(v) Reasoned statement under Rule 66.2(a)(ii) or Article 35(2) with regard to novelty, inventive step or industrial applicability and citations supporting such statement;
(vi) Certain documents cited;
(vii) Certain defects in the international application;
(viii) Certain observations on the international application.
Sheets which have not been filled in (blank sheets) are to be omitted from the opinion or report, and are not to be included in the total number of sheets listed under item 2 of the cover sheet.
17.11 The following data (insofar as set out on the cover sheet of the Form) are first included in accordance with Rules 43bis.1(b), 70.3, 70.4, 70.5 in the written opinion and the international preliminary examination report:
(i) the international application number;
(ii) the name of the applicant;
(iii) the name of the International Authority;
(iv) the international filing date;
(v) the classification of the subject matter, at least according to the International Patent Classification (IPC);
(vi) the claimed priority date;
(vii) the applicant’s or agent’s file reference (composed either of letters or numbers or both, but not exceeding 25 characters).
17.12 The indication of the classification of the subject matter referred to in item (v), above, repeats the classification of the subject matter by the International Searching Authority given under Rule 43.3 if the examiner agrees with such classification, or, if the examiner does not agree with that classification, sets forth the classification which the examiner considers to be correct (see Chapter 7).
Box No. I: Basis of the Written Opinion or Report
Rules 66.2(a)(iv), 70.2(a), (c)
17.13 Since the written opinion of the International Searching Authority is drawn up at the same time as the international search report, it is always established on the basis of the application as filed, or a translation thereof, and subject to the possibility of sequence listings being furnished later for the purposes of international search (see paragraphs 17.15 and 17.21). (See paragraphs 17.16 and 17.16A for a definition of “originally filed sheets.”) However, any written opinion drawn up after rectifications (before the International Searching Authority and International Preliminary Examining Authority) or amendments and/or rectifications (before the International Preliminary Examining Authority) should take these into account and indicate the relevant replacement sheets in the opinion.
17.14 Any amendment submitted must not add subject matter which goes beyond the disclosure of the international application as originally filed (see Chapter 20).
Rules 23.1 (b), 48.3(b), 55.2, 55.3
17.15 With regard to the language, item 1 of Box No. I need not be filled if all the elements of the application (originally filed sheets and amended sheets, if any) were available or furnished to the International Authority in the language in which the international application was filed. Otherwise, an appropriate indication must be checked as to whether the elements were available or furnished to the International Authority in the language which is:
(i) the language of a translation furnished for the purposes of international search (under Rule 23.1(b));
(ii) the language of publication of the international application (under Rule 48.3(b)); or
(iii) the language of the translation furnished for the purposes of international preliminary examination (under Rules 55.2 and/or 55.3).
For further discussions of language, refer to Chapter 18.
− Sheets Deemed to Be Part of the Application as Originally Filed
17.16 Replacement pages or sheets, filed in response to an invitation by the receiving Office to correct defects in the international application, are deemed to be part of the international application “as originally filed”. If the applicant responds to the invitation to correct defects by replacing sheets of the application, these sheets are identified with “SUBSTITUTE SHEET (RULE 26)” stamped on them. Also, replacement pages or sheets for rectification of obvious errors under Rule 91 are deemed to be part of the international application “as originally filed”. These sheets are identified with “RECTIFIED SHEET (RULE 91)”.
17.16A The application may also contain sheets submitted by the applicant after the date on which all of the requirements of Article 11(1) were fulfilled and accepted by the receiving Office after a change of the international filing date, or sheets accepted by the receiving Office under Rule 20.6(b) and marked “INCORPORATED BY REFERENCE (Rule 20.6)”. These sheets are also deemed to be part of the international application “as originally filed”. However, in the case where these sheets are notified to the International Searching Authority after it has begun to draw up the international search report, it may invite the applicant to pay additional fees so that they can be considered for the purpose of the international search (see paragraphs 15.11 to 15.11C). Consequently, if the applicant does not pay the additional fees within the time limit, the written opinion of the International Searching Authority will be based on the international application without taking these sheets into account. A corresponding remark is then made in item 5 “Additional comments” of Box No. I of the written opinion.
