Patent Cooperation Treaty; with Regulations

 

CHAPTER II

INTERNATIONAL PRELIMINARY EXAMINATION

Article 31
Demand for International Preliminary Examination

(1) On the demand of the applicant, his international application shall be
the subject of an international preliminary examination as provided in the
following provisions and the Regulations.

(2)(a) Any applicant who is a resident or national, as defined in the
Regulations, of a Contracting State bound by Chapter II, and whose
international application has been filed with the receiving Office of or
acting for such State, may make a demand for international preliminary
examination.

(b) The Assembly may decide to allow persons entitled to file
international applications to make a demand for international preliminary
examination even if they are residents or nationals of a State not party to
this Treaty or not bound by Chapter II.

(3) The demand for international preliminary examination shall be made
separately from the international application. The demand shall contain the
prescribed particulars and shall be in the prescribed language and form.

(4)(a) The demand shall indicate the Contracting State or States in which
the applicant intends to use the results of the international preliminary
examination (“elected States”). Additional Contracting States may be
elected later. Election may relate only to Contracting States already
designated under Article 4.

(b) Applicants referred to in paragraph (2)(a) may elect any Contracting
State bound by Chapter II. Applicants referred to in paragraph (2)(b) may
elect only such Contracting States bound by Chapter II as have declared
that they are prepared to be elected by such applicants.

(5) The demand shall be subject to the payment of the prescribed fees
within the prescribed time limit.

(6)(a) The demand shall be submitted to the competent International
Preliminary Examining Authority referred to in Article 32.

(b) Any later election shall be submitted to the International Bureau.

(7) Each elected Office shall be notified of its election.

Article 32
The International Preliminary Examining Authority

(1) International preliminary examination shall be carried out by the
International Preliminary Examining Authority.

(2) In the case of demands referred to in Article 31(2)(a), the receiving
Office, and, in the case of demands referred to in Article 31(2)(b), the
Assembly shall, in accordance with the applicable agreement between the
interested International Preliminary Examining Authority or Authorities and
the International Bureau, specify the International Preliminary Examining
Authority or Authorities competent for the preliminary examination.

(3) The provisions of Article 16(3) shall apply, mutatis mutandis, in
respect of International Preliminary Examining Authorities.

Article 33
The International Preliminary Examination

(1) The objective of the international preliminary examination is to
formulate a preliminary and non-binding opinion on the questions whether
the claimed invention appears to be novel, to involve an inventive step (to
be non-obvious), and to be industrially applicable.

(2) For the purposes of the international preliminary examination, a
claimed invention shall be considered novel if it is not anticipated by the
prior art as defined in the Regulations.

(3) For the purposes of the international preliminary examination, a
claimed invention shall be considered to involve an inventive step if,
having regard to the prior art as defined in the Regulations, it is not, at
the prescribed relevant date, obvious to a person skilled in the art.

(4) For the purposes of the international preliminary examination, a
claimed invention shall be considered industrially applicable if, according
to its nature, it can be made or used (in the technological sense) in any
kind of industry. “Industry” shall be understood in its broadest sense, as
in the Paris Convention for the Protection of Industrial Property .

(5) The criteria described above merely serve the purposes of international
preliminary examination. Any Contracting State may apply additional or
different criteria for the purposes of deciding whether, in that State, the
claimed invention is patentable or not.

(6) The international preliminary examination shall take into consideration
all the documents cited in the international search report. It may take
into consideration any additional documents considered to be relevant ln
the particular case.

Article 34
Procedure Before the
International Preliminary Examining Authority

(1) Procedure before the International Preliminary Examining Authority
shall be governed by the provisions of this Treaty, the Regulations, and
the agreement which the International Bureau shall conclude, subject to
this Treaty and the Regulations, with the said Authority.

(2)(a) The applicant shall have a right to communicate orally and in
writing with the International Preliminary Examining Authority.

(b) The applicant shall have a right to amend the claims, the
description, and the drawings, in the prescribed manner and within the
prescribed time limit, before the international preliminary examination
report is established. The amendment shall not go beyond the disclosure in
the international application as filed.

