PCT AG-IP 10.064 What matters concerning the international application may be the subject of comment by the International Preliminary Examining Authority?

Rule 66.2

10.064.   What matters concerning the international application may be the subject of comment by the International Preliminary Examining Authority?  The International Preliminary Examining Authority notifies the applicant in a “written opinion” if it considers that

Article 34(4)(a)(i)
35(3)(a)
Rule 66.2(a)(i)
67

(i)  the international application relates to subject matter on which it is not required to carry out an international preliminary examination, and decides not to carry out such an examination (this situation being the same as the one described in paragraph 7.013 in relation to the international search),

Article 34(4)(a)(ii)
Rule 66.2(a)(i)

(ii)  the description, the claims or the drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness) or industrial applicability of the claimed invention (this situation being the same as the one described in paragraph 7.014 in relation to the international search),

Rule 66.2(a)(ii)

(iii)  the international preliminary report on patentability (Chapter II of the PCT) should be “negative” (see paragraph 10.075) 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 (be non-obvious), or does not appear to be industrially applicable,

Rule 66.2(a)(iv)

(iv)  any amendment goes beyond the disclosure in the international application as filed (see paragraphs 10.070 and 11.047),

Rule 66.2(a)(v)

(v)  the international preliminary report on patentability (Chapter II of the PCT) should be accompanied by (unfavorable) observations on the clarity of the claims, the description and the drawings, or on the question of the claims being fully supported by the description,

Rule 66.2(a)(vi)

(vi)  a claim relates to an invention in respect of which no international search report has been established (see paragraphs 7.013 to 7.021) and the International Preliminary Examining Authority has decided not to carry out the international preliminary examination in respect of that claim,

Rule 66.2(a)(vii)

(vii)  a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out (similarly to paragraph 5.099 in relation to the international search),

Rule 66.2(a)

(viii)  the national law applied by the national Office which acts as the International Preliminary Examining Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the second and third sentences of Rule 6.4(a) (this situation being the same as the one described in paragraphs 5.113 and 7.014 in relation to the international search).

Rule 66.2(a)(iii)

10.065.   The Authority also proceeds as indicated in paragraph 10.064 where it notices some defect in the form or contents of the international application.  Where observance of the unity of invention requirement (see paragraphs 5.114 to 5.123) is in question, see paragraph 10.072.

Source: http://www.wipo.int/pct/en/appguide/text.jsp?page=ip10.html

Date retrieved: 02 November 2015

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