PCT International Search and Preliminary Examination Guidelines

PART VIII CLERICAL AND ADMINISTRATIVE PROCEDURES

Chapter 22 Clerical and Administrative Procedures

Determination of Competent International Preliminary Examining Authority and Marking of the Demand

22.02 Where the demand is filed with an International Preliminary Examining Authority, it checks the demand to establish whether or not it is a competent Authority to receive the demand. The International Preliminary Examining Authority or Authorities that are competent for the international preliminary examination of international applications filed with a receiving Office are specified by the receiving Office in accordance with the applicable agreements between the relevant Authorities and the International Bureau and are published in the Gazette. The detailed list can be found in Annex C of the PCT Applicant’s Guide. If the determination is positive, the International Preliminary Examining Authority proceeds with the review of the demand as set forth in paragraphs 22.06 et seq. If the determination is negative, the non-competent International Preliminary Examining Authority indelibly marks the date of actual receipt of the demand in the space provided on the last sheet of the demand and transmits the demand, together with any accompanying documents or items, to the International Bureau for further handling and notifies the applicant of that fact. Form PCT/IPEA/436 is used for this purpose. Where the demand is filed with a receiving Office or an International Searching Authority, the Office or Authority follows the same procedure (but using Form PCT/RO/153 or PCT/ISA/234). Where the demand Form or a computer print-out used by the applicant does not comply with Section 102(h) or (i) of the Administrative Instructions, the procedure for correcting defects under paragraphs 22.24 et seq. applies.

Rules 59.3(a), (c), (f)

22.03 The non-competent International Preliminary Examining Authority may, instead, choose to transmit the demand directly to the competent International Preliminary Examining Authority. In such a case, if only one International Preliminary Examining Authority is competent, it transmits the demand to that Authority and notifies the applicant accordingly, using Form PCT/IPEA/436. If two or more International Preliminary Examining Authorities are competent, it must first invite the applicant to indicate, within the time limit applicable under Rule 54bis.1(a), that is, 3 months from the date of transmittal of the international search report or the declaration referred to in Article 17(2)(a), and the written opinion under Rule 43bis.1(a), or 22 months from the priority date, or 15 days from the date of the invitation, whichever is later, to which one of those Authorities the demand should be transmitted (using Form PCT/IPEA/442). If the applicant responds to the invitation, the non-competent International Preliminary Examining Authority promptly transmits the demand to the competent Authority specified by the applicant and notifies the applicant accordingly. If the applicant does not respond, or responds after the expiration of the time limit, the non-competent International Preliminary Examining Authority declares that the demand is considered as if it had not been submitted and notifies the applicant accordingly, using Form PCT/IPEA/444. If the demand is filed with the receiving Office, International Searching Authority or International Bureau, that body follows the same procedure specified above for the non-competent International Preliminary Examining Authority, except that the forms used are Forms PCT/RO/153, PCT/ISA/234 and PCT/IB/368, respectively.

22.04 In all the situations outlined in paragraphs 22.02 and 22.03, the non-competent International Preliminary Examining Authority, receiving Office, International Searching Authority or International Bureau refunds to the applicant any fees paid to it.

Rule 59.3(e)

22.05 If the International Preliminary Examining Authority receives the demand transmitted to it, under Rule 59.3, by a receiving Office, an International Searching Authority, the International Bureau or another International Preliminary Examining Authority which is not competent for the international preliminary examination of the international application, the competent International Preliminary Examining Authority considers that the demand was received on its behalf by the Office, Bureau or Authority transmitting on the date marked as the “actual date of receipt” on the last sheet of the demand.