Patent Cooperation Treaty; with Regulations in the United States

RULE 65

INVENTIVE STEP OR NON-OBVIOUSNESS

65.1 Approach to Prior Art

For the purposes of Article 33(3), the international preliminary
examination shall take into consideration the relation of any particular
claim to the prior art as a whole. It shall take into consideration the
claims’s relation not only to individual documents or parts thereof taken
separately but also its relation to combinations of such documents or parts
of documents, where such combinations are obvious to a person skilled in
the art.

65.2 Relevant Date

For the purposes of Article 33(3), the relevant date for the consideration
of inventive step (non-obviousness) is the date prescribed in Rule 64.1.

RULE 66

PROCEDURE BEFORE THE INTERNATIONAL
PRELIMINARY EXAMINING AUTHORITY
66.1 Basis of the International Preliminary Examination

Before the international preliminary examination starts, the applicant may
make amendments according to Article 34(2)(b) and the international
preliminary examination shall initially be directed to the claims, the
description, and the drawings, as contained in the international
application at the time the international preliminary examination starts.

66.2 First Written Opinion of the International Preliminary Examining
Authority

(a) If the International Preliminary Examining Authority

(i) considers that the international application has any of the
defects described in Article 34(4),

(ii) considers that the international preliminary examination report
should be negative in respect of any of the claims because the invention
claimed therein does not appear to be novel, does not appear to involve an
inventive step (does not appear to be non-obvious), or does not appear to
be industrially applicable,

(iii) notices that there is some defect in the form or contents of
the international application under the Treaty or these Regulations,

(iv) considers that any amendment goes beyond the disclosure in the
international application as filed, or

(v) wishes to accompany the international preliminary examination
report by observations on the clarity of the claims, the description, and
the drawings, or the question whether the claims are fully supported by the
description,

the said Authority shall notify the applicant accordingly in writing.

(b) The notification shall fully state the reasons for the opinion of the
International Preliminary Examining Authority.

(c) The notification shall invite the applicant to submit a written reply
together, where appropriate, with amendments or corrections.

(d) The notification shall fix a time limit for the reply. The time limit
shall be reasonable under the circumstances. It shall normally be 2 months
after the date of notification. In no case shall it be shorter than 1 month
after the said date. It shall be at least 2 months after the said date
where the international search report is transmitted at the same time as
the notification. In no case shall it be more than 3 months after the said
date.

66.3 Formal Response to the International Preliminary Examining Authority

(a) The applicant may respond to the invitation referred to in Rule 66.2(c)
of the International Preliminary Examining Authority by making amendments
or corrections or–if he disagrees with the opinion of that Authority–by
submitting arguments, as the case may be, or do both.

(b) Any response shall be submitted directly to the International
Preliminary Examining Authority.

66.4 Additional Opportunity for Amendment or Correction

(a) If the International Preliminary Examining Authority wishes to issue
one or more additional written opinions, it may do so, and Rules 66.2 and
66.3 shall apply.
(b) On the request of the applicant, the International Preliminary
Examining Authority may give him one or more additional opportunities to
submit amendments or corrections.

66.5 Amendment

Any change, other than the rectification of obvious errors of
transcription, in the claims, the description, or the drawings, including
cancellation of claims, omission of passages in the description, or
omission of certain drawings, shall be considered an amendment.

66.6 Informal Communications with the Applicant

The International Preliminary Examining Authority may, at any time,
communicate informally, over the telephone, in writing, or through personal
interviews, with the applicant. The said Authority shall, at its
discretion, decide whether it wishes to grant more than one personal
interview if so requested by the applicant, or whether it wishes to reply
to any informal written communication from the applicant.

66.7 Priority Document

(a) If the International Preliminary Examining Authority needs a copy of
the application whose priority is claimed in the international application,
the International Bureau shall, on request, promptly furnish such copy,
provided that, where the request is made before the International Bureau
has received the priority document under Rule 17.1(a), the applicant shall
furnish such copy to the International Bureau and directly to the
International Preliminary Examining Authority.

(b) If the application whose priority is claimed is in a language other
than the language or one of the languages of the International Preliminary
Examining Authority, the applicant shall furnish, on invitation, a
translation in the said language or one of the said languages.

