Although relatively little used by applicants, international preliminary examinations make it possible to defend the patentability of an invention following an unfavourable international search report, as Pierre Gauer explains.
As part of the Patent Cooperation Treaty (PCT) system, applicants will receive an international search report and written opinion from the International Search Authority. In the event that this international search report is unfavourable in regards to patentability, the applicant has the option to request an international preliminary examination.
This examination allows the patentability of the invention to be assessed in more depth, by taking into account the documents located during the search. The applicant then has the opportunity to discuss potential issues with the examiner directly, including presenting arguments to defend the patentability of the invention and, potentially, modifying the application before the publication of the international preliminary examination report.
How does the international preliminary examination work?
The international preliminary examination is not a mandatory step in the PCT system for international patent applications, but is instead an option that the applicant is free to exercise.
Essentially, it consists of an evaluation of each claim contained in the international application in order to determine whether they satisfy the criteria for patentability, namely: that the invention is novel, involves an inventive step (is non-obvious), and is industrially applicable (Art. 33(1), PCT).
This assessment is made in the light of the state of the art as mentioned in the research report and, therefore, all documents cited in the search report have to be taken into account during the preliminary examination (Art. 33(6), PCT).
The applicant must request that the preliminary examination is carried out (to WIPO’s International Bureau) and adhere to certain prescribed formalities, including the need to provide all required information.
The examination itself will be carried out by the International Preliminary Examining Authority designated by the receiving Office from those available (Art. 32 of the PCT and 59 of the Rules). At present, the same Authorities that are qualified to conduct international searches are also qualified to undertake preliminary examinations.
How is the international preliminary examination carried out?
If desired, the applicant may amend their claims after receiving a first written opinion setting out the ‘preliminary’ conclusions of the preliminary examination and/or make arguments if they do not agree with these conclusions (Art. 34 of the PCT and 66 of the Rules). Several ‘preliminary’ written opinions and modifications/responses to them can, in principle, be exchanged between the applicant and the preliminary review authority (Rule 66(4)).
The conclusions of the preliminary examination are set out in an international preliminary examination report drawn up in accordance with the prescribed formal and substantive rules (Art. 35 of the PCT and 70 of the Rules). This report consists essentially of an opinion on the conformity of each of the claims of the international application examined as amended. If necessary, short explanations of the conclusions reached may be given. This is an opinion, as the conclusions drawn from the preliminary examination are given for information only.
What are the consequences of international preliminary examination?
Findings as to the novelty, non-obviousness and usefulness of the invention as claimed will not be binding on the patent offices of the member states in which the application will ultimately enter the national phase (Art. 33(1) and (5) of the PCT). Member states will, therefore, always remain free to grant a patent, or not, on the basis of their own examination of the application.
The advantage of preliminary examination, however, is that it allows the applicant to order the text of the application in a centralised manner, in order to avoid having to respond to similar objections multiple times during the national or regional phases in different member states.
For additional information about the PCT system, please speak to your Novagraaf attorney or contact us.
Pierre Gauer, is a European and French Patent Attorney in Novagraaf’s Paris office.