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
First Stage of International Preliminary Examination
General
19.13 The examiner should consider if unity of invention exists. If the examiner finds that lack of unity exists, he may issue an invitation to restrict the claims to a single searched invention or subject to Rule 66.1(e) pay additional fees to examine additional inventions before carrying out a top-up search or the issuance of either a written opinion at the international preliminary examination stage or the international preliminary examination report. See Chapter 10 for further details.
19.14 The international preliminary examination is carried out in accordance with Article 34 and Rule 66. A written opinion will normally have been established on the application by the International Searching Authority. Usually this is considered as the first written opinion of the International Preliminary Examining Authority (see paragraph 3.19 for the exceptions to this). The examiner performing the international preliminary examination, if he has not already done so during the international search, studies the description, the drawings (if any), and the claims of the international application, including any amendments and observations which may have been filed, and the documents describing the prior art as cited in the international search report, as well as any documents cited in a supplementary international search report and/or submitted by third parties (see also paragraph 17.69), where appropriate). The examiner then carries out a top-up search in accordance with Rule 66.1ter unless he considers that such a search would serve no useful purpose. He then determines whether a further written opinion (or a first written opinion in the exceptional case where a written opinion of the International Searching Authority has either not been prepared or else is not treated as the first written opinion of the International Preliminary Examining Authority) is required.
19.15 In general, the examiner should carry out a top-up search during the international preliminary examination process. However, when he considers that a top-up search would serve no useful purpose, he need not carry out such a search. This is the case, for example, when it is decided that the international application, in its entirety, relates to subject matter on which the International Preliminary Examining Authority is not required to carry out an international preliminary examination, or that the international application is so unclear or the claims are so inadequately supported by the description that no meaningful opinion can be formed on the novelty, inventive step, or industrial applicability, of the claimed invention (see paragraph 17.35). The same applies when no international search report has been established for certain claims and it is thus decided not to carry out an international preliminary examination on these claims (see paragraph 17.36). Note, however, that when any of the above situations applies to only part of the claimed subject matter or where there is lack of unity of invention, a top-up search should still be carried out but may be restricted to those parts of the international application that are the subject of international preliminary examination.
19.16 In the case of non-unity where there is more than one invention claimed in the application for which international preliminary examination is demanded, the examiner may first issue an invitation to restrict the claims or pay additional examination fees and then perform the top-up search for all inventions for which preliminary examination fees have been paid, provided that any such inventions are not excluded from international preliminary examination by the examiner under Rule 66.1(e).
19.17 As a general rule, a top-up search will be conducted for all the claims that are the subject of international preliminary examination. In the special case that the application is amended but the basis for the amendments could not be found, and/or there is no letter explaining the basis, and the examiner decides under Rule 70.2(c) or Rule 70.2(c-bis) to establish the report as if the amendments had not been made, the top-up search may be limited to the scope of the claims forming the basis for the report.
19.18 A top-up search is normally carried out at the start of the international preliminary examination. In certain cases, it may be delayed to a later stage before the establishment of the international preliminary examination report.
19.19 The main objective of the top-up search is to discover any relevant documents referred to in Rule 64 which have become available to the International Preliminary Examining Authority for search subsequent to the date on which the international search report was established. The top-up search is primarily directed towards the earlier filed but later published patent applications or patents within the meaning of Rule 64.3. However, it should also be directed to normal prior art (Rule 64.1) or evidence of non-written disclosures (Rule 64.2) with the aim of discovering any such documents which had not been available to the International Searching Authority due to certain circumstances such as a delay in collecting the documents into its database.
19.20 The scope of the top-up search does not normally extend beyond that of the international search. However, the final determination as to the exact scope of the top-up search is left to the examiner.
19.21 It should be noted that no specific search report will be established after a top-up search and that only documents of particular relevance discovered in the top-up search need to be indicated in the international preliminary examination report. If any document discovered in the top-up search is used to support any negative statement with respect to any of the claimed subject matter, it should be cited in Box No. V of the report (see paragraph 17.42), and any newly discovered documents as defined in Rule 64.2 and Rule 64.3 should be cited in Box. No. VI of the report (see paragraphs 17.46 and 17.47).
Cases Where No Written Opinion Is Required
Article 34(2)(c); Rule 69.1(b)
19.22 If the same Authority acts as both the International Searching Authority and the International Preliminary Examining Authority, and a demand has been filed before the written opinion of the International Searching Authority is prepared, no written opinion (see paragraphs 17.01 to 17.08) is required and the examiner may immediately establish the international preliminary examination report if:
(i) the claimed invention satisfies the criteria specified in Article 33(1) (novelty, inventive step and industrial applicability);
(ii) the application complies with the requirements of the PCT as regards the form and contents of the international application;
(iii) the application meets the requirements on the clarity of the claims, the descriptions and the drawings and the claims are fully supported by the description as provided for in Article 35(2) and Rule 70.12(ii) or the examiner does not wish to make any observations thereon (Rule 66.2(a)(v));
(iv) no amendment goes beyond the disclosure in the international application as filed;
(v) all claims relate to an invention in respect of which an international search report is being established and an international preliminary examination report is being established in respect of all the claims; and
(vi) if applicable, a nucleotide and/or amino acid sequence listing is available in such a form that a meaningful international preliminary examination can be carried out.
Furthermore, if the International Preliminary Examining Authority does not treat the written opinion of the International Searching Authority as a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a), it similarly need not prepare a written opinion and may proceed directly to the international preliminary examination report provided that criteria (i) through (vi) above are satisfied.
19.23 A further written opinion is not mandatory where the written opinion of the International Searching Authority is treated as the first written opinion of the International Preliminary Examining Authority. The examiner takes into consideration any comments or amendments made by the applicant when he establishes the international preliminary examination report.
Cases Where a Further Written Opinion May Be Issued
19.24 Assuming that the written opinion of the International Searching Authority is treated as the first written opinion of the International Preliminary Examining Authority, as noted above no further written opinion need be issued before the international preliminary examination report, even if there are objections outstanding. However, where the applicant has made a credible attempt to overcome or rebut the objections in the written opinion of the International Searching Authority, but failed to satisfy the examiner that all the relevant criteria are met, a further written opinion may, at the discretion of the International Preliminary Examining Authority, be issued if there is sufficient time available to establish the international preliminary examination report prior to expiration of the time period set in Rule 69.2 for establishment of the international preliminary examination report. Where the International Preliminary Examining Authority has carried out a top-up search and intends to raise objections based on prior art documents discovered in the top-up search, a further written opinion should be issued.
Claims for Which No International Search Report Has Been Established
19.25 It is to be noted that international preliminary examination can be carried out only on those inventions in respect of which the International Searching Authority has established the international search report. This follows from the requirement in Article 33(6) that the International Preliminary Examining Authority has to take into consideration the documents cited in the international search report (see, however, paragraph 10.73). Claims relating to inventions in respect of which no international search report has been established need not be the subject of international preliminary examination.