(c) The copy to be furnished by the applicant under paragraph (a) and the
translation referred to in paragraph (b) shall be furnished not later than
by the expiration of 2 months from the date of the request or invitation.
If they are not furnished within that time limit, the international
preliminary examination report shall be established as if the priority had
not been claimed.

66.8 Form of Corrections and Amendments

(a) The applicant shall be required to submit a replacement sheet for every
sheet of the international application which, on account of a correction or
amendment, differs from the sheet originally filed. The letter accompanying
the replacement sheets shall draw attention to the differences between the
replaced sheets and the replacement sheets. To the extent that any
amendment results in the cancellation of an entire sheet, that amendment
shall be communicated in a letter.

(b) The International Preliminary Examining Authority shall mark on each
replacement sheet the international application number, the date on which
it was received, and the stamp identifying the said Authority. It shall
keep in its files any replaced sheet, the letter accompanying the
replacement sheet or sheets, and any letter referred to in the last
sentence of paragraph (a).

RULE 67

SUBJECT MATTER UNDER ARTICLE 34(4)(a)(i)

67.1 Definition
No International Preliminary Examining Authority shall be required to carry
out an international preliminary examination on an international
application if, and to the extent to which, its subject matter is any of
the following:

(i) scientific and mathematical theories,

(ii) plant or animal varieties or essentially biological processes
for the production of plants and animals, other than microbiological
processes and the products of such processes,

(iii) schemes, rules or methods of doing business, performing purely
mental acts or playing games,

(iv) methods for treatment of the human or animal body by surgery or
therapy, as well as diagnostic methods,

(v) mere presentations of information,

(vi) computer programs to the extent that the International
Preliminary Examining Authority is not equipped to carry out an
international preliminary examination concerning such programs.

RULE 68

LACK OF UNITY OF INVENTION
(INTERNATIONAL PRELIMINARY EXAMINATION)

68.1 No Invitation to Restrict or Pay

Where the International Preliminary Examining Authority finds that the
requirement of unity of invention is not complied with and chooses not to
invite the applicant to restrict the claims or to pay additional fees, it
shall establish the international preliminary examination report, subject
to Article 34(4)(b), in respect of the entire international application,
but shall indicate, in the said report, that, in its opinion, the
requirement of unity of invention is not fulfilled and shall specify the
reasons for which the international application is not considered as
complying with the requirement of unity of invention.

68.2 Invitation to Restrict or Pay

Where the International Preliminary Examining Authority finds that the
requirement of unity of invention is not complied with and chooses to
invite the applicant, at his option, to restrict the claims or to pay
additional fees, it shall specify at least one possibility of restriction
which, in the opinion of the International Preliminary Examining Authority,
would be in compliance with the applicable requirement, and shall specify
the amount of the additional fees and the reasons for which the
international application is not considered as complying with the
requirement of unity of invention. It shall, at the same time, fix a time
limit, with regard to the circumstances of the case, for complying with the
invitation; such time limit shall not be shorter than 1 month, and it shall
not be longer than 2 months, from the date of the invitation.

68.3 Additional Fees

(a) The amount of the additional fee due for international preliminary
examination under Article 34(3)(a) shall be determined by the competent
International Preliminary Examining Authority.

(b) The additional fee due for international preliminary examination under
Article 34(3)(a) shall be payable direct to the International Preliminary
Examining Authority.
(c) Any applicant may pay the additional fee under protest, that is,
accompanied by a reasoned statement to the effect that the international
application complies with the requirement of unity of invention or that the
amount of the required additional fee is excessive. Such protest shall be
examined by a three-member board or other special instance of the
International Preliminary Examining Authority, or any competent higher
authority, which, to the extent that it finds the protest justified, shall
order the total or partial reimbursement to the applicant of the additional
fee. On the request of the applicant, the text of both the protest and the
decision thereon shall be notified to the elected Offices as an annex to
the international preliminary examination report.

(d) The three-member board, special instance or competent higher authority,
referred to in paragraph (c), shall not comprise any person who made the
decision which is the subject of the protest.

68.4 Procedure in the Case of Insufficient Restriction of the Claim

If the applicant restricts the claims but not sufficiently to comply with
the requirement of unity of invention, the International Preliminary
Examining Authority shall proceed as provided in Article 34(3)(c).

68.5 Main Invention

In case of doubt which invention is the main invention for the purposes of
Article 34(3)(c), the invention first mentioned in the claims shall be
considered the main invention.