17.16B The application may also contain sheets stamped “ERRONEOUSLY FILED (RULE 20.5bis)”. These sheets usually need not be taken into account for examination, except in the case described above (see also paragraph 15.11).
− Examination on Basis of Amended International Application
17.17 Where a written opinion of the International Preliminary Examining Authority or international preliminary examination report is based on the international application as originally filed or furnished, this is noted by checking the first box under item 2 of Box No. I of the relevant Form. Where amendments have been filed, the report indicates the version of each page on which the opinion or report is based.
17.18 Where amendments under Article 19 have been made by the applicant, they should be referred to in Box No. I, item 2 as “claims: Nos. ... as amended under Article 19”. Note that under Article 19 only claims may be amended. These sheets are usually identified by “AMENDED SHEET (ARTICLE 19)”.
17.19 Where amendments under Article 34 have been made by the applicant, these should also be referred to in Box No. I, item 2 as “claims: Nos. ...received by this Authority on.... .”.
17.20 The amendments under Article 34 should indicate the dates on the amendments as the “received on” dates. Superseded amendments are not normally included. However, if a first replacement sheet is acceptable and a second replacement sheet for the same numbered sheet contains subject matter that goes beyond the original disclosure of the application as filed, the second replacement sheet supersedes the first replacement sheet, but both the first and second replacement sheets are attached to the international preliminary examination report along with the accompanying letters as required under Rule 70.16(a). In this case, the superseded replacement sheets are marked “SUPERSEDED REPLACEMENT SHEET (RULE 70.16(b))” in addition to the marks indicating when it was received as an amendment sheet. When the Annexes to the international preliminary examination report contain both final amendments, which are considered to contain subject matter that goes beyond the original disclosure or which are not accompanied by a letter indicating the basis for the amendments in the application as filed, and earlier amendments, which form part of the basis of the report, this fact is noted in the relevant box under item 3.a of the cover sheet to Form PCT/IPEA/409.
− Nucleotide and/or Amino Acid Sequence Listings
17.21 With regard to any nucleotide and/or amino acid sequence listing, one or more of the following indications must be given with respect to the sequence listing on which the examination is based, either in item 3 of Box No. I (for the written opinion of the International Searching Authority) or in item 1 of the Supplemental Box Relating to Sequence Listings (in written opinions of the International Preliminary Examining Authority or the international preliminary examination report):
(a) forming part of the international application as filed;
(b) furnished subsequent to the international filing date for the purposes of international search and/or preliminary examination (in this case, also indicating whether it was accompanied by a statement that the sequence listing does not go beyond the disclosure in the international application as filed); and (in the case of international preliminary examination)
(c) furnished as an amendment under Article 34.
Where a sequence listing is required to be furnished (namely, for any sequence having ten or more specifically defined nucleotides or four or more specifically defined amino acids) but the applicant failed to furnish the sequence listing complying with the relevant standard in an accepted language (see paragraphs 15.12 and 18.18), the check box either under item 4 of Box No. I (for the written opinion of the International Searching Authority) or under item 2 of the Supplemental Box Relating to Sequence Listings (for the written opinion of the International Preliminary Examining Authority or the international preliminary examination report) is used to indicate whether the written opinion or report was established to the extent that a meaningful opinion referred to in Article 33(1) could be formed without such a sequence listing. For further discussions of the nucleotide and/or amino acid sequence listings, refer to Chapter 18.
− Amendments Resulting in Gaps in Numbering
17.22 Where amendments under Article 19 or 34 have been made which result in cancellation or gaps in the numbering sequence of the description pages, claim numbers, and/or drawing sheets, these are detailed in item 3 of Box No. I of the written opinion and/or report.
− Amendments Going Beyond Original Disclosure
17.23 Where amendments have been made which go beyond the original disclosure of the application as filed, the examiner identifies said amended sheet(s) in item 4 of Box No. I of the written opinion of the International Preliminary Examining Authority or the international preliminary examination report. The particular amendments are identified and brief reasons given in a Supplemental Box sheet. These amendments are attached to the international preliminary examination report as Annexes, in addition to any amended sheets which form part of the basis of the report. (See also paragraph 17.20)
17.24 Refer to paragraph 20.11 for further Article 19/34 considerations.
17.25 With regard to top-up searches, the appropriate indication must be given in item 6 of Box No. I of the report with respect to whether a top-up search has been carried out by the International Preliminary Examining Authority. Where it has carried out a top-up search, the examiner also indicates the date on which the top-up search was carried out and whether additional relevant documents have been discovered during the top-up search.
