WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q: I would like to submit informal comments to the International Bureau following the receipt of the written opinion of the International Searching Authority, but cannot find any information in the PCT Regulations relating to informal comments. Please could you tell me what the time limit for submitting informal comments is, and also whether there is a limit to the number of words contained in the informal comments, as is the case for the statement under PCT Article 19? Will the informal comments be published with the international application? What happens if I later file a demand for international preliminary examination—will the informal comments be sent to the International Preliminary Examining Authority?

A: During the thirty-first session of the Assembly of the PCT Union, which met in September 2002, Regulations under the PCT were adopted concerning the issuance of a new type of written opinion by the International Searching Authority (ISA). The Assembly agreed that no special provision should be included in the Regulations to enable the applicant to comment on the written opinion of the ISA. Any formal response to the written opinion of the ISA would need to be submitted to the International Preliminary Examining Authority (IPEA) under PCT Article 34 as part of the international preliminary examination procedure. However, in the event that a demand for international preliminary examination is not filed, the applicant would be given the opportunity to rebut the written opinion of the ISA by submitting comments on an informal basis to the International Bureau (IB). Such “informal comments” would be subsequently sent to the designated Offices and also be made available to the public on PATENTSCOPE. It is because of the informal nature of such comments that you have not been able to find any information concerning them in the PCT Regulations, although some information is provided in the PCT Applicant’s Guide, International