Nuts and Bolts of International Preliminary Examination and the Demand Thereof

International preliminary examination of an international application may be requested by filing a demand under Chapter II of the PCT to obtain 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.  Examination is chiefly a process through which an applicant gains insight into the patentability of the invention and its likely reception in foreign patent offices.

The international preliminary examination is carried out by an International Preliminary Examining Authority (“IPEA”) carries out the examination and issues an International Preliminary Report on patentability (“IPRP”) which may provide you with some ability to evaluate the chances of obtaining patents in foreign countries before deciding whether to enter the patent offices of those countries.  Because a binding and final decision regarding patentability can only be made by the patent office in the country to which the international application is later sent, the IPRP is preliminary and non-binding, but it can be persuasive.

A demand can only be made if two conditions are met.  They generally are, especially when the international application was filed with a major nation.  First, the applicant must be a resident or national of a contracting state bound by Chapter II of the PCT.  Second, the international application must have been filed with the receiving office of a contracting state bound by Chapter II.  As of September 7, 2012, all contracting states were also bound by Chapter II.

The demand is made separately from the international application and is submitted directly to a competent IPEA.  Where the US was the receiving office, the US and Korean patent offices are  competent IPEAs.  In addition, if the US was the receiving office and the European or Australian patent offices were the search authorities, those patent offices are also competent IPEAs.  The demand automatically elects all contracting states which have been designated (frequently all member states of the PCT).

The demand must be made within the later of two time limits: 1) 3 months from the transmittal date of the International Search Report (“ISR”), or 2) 22 months from the priority date.  Generally, it is advisable to wait until the ISR and Written Opinion are issued before demand is made, so that the applicant can review the ISR and Written Opinion and determine whether it is prudent to file a demand.  The IPRP is then due within 28 months from the priority, or 6 months from the start of the examination (generally when the IPEA has received the demand, payment, and the ISR and Written Opinion), or 6 months from the date on which a translation of the application is submitted to the IPEA, whichever is later.

The applicant can amend the claims, description, and drawings of the international application before the start of the international preliminary examination.  Amendment can also be made during examination, if time permits, before the IPRP is prepared.  Amendments made in this way are identified in the demand as Article 34 amendments, which differ from Article 19 amendments.  Article 19 amendments may have been made previously.

There are two administrative fees associated with the demand.  A preliminary examination fee of 1850 Euros must be paid for the work involved in performing the international preliminary examination and preparation of the IPRP.  A handling fee of 165 Euros must also be paid to cover administrative and internal costs.  As of this writing, that is a total fee of about $2,686.00.  Attorney service fees are also generally required as well.