− Amendments Not Accompanied by a Letter to Indicate Their Basis in the Application as Filed
17.26 Where amendments have been made but the replacement sheet or sheets was not accompanied by a letter indicating the basis for the amendment in the application as filed and the report is established as if the amendment had not been made, the examiner identifies said amended sheet(s) in item 4 of Box No. I of the written opinion of the International Preliminary Examining Authority or the international preliminary examination report. These amendments are attached to the international preliminary examination report as Annexes, in addition to any amended sheets which form part of the basis of the report. (See also paragraph 17.20)
− Rectification of Obvious Mistakes
17.27 If a rectification of an obvious mistake is taken into account under Rule 66.1, the report shall so indicate in tem 5 of Box No. 1 of the written opinion of the International Preliminary Examining Authority or the international preliminary examination report. If a rectification of an obvious mistake is not taken into account pursuant to Rule 66.4bis, the report shall, if possible, so indicate in item 5 of Box No. 1 of the written opinion of the International Preliminary Examining Authority or the international preliminary examination report, failing which the International Preliminary Examining Authority shall notify the International Bureau accordingly and the International Bureau shall proceed as provided for in the Administrative Instructions.
17.28 This part of the opinion or report is not relevant if the international application does not claim priority. Furthermore, where priority is claimed, but the citations in the international search report were all published before the earliest priority date, it is not necessary to consider whether the priority claim is valid (see Chapter 6). In either of these cases, this Box should not normally be included in the opinion or report.
17.29 Where one or more citations of the international search report were published after the earliest priority date, the validity of that earliest priority date requires checking (see paragraph 6.03 for formal requirements and paragraph 6.05 for substantive requirements).
(a) Where the priority document is one which is in the records of the International Authority, it should be obtained from those records.
(b) If a copy of the priority document (or a necessary translation) is not available before preparation of the written opinion of the International Searching Authority because it has not yet been provided by the applicant, and if that earlier application was not filed with that Authority in its capacity as a national Office or the priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, the written opinion of the International Searching Authority may be established as if the priority had been validly claimed and this fact is noted in item 1 of Box No. II.
(c) Where the priority document is provided by the applicant in compliance with Rule 17.1 after the preparation of the search report and the written opinion of the International Searching Authority, any written opinion of the International Preliminary Examining Authority and/or the international preliminary examination report should reconsider the validity of the priority claim.
(d) Where the priority document is a foreign document and it is not already in the file, the International Authority may request a copy of the document from the International Bureau and, if necessary, a translation from the applicant. In the meantime, if the outcome of the examination requires the issuing of an opinion, that opinion should be issued without waiting to obtain the priority document and/or the translation (see (b), above, in the case of a written opinion of the International Searching Authority). An appropriate comment should be made under the heading “Additional observations, if necessary:” in Box No. II of the written opinion. If such a copy of the priority document and/or the translation is not available because of non-compliance by the applicant with Rule 17.1 within the relevant time period, and if the priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, any written opinion of the International Preliminary Examining Authority and/or the international preliminary examination report may be established as if the priority had not been claimed and this is indicated in the report.
17.30 Where the right to priority is invalid, item 2 of Box No. II of the written opinion or international preliminary examination report must be completed.
17.31 “Additional observations” in item 3 of Box No. II relate to Priority considerations only and not to clarity, descriptive support, defects or any other consideration relevant to Box No. VIII. Such observations might include the reasons for which a priority claim was considered to be invalid, or else an indication that the priority claim had been checked and was considered to be valid.
