Patent Cooperation Treaty; with Regulations

Patent Cooperation Treaty; with Regulations in the United States

RULE 69

TIME LIMIT FOR INTERNATIONAL PRELIMINARY EXAMINATION

69.1 Time Limit for International Preliminary Examination

(a) All agreements concluded with International Preliminary Examining
Authorities shall provide for the same time limit for the establishment of
the international preliminary examination report. This time limit shall not
exceed:

(i) 6 months after the start of the international preliminary
examination,

(ii) in cases where the International Preliminary Examining Authority
issues an invitation to restrict the claims or pay additional fees (Article
34(3)), 8 months after the start of the international preliminary
examination.

(b) International preliminary examination shall start upon receipt, by the
International Preliminary Examining Authority:

(i) under Rule 62.2(a), of the claims as amended under Article 19, or

(ii) under Rule 62.2(b), of a notice from the International Bureau
that no amendments under Article 19 have been filed within the prescribed
time limit or that the applicant has declared that he does not wish to make
such amendments, or

(iii) of a notice, after the international search report is in the
possession of the International Preliminary Examining Authority, from the
applicant expressing the wish that the international preliminary
examination should start and be directed to the claims as specified in such
notice, or

(iv) of a notice of the declaration by the International Searching
Authority that no international search report will be established (Article
17(2)(a)).

(c) If the competent International Preliminary Examining Authority is part
of the same national Office or intergovernmental organization as the
competent International Searching Authority, the international preliminary
examination may, if the International Preliminary Examining Authority so
wishes, start at the same time as the international search, In such a case,
the international preliminary examination report shall be established,
notwithstanding the provisions of paragraph (a), no later than 6 months
after the expiration of the time limit allowed under Article 19 for
amending the claims.

RULE 70

THE INTERNATIONAL PRELIMINARY EXAMINATION REPORT

70.1 Definition

For the purposes of this Rule, “report” shall mean international
preliminary examination report.

70.2 Basis of the Report

(a) If the claims have been amended, the report shall issue on the claims
as amended.

(b) If, pursuant to Rule 66.7(c), the report is established as if the
priority had not been claimed, the report shall so indicate.

(c) If the International Preliminary Examining Authority considers that any
amendment goes beyond the disclosure in the international application as
filed, the report shall be established as if such amendment had not been
made, and the report shall so indicate. It shall also indicate the reasons
why it considers that the amendment goes beyond the said disclosure.

70.3 Identifications

The report shall identify the International Preliminary Examining Authority
which established it by indicating the name of such Authority, and the
international application, by indicating the international application
number, the name of the applicant, the name of the receiving Office, and
the international filing date.

70.4 Dates

The report shall indicate:

(i) the date on which the demand was submitted, and

(ii) the date of the report; that date shall be the date on which the
report is completed.

70.5 Classification

(a) The report shall repeat the classification given under Rule 43.3 if the
International Preliminary Examining Authority agrees with such
classification.

(b) Otherwise, the International Preliminary Examining Authority shall
indicate in the report the classification, at least according to the
International Patent Classification, which it considers correct.

70.6 Statement under Article 35(2)

(a) The statement referred to in Article 35(2) shall consist of the words
“YES” or “NO,” or their equivalent in the language of the report, or some
appropriate sign provided for in the Administrative Instructions, and shall
be accompanied by the citations, explanations and observations, if any,
referred to in the last sentence of Article 35(2).

(b) If any of the three criteria referred to in Article 35(2) (that is,
novelty, inventive step (non-obviousness), industrial applicability) is not
satisfied, the statement shall be negative. If, in such a case, any of the
criteria, taken separately, is satisfied, the report shall specify the
criterion or criteria so satisfied.

70.7 Citations under Article 35(2)

(a) The report shall cite the documents considered to be relevant for
supporting the statements made under Article 35(2).

(b) The provisions of Rule 43.5(b) and (e) shall apply also to the report.

70.8 Explanations under Article 35(2)

The Administrative Instructions shall contain guidelines for cases in which
the explanations referred to in Article 35(2) should or should not be given
and the form of such explanations. Such guidelines shall be based on the
following principles:

(i) explanations shall be given whenever the statement in relation to
any claim is negative;

(ii) explanations shall be given whenever the statement is positive
unless the reason for citing any document is easy to imagine on the basis
of consultation of the cited document;

(iii) generally, explanations shall be given if the case provided for
in the last sentence of Rule 70.6(b) obtains.

70.9 Non-Written Disclosures

Any non-written disclosure referred to in the report by virtue of Rule 64.2
shall be mentioned by indicating its kind, the date on which the written
disclosure referring to the non-written disclosure was made available to
the public, and the date on which the non-written disclosure occurred in
public.

70.10 Certain Published Documents

Any published application or any patent referred to in the report by virtue
of Rule 64.3 shall be mentioned as such and shall be accompanied by an
indication of its date of publication, of its filing date, and its claimed
priority date (if any). In respect of the priority date of any such
document, the report may indicate that, in the opinion of the International
Preliminary Examining Authority, such date has not been validly claimed.

70.11 Mention of Amendments or Correction of Certain Defects

If, before the International Preliminary Examining Authority, amendments or
corrections have been made, this fact shall be indicated in the report.

70.12 Mention of Certain Defects

If the International Preliminary Examining Authority considers that, at the
time it prepares the report:
(i) the international application contains any of the defects
referred to in Rule 66.2(a)(iii), it shall include this opinion and the
reasons therefor in the report;

(ii) the international application calls for any of the observations
referred to in Rule 66.2(a)(v), it may include this opinion in the report
and, if it does, it shall also indicate in the report the reasons for such
opinion.

70.13 Remarks Concerning Unity of Invention

If the applicant paid additional fees for the international preliminary
examination, or if the international application or the international
preliminary examination was restricted under Article 34(3), the report
shall so indicate. Furthermore, where the international preliminary
examination was carried out on restricted claims (Article 34(3)(a)), or on
the main invention only (Article 34(3)(c)), the report shall indicate what
parts of the international application were and what parts were not the
subject of international preliminary examination.

70.14 Signature

The report shall be signed by an authorized officer of the International
Preliminary Examining Authority.

70.15 Form

The physical requirements as to the form of the report shall be prescribed
by the Administrative Instructions.

70.16 Attachment of Corrections and Amendments

If the claims, the description, or the drawings, were amended or any part
of the international application was corrected before the International
Preliminary Examining Authority, each replacement sheet marked as provided
in Rule 66.8(b) shall be attached to the report as an annex thereto.
Replacement sheets superseded by later replacement sheets shall not be
attached. If the amendment is communicated in a letter, a copy of such
letter shall also be annexed to the report.

70.17 Languages of the Report and the Annexes

(a) The report shall be in the language in which the international
application to which it relates is published.

(b) Any annex shall be both in the language in which the international
application to which it relates was filed and also, if it is different, in
the language in which the international application to which it relates is
published.


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