(c) The applicant shall receive at least one written opinion from the
International Preliminary Examining Authority unless such Authority
considers that all of the following conditions are fulfilled:
(i) the invention satisfies the criteria set forth in Article
33(1),
(ii) the international application complies with the requirements of
this Treaty and the Regulations in so far as checked by that
Authority,
(iii) no observations are intended to be made under Article 35(2),
last sentence.

(d) The applicant may respond to the written opinion.

(3)(a) If the International Preliminary Examining Authority considers that
the international application does not comply with the requirement of unity
of invention as set forth in the Regulations, it may invite the applicant,
at his option, to restrict the claims so as to comply with the requirement
or to pay additional fees.

(b) The national law of any elected State may provide that, where the
applicant chooses to restrict the claims under subparagraph (a), those
parts of the international application which, as a consequence of the
restriction, are not to be the subject of international preliminary
examination shall, as far as effects in that State are concerned, be
considered withdrawn unless a special fee is paid by the applicant to the
national Office of that State.

(c) If the applicant does not comply with the invitation referred to in
subparagraph (a) within the prescribed time limit, the International
Preliminary Examining Authority shall establish an international
preliminary examination report on those parts of the international
application which relate to what appears to be the main invention and shall
indicate the relevant facts in the said report. The national law of any
elected State may provide that, where its national Office finds the
invitation of the International Preliminary Examining Authority justified,
those parts of the international application which do not relate to the
main invention shall, as far as effects in that State are concerned, be
considered withdrawn unless a special fee is paid by the applicant to that
Office.

(4)(a) If the International Preliminary Examining Authority considers

(i) that the international application relates to a subject matter
on which the International Preliminary Examining Authority is
not required, under the Regulations, to carry out an
international preliminary examination, and in the particular
case decides not to carry out such examination, or
(ii) that 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
novelty, inventive step (non-obviousness), or industrial
applicability, of the claimed invention, the said Authority
shall not go into the questions referred to in Article 33(1)
and shall inform the applicant of this opinion and the reasons
therefor.

(b) If any of the situations referred to in subparagraph (a) is found to
exist in, or in connection with, certain claims only, the provisions of
that subparagraph shall apply only to the said claims.

Article 35
The International Preliminary Examination Report

(1) The international preliminary examination report shall be established
within the prescribed time limit and in the prescribed form.

(2) The international preliminary examination report shall not contain any
statement on the question whether the claimed invention is or seems to be
patentable or unpatentable according to any national law. It shall state,
subject to the provisions of paragraph (3), in relation to each claim,
whether the claim appears to satisfy the criteria of novelty, inventive
step (non-obviousness), and industrial applicability, as defined for the
purposes of the international preliminary examination in Article 33(1) to
(4). The statement shall be accompanied by the citation of the documents
believed to support the stated conclusion with such explanations as the
circumstances of the case may require. The statement shall also be
accompanied by such other observations as the Regulations provide for.

(3)(a) If, at the time of establishing the international preliminary
examination report, the International Preliminary Examining Authority
considers that any of the situations referred to in Article 34(4)(a)
exists, that report shall state this opinion and the reasons therefor. It
shall not contain any statement as provided in paragraph (2).

(b) If a situation under Article 34(4)(b) is found to exist, the
international preliminary examination report shall, in relation to the
claims in question, contain the statement as provided in subparagraph (a),
whereas, in relation to the other claims, it shall contain the statement as
provided in paragraph (2).

Article 36
Transmittal, Translation, and Communication,
of the International Preliminary Examination Report

(1) The international preliminary examination report, together with the
prescribed annexes, shall be transmitted to the applicant and to the
International Bureau.

(2)(a) The international preliminary examination report and its annexes
shall be translated into the prescribed languages.

(b) Any translation of the said report shall be prepared by or under the
responsibility of the International Bureau, whereas any translation of the
said annexes shall be prepared by the applicant.

(3)(a) The international preliminary examination report, together with its
translation (as prescribed) and its annexes (in the original language),
shall be communicated by the International Bureau to each elected Office.

(b) The prescribed translation of the annexes shall be transmitted
within the prescribed time limit by the applicant to the elected Offices.

(4) The provisions of Article 20(3) shall apply, mutatis mutandis, to
copies of any document which is cited in the international preliminary
examination report and which was not cited in the international search
report.

 

Author: international

Mentioned in these Entries

Paris Convention for the Protection of Industrial Property, Patent Cooperation Treaty; with Regulations.