Box No. III: Non-Establishment of Opinion with Regard to Novelty, Inventive Step and Industrial Applicability
Article 17(2)(a)(i); Rules 43bis.1, 67
17.32 This part of the opinion or report explains why an opinion as regards novelty, inventive step and industrial applicability may not have been established for some or all of the subject matter of the international application. For example, Rules 43bis.1(b) and 67.1 establish that no International Authority shall be required to examine certain subject matter within an international application, such as mathematical theories, plant or animal varieties and methods for treatment of the human or animal body. The agreements between the International Bureau and the International Preliminary Examining Authorities further qualify this by excepting from exclusion any subject matter which is examined under the relevant national grant procedures. See paragraph 17.60 and Chapter 9 for details of excluded matter. The first two check boxes of Box No. III are used to indicate the extent to which no opinion has been established. In the written opinion of the International Searching Authority, the reasons for not establishing an opinion will usually be identical to the reasons for not establishing an international search and can, for example, be indicated by way of a reference to the full explanation in the international search report (see paragraph 16.28) or in the declaration under Article 17(2)(a) (see paragraph 9.40)).
− Subject Matter Excluded Under Rule 67.1
17.33 Where some or all claims are not examined for novelty, inventive step or industrial applicability because they contain excluded subject matter, this observation is indicated in the third check box of Box No. III of the written opinion or examination report.
17.34 Where 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 on the questions of novelty, inventive step, or industrial applicability of the claimed invention, then the examination may be restricted to those claims, or parts of claims, that are sufficiently clear and supported by the description to enable an opinion or report to be prepared. Where an opinion cannot be established on a claim, the examiner marks the appropriate check box in Box No. III (the 4th and/or the 5th check boxes) and includes observations on lack of clarity and/or support to explain the limitation of the examination.
17.35 The issues of clarity and descriptive support of claims should, as appropriate, be raised separately from considerations of novelty, inventive step and industrial applicability at Box No. VIII of the opinion or report (see Chapter 5 and paragraph 17.50).
− No International Search Made for Some or All Claims
17.36 Where the International Searching Authority has not established an international search report and instead issued a declaration under Article 17 (relating to excluded subject matter, clarity, lack of unity, etc.), the questions of novelty, inventive step and industrial applicability cannot be addressed since there are no documents to consider under Article 33(6), and this is noted using the sixth check box of Box No. III. (Note that this applies even where Article 34 amendments may have overcome considerations under Article 34(4)(a)(ii)).
− Nucleotide and/or Amino Acid Sequence Listings
17.37 A failure to furnish a nucleotide and/or amino acid sequence listing complying with the standard provided for in Annex C of the Administrative Instructions and in an accepted language may preclude any meaningful preliminary examination from being carried out. Refer to Chapter 15 (search stage) and Chapter 18 (examination stage) for discussion of the nucleotide and/or amino acid sequence listings. The Authority should make a meaningful search or preliminary examination to the extent that it is possible, but if some or all claims cannot be examined, the reasons are noted in the final check boxes of Box No. III, and details may be provided in the Supplemental Box if necessary.
Box No. IV: Lack of Unity of Invention
17.38 Irrespective of whether an Invitation to Pay Additional Fees (Form PCT/ISA/206 at the international search stage) or an Invitation to Restrict or Pay Additional Fees (Form PCT/IPEA/405 at the international preliminary examination stage) has been issued (see paragraphs 17.61 and 17.65 and Chapter 10), where unity of invention is lacking, this observation must be included in the first written opinion and, if still applicable, in subsequent opinions and the report.
17.39 If the applicant has paid additional fees before the International Searching Authority or the International Preliminary Examining Authority, or has restricted the claims before the International Preliminary Examining Authority in response to an invitation to do so, or if the applicant has failed to respond to the invitation to pay additional fees or restrict the claims (see paragraphs 10.74 to 10.82), this is also indicated in the opinion or report. The possible indications (some of which are not relevant to the written opinion of the International Searching Authority) are that:
(i) the claims have been restricted before the International Preliminary Examining Authority;
(ii) additional fees have been paid without protest;
(iii) additional fees have been paid by the applicant under protest and, where applicable, the protest fee was paid;
(iv) additional fees have been paid by the applicant under protest but the applicable protest fee was not paid;
(v) the applicant has neither restricted the claims nor paid additional fees;
(vi) the examiner was of the opinion that the international application did not comply with the requirement of unity of invention but decided not to issue an invitation to restrict the claims or pay additional fees.
