The International Preliminary Examination (Optional)
Applicants have the choice between two distinct procedures (PCT Chapter I and PCT Chapter II). If a request for an International Preliminary Examination is filed, the international application will follow the PCT Chapter II procedure (subject to the payment of the prescribed fee). If no IPE is requested, the international application will follow the PCT Chapter I procedure. An International Preliminary Report on Patentability (IPRP) for every application is now established. For Chapter I, this IPRP corresponds to the written opinion by the ISA and for Chapter II, this IPRP corresponds to the report established by the International Preliminary Examining Authority (IPEA). The main difference is that in Chapter I there is no applicant/examiner dialogue or amendments before the IPRP issuance, whereas in Chapter II the dialogue with examiner and amendments are possible before the IPRP issuance. If the applicant does not request an IPE (PCT Chapter II), the International Bureau establishes an IPRP on the basis of the written opinion by the ISA. The IPRP (Chapter I) and any comments by the applicant are sent to designated Offices, and are made publicly available (but not “published” like the international application and the ISR), but not before the expiration of 30 months from the priority date.
Objective of IPRP Chapter II: to formulate a preliminary and non-binding opinion on the question as to whether the claimed invention appears to be novel, to involve an inventive step (to be not obvious), and to be industrially applicable. It does not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable according to any national law.
Who may file a request for an international preliminary examination: the applicant must be a resident or a national of a Contracting State bound by Chapter II of the PCT.
Effect: for Contracting States where the 20-month time limit is still valid, one effect is delaying the national phase until expiration of 30 months from the priority date.
Where to file: the request for an international preliminary examination must be directly submitted to the competent Examining Authority.
When to file: the time limit for filing the demand for an IPE is: 3 months after the issuance of the International Search Report and the written opinion of the ISA (or of the declaration under Article 17.2(a)), or 22 months from the filing date or, if available, the priority date, whichever expires later. The 19-month time limit to file a demand in order to postpone the time limit to enter the national phase from 20 to 30 months continues to apply in respect of States, which have notified the International Bureau that they will not apply the 30-month time limit under Chapter I.
Elected States: the election of the States is automatic and all-inclusive. It is no longer possible to exclude certain States from being elected; however, withdrawals of elections remain possible. It is sufficient that the demand be signed by one applicant but signature of all applicants is needed for withdrawals of demand or election.