Preliminary Review of Claims in PCT Application
Every PCT application automatically receives a prior art search and a written opinion on the invention’s novelty, inventive step (non-obviousness) and industrial applicability. The International Search Report (ISR) and Written Opinion (WO) are typically established 16 months from the priority date (or 9 months from the PCT application filing date if there is no prior application). The International Searching Authority (ISA) performs the search and opinion.
Responding to International Search Report
If the ISR+WO is unfavorable, the first opportunity to amend the claims is through an Article 19 Amendment, which must be filed within 2 months from the transmittal date of the ISR+WO or 16 months from the priority date, whichever is later. Article 19 allows amendments to the claims only accompanied by a statement explaining the amendments to the claims. Amendments to the description and drawings are not allowed under Article 19. An Article 19 amendment must be filed in the language in which the international application will be published. The statement is limited to 500 words. Article 19 amendments cannot be filed before the ISR is established.
Chapter II Demand
Another option is to file a Chapter II Demand to request the International Preliminary Examination. This is an optional procedure that allows you to amend all parts of the application and submit arguments . A Chapter II Demand must be filed within 3 months from the transmittal date of the ISR and WO, or 22 months from the priority date, whichever is later. The Chapter II Demand is conducted by the International Preliminary Examining Authority (IPEA). The examination does not start before the expiration of the time limit above (3 months from the transmittal date of the ISR and WO, or 22 months from the priority date, whichever is later), unless the applicant requests an earlier start.
If Article 19 amendments are filed before the Chapter II Demand is filed, then the International Bureau (IB) will forward the WO and the Article 19 amendments to the IPEA.
If the Chapter II Demand is already filed before the Article 19 Amendments are filed, you must file the Article 19 Amendments with the IB and the IPEA. In the event that the time limit for filing amendments under PCT Article 19 has not expired and the Demand includes a statement that the start of the international preliminary examination is to be postponed under PCT Rule 53.9(b), the international preliminary examination should not start before the examiner receives a copy of any amendments made under PCT Article 19 or a notice from the applicant that he does not wish to make amendments under PCT Article 19, or before the expiration of 20 months from the priority date, whichever occurs first.
While Article 34 Amendments can be made at the time of the Chapter II Demand or after the filing of the Chapter II Demand, it would be advisable to file any Article 34 Amendments prior to the establishment of the International Preliminary Examination Report (IPER) which is typically issued 28 months from the priority date.
Here’s an exemplary timeline of the PCT process:
|Months from Priority Date||Deadline|
|12||File PCT application|
|16||ISA establishes International Search Report & Written Opinion (ISR+WO)|
|Article 19 Amendment due later of 16 mos. from priority date or 2 mos. from ISR|
|22||Chapter II Demand deadline or later of 3 months from Written Opinion of International Search Authority (WOISA)|
|Article 34 Amendment typically filed with Ch. II Demand to be considered before second opinion (IPER) is issued|
|28||International Preliminary Examination Report (IPER)|
|30||National stage deadline for 30-mo countries|
|31||National stage deadline for 31-mo countries|
Latest posts by Vic Lin (see all)
- Patent drawings: What you need to know - February 27, 2020
- What a USPTO patent examiner really thinks - February 20, 2020
- What are differences between patents and trademarks? - February 18, 2020