17.40 In addition, the final item of Box No. IV indicates for which parts of the international application the opinion or report was established, in view of the findings on unity and any restrictions which have been made or additional fees which may have been paid.
− Additional Fees Paid Under Protest
17.41 In the case under Chapter II where the additional fees are paid under protest, the text of the protest, together with the decision thereon, is annexed to the international preliminary examination report if the applicant has so requested (see paragraph 10.80). For the case under Chapter I where additional fees are paid under protest, see paragraphs 10.68 and 10.70.
Box No. V: Reasoned Statement Under Rule 66.2(a)(ii) with Regard to Novelty, Inventive Step or Industrial Applicability; Citations and Explanations Supporting Such Statement
Article 35(2); Rules 43.5(b), 66.2(a)(ii), 70.6(a), (b), 70.7(b), 70.8; Sections 503, 611
17.42 A statement as to whether the claims appear to satisfy the criteria of novelty, inventive step (non-obviousness) and industrial applicability (see paragraph 19.02) is made in item 1 of Box No. V. The examiner makes this statement in relation to each claim which is to be examined, that is, by the words “YES” or “NO,” or their equivalents in the language of the report (in a written opinion of the International Preliminary Examining Authority the examiner may only refer to those which do not appear to satisfy the criteria). Each such statement must be accompanied by relevant citations, explanations and observations, if any (see paragraph 17.09) in item 2 of Box No. V. A statement on all three of the criteria should be made. If a negative statement is made regarding lack of industrial applicability, statements should still be made regarding novelty and inventive step if at all possible. The examiner should always cite documents believed to support any negative statement with respect to any of the claimed subject matter. The citation of these documents is made in accordance with WIPO Standard ST.14.
Rules 43.5(e), 70.7(b); Section 604
17.43 Explanations should clearly indicate, with reference to the cited documents, the reasons supporting the conclusions that any of the said criteria is or is not satisfied. If only certain passages of the cited documents are relevant or particularly relevant, the examiner should identify these, for example, by indicating the page, column or the lines where such passages appear. In the case of a patent document in a language other than English, the examiner should preferably also indicate the corresponding part or passage of the English member of the patent family if such a member is available.
17.44 Further guidance on the novelty considerations, inventive step consideration and industrial applicability considerations are provided in Chapter 12, Chapter 13 and Chapter 14, respectively.
Box No. VI: Certain Documents Cited
17.45 The examiner also mentions, as such, any published application or any patent referred to in the report by virtue of Rule 64.3 and provides for each such published application or patent the following indications:
(i) its date of publication;
(ii) its filing date, and its claimed priority date (if any);
Rule 70.7(b), 70.9; Section 507(a)
17.46 If the examiner has discovered, or the international search report has cited, a relevant document which refers to a non-written disclosure, and the document was only published on or after the relevant date of the international application, he indicates in the written opinion and/or the international preliminary examination report:
(i) the kind of non-written disclosure;
(ii) the date on which the non-written public disclosure occurred;
(iii) the date on which the document was made available to the public.
Rule 70.7(b), 70.10; Section 507(b)
Rule 70.2(b)
17.47 The report may also indicate that, in the opinion of the International Searching Authority or the International Preliminary Examining Authority, the priority date of such published application or patent is not valid).
17.48 Details concerning the manner of indicating certain other special categories of documents which may be cited in the written opinion and/or the international preliminary examination report as well as the manner of indicating the claims to which the documents cited in such report are relevant can be found in Sections 507(c), (d) and (e) of the Administrative Instructions (as set out, for the purposes of the international search report, in paragraphs 16.69, 16.71 and 16.72).
Box No. VII: Certain Defects in the International Application
17.49 If, in the opinion of the examiner, defects exist in the form or contents of the international application (for example, failure to comply with one or more of the requirements specified in Rules 5 to 11), the examiner includes this opinion in Box No. VII of the written opinion and/or examination report and also indicates the reasons therefore (see also paragraphs 17.09, 17.13 and 17.14).
