Regulations under the PCT
Rule 70
International Preliminary Report on Patentability by the International
Preliminary Examining Authority (International Preliminary Examination Report)
For the purposes of this Rule, "report" shall mean international preliminary examination report.
(a) If the claims have been amended, the report shall issue on the claims as amended.
(b) If, pursuant to Rule 66.7(a) or (b), the report is established as if the priority had not been claimed, the report shall so indicate.
(c) If the International Preliminary Examining Authority considers that any amendment goes beyond the disclosure in the international application as filed, the report shall be established as if such amendment had not been made, and the report shall so indicate. It shall also indicate the reasons why it considers that the amendment goes beyond the said disclosure.
(c-bis) If the claims, description or drawings have been amended but the replacement sheet or sheets were not accompanied by a letter indicating the basis for the amendment in the application as filed, as required under Rule 46.5(b)(iii), Rule 46.5(b)(iii) being applicable by virtue of Rule 66.8(c), or Rule 66.8(a), as applicable, the report may be established as if the amendment had not been made, in which case the report shall so indicate.
(d) Where claims relate to inventions in respect of which no international search report has been established and have therefore not been the subject of international preliminary examination, the international preliminary examination report shall so indicate.
(e) If a rectification of an obvious mistake is taken into account under Rule 66.1, the report shall so indicate. If a rectification of an obvious mistake is not taken into account pursuant to Rule 66.4bis, the report shall, if possible, so indicate, 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.
(f) The report shall indicate the date on which a top-up search under Rule 66.1ter was made, or else state that no top-up search was made.
The report shall identify the International Preliminary Examining Authority which established it by indicating the name of such Authority, and the international application by indicating the international application number, the name of the applicant, and the international filing date.
The report shall indicate:
(i) the date on which the demand was submitted, and
(ii) the date of the report; that date shall be the date on which the report is completed.
(a) The report shall repeat the classification given under Rule 43.3 if the International Preliminary Examining Authority agrees with such classification.
(b) Otherwise, the International Preliminary Examining Authority shall indicate in the report the classification, at least according to the International Patent Classification, which it considers correct.
70.6 Statement under Article 35(2)
(a) The statement referred to in Article 35(2) shall consist of the words "YES" or "NO," or their equivalent in the language of the report, or some appropriate sign provided for in the Administrative Instructions, and shall be accompanied by the citations, explanations and observations, if any, referred to in the last sentence of Article 35(2).
(b) If any of the three criteria referred to in Article 35(2) (that is, novelty, inventive step (non-obviousness), industrial applicability) is not satisfied, the statement shall be negative. If, in such a case, any of the criteria, taken separately, is satisfied, the report shall specify the criterion or criteria so satisfied.
70.7 Citations under Article 35(2)
(a) The report shall cite the documents considered to be relevant for supporting the statements made under Article 35(2), whether or not such documents are cited in the international search report. Documents cited in the international search report need only be cited in the report when they are considered by the International Preliminary Examining Authority to be relevant.
(b) The provisions of Rule 43.5(b) and (e) shall apply also to the report.
70.8 Explanations under Article 35(2)
The Administrative Instructions shall contain guidelines for cases in which the explanations referred to in Article 35(2) should or should not be given and the form of such explanations. Such guidelines shall be based on the following principles:
(i) explanations shall be given whenever the statement in relation to any claim is negative;
(ii) explanations shall be given whenever the statement is positive unless the reason for citing any document is easy to imagine on the basis of consultation of the cited document;
(iii) generally, explanations shall be given if the case provided for in the last sentence of Rule 70.6(b) obtains.
Any non-written disclosure referred to in the report by virtue of Rule 64.2 shall be mentioned by indicating its kind, the date on which the written disclosure referring to the non-written disclosure was made available to the public, and the date on which the non-written disclosure occurred in public.
70.10 Certain Published Documents
Any published application or any patent referred to in the report by virtue of Rule 64.3 shall be mentioned as such and shall be accompanied by an indication of its date of publication, of its filing date, and its claimed priority date (if any). In respect of the priority date of any such document, the report may indicate that, in the opinion of the International Preliminary Examining Authority, such date has not been validly claimed.
If, before the International Preliminary Examining Authority, amendments have been made, this fact shall be indicated in the report. Where any amendment has resulted in the cancellation of an entire sheet, this fact shall also be specified in the report.
70.12 Mention of Certain Defects and Other Matters
If the International Preliminary Examining Authority considers that, at the time it prepares the report:
(i) the international application contains any of the defects referred to in Rule 66.2(a)(iii), it shall include this opinion and the reasons therefor in the report;
(ii) the international application calls for any of the observations referred to in Rule 66.2(a)(v), it may include this opinion in the report and, if it does, it shall also indicate in the report the reasons for such opinion;
(iii) any of the situations referred to in Article 34(4) exists, it shall state this opinion and the reasons therefor in the report;
(iv) a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out, it shall so state in the report.
70.13 Remarks Concerning Unity of Invention
If the applicant paid additional fees for the international preliminary examination, or if the international application or the international preliminary examination was restricted under Article 34(3), the report shall so indicate. Furthermore, where the international preliminary examination was carried out on restricted claims (Article 34(3)(a)), or on the main invention only (Article 34(3)(c)), the report shall indicate what parts of the international application were and what parts were not the subject of international preliminary examination. The report shall contain the indications provided for in Rule 68.1, where the International Preliminary Examining Authority chose not to invite the applicant to restrict the claims or to pay additional fees.
The report shall indicate the name of the officer of the International Preliminary Examining Authority responsible for that report.
(a) The physical requirements as to the form of the report shall be prescribed by the Administrative Instructions.
(b) The report shall bear the title "international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)" together with an indication that it is the international preliminary examination report established by the International Preliminary Examining Authority.
(a) The following replacement sheets and letters shall be annexed to the report:
(i) each replacement sheet under Rule 66.8 containing amendments under Article 34 and each letter under Rule 66.8(a), Rule 66.8(b) and Rule 46.5(b) as applicable by virtue of Rule 66.8(c);
(ii) each replacement sheet under Rule 46.5 containing amendments under Article 19 and each letter under Rule 46.5; and
(iii) each replacement sheet under Rule 26.4 as applicable by virtue of Rule 91.2 containing a rectification of an obvious mistake authorized by that Authority under Rule 91.1(b)(iii) and each letter under Rule 26.4 as applicable by virtue of Rule 91.2;
unless any such replacement sheet has been superseded or considered reversed by a later replacement sheet or an amendment resulting in the cancellation of an entire sheet under Rule 66.8(b); and
(iv) where the report contains an indication referred to in Rule 70.2(e), any sheet and letter relating to a rectification of an obvious mistake which is not taken into account pursuant to Rule 66.4bis.
(b) Notwithstanding paragraph (a), each superseded or reversed replacement sheet referred to in that paragraph and any letter referred to in that paragraph relating to such superseded or reversed sheet shall also be annexed to the report where:
(i) the International Preliminary Examining Authority considers that the relevant superseding or reversing amendment goes beyond the disclosure in the international application as filed and the report contains an indication referred to in Rule 70.2(c);
(ii) the relevant superseding or reversing amendment 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 and contains an indication referred to in Rule 70.2(c‑bis).
In such a case, the superseded or reversed replacement sheet shall be marked as provided by the Administrative Instructions.
70.17 Languages of the Report and the Annexes
The report and any annex shall be in the language in which the international application to which they relate is published, or, if the international preliminary examination is carried out, pursuant to Rule 55.2, on the basis of a translation of the international application, in the language of that translation.