Box No. VIII: Certain Observations on the International Application
17.50 If, in the opinion of the examiner, there are significant and pertinent issues as to the clarity of the claims, the description and the drawings, or the question whether the claims are fully supported by the description, observations should be made to the effect in Box No. VIII of the written opinion and/or examination report. In such a case, the examiner should list the numbers of any relevant claims and indicate the reasons for lack of clarity and/or support. In deciding whether or not to include any observations on these matters, due account should be given to the significance and relevance of the observations in any further processing of the application. In particular, the examiner should take into consideration other amendments that may be necessary to the claims, for example, to overcome any negative statement with regard to novelty, inventive step (non-obviousness) and/or industrial applicability. Observations with regard to issues of clarity and support therefore need not be included when it is highly likely that amendments will have to be made in order to overcome other objections and these amendments would also resolve the clarity and support issues. On the other hand, where an opinion or a report includes a positive statement with regard to novelty, inventive step (non-obviousness) and industrial applicability in respect of all claims, the opinion or report should raise any significant and pertinent matters concerning clarity and support. (See also paragraphs 5.31 to 5.58 and 17.09).
Rules 70.3, 70.4, 70.14; Section 612
17.51 When finalizing the international preliminary examination report, the Authority indicates the date on which the demand for international preliminary examination was submitted, the date on which the report was completed and the name and address of the International Preliminary Examining Authority. These last-mentioned items may either be completed when including the other data or when completing the report. Every written opinion and international preliminary examination report indicates the name of an authorized officer and of the International Authority responsible for that opinion or report.
− Language of the Written Opinion and the International Preliminary Examination Report
17.52 The written opinion and the international preliminary examination report, together with its annexes, if any, are established in the language of publication, or, if the international search and/or the international preliminary examination is carried out on the basis of a translation of the international application, in the language of that translation. An international application filed in Arabic, Chinese, English, French, German, Korean, Japanese, Portuguese, Russian or Spanish is published in that language; an international application filed in any other language is published in the language of a translation into one of these languages.
17.53 For each ground of objection, the first written opinion (in general, this will be the written opinion of the International Searching Authority) should indicate the part of the international application which is deficient and the requirement of the PCT which is not met either by referring to specific Articles or Rules, or by other clear explanation; it should also give the reason for any objection.
17.54 If the cited art is such as to demonstrate lack of novelty or inventive step in the main claim or claims, and if consequently there is lack of unity of invention between dependent claims, if there is enough time, the applicant may be notified of this situation by the International Searching Authority and invited to pay additional search fees (see also paragraphs 10.60 et seq) prior to the international search report and the first written opinion being established. Subsequently, if a demand for international preliminary examination is filed and if, in the opinion of the International Preliminary Examining Authority, any response of the applicant (see paragraph 19.26) does not overcome the objection of lack of unity of invention, the Authority thereafter adopts the procedure described in paragraphs 10.74 to 10.82.
− Ensuring Report Is of Maximal Use for Later Stages
17.55 Substantive matter in the written opinion should normally be set out first. The opinion should be drafted in such a manner as to facilitate further international preliminary examination of the international application should it be amended, and, in particular, to avoid the need for extensive re-reading should the examiner wish to issue one or more additional written opinions during the international preliminary examination (see paragraphs 19.26 to 19.29). Although the examiner is not obliged to do so, he should try to indicate to the applicant those amendments which would avoid a negative statement in the international preliminary examination report if a demand for international preliminary examination is filed. In the case of the written opinion of the International Searching Authority, the report should be set out so that it will be easily used by designated Offices in the event that its content is published as an “international preliminary report on patentability (Chapter I of the Patent Cooperation Treaty)” (see paragraph 2.18).
17.55A A set of standardized clauses has been established for facilitating the preparation of the opinion or report. International Searching and Preliminary Examining Authorities are encouraged to recommend the use of these clauses to examiners in cases where they are appropriate. The examiner should, however, always be free to make appropriate modifications or use alternative text, particularly where this is considered to fit the context better or express an opinion more effectively. The clauses have been established in English and in the languages of International Authorities which have indicated that they will recommend the use of these clauses to their examiners. Modifications to the clauses may be established by the International Bureau following consultation with the International Searching and Preliminary Examining Authorities. Modifications to translations of the clauses may be adopted following consultation between the International Bureau and the Authorities which establish reports in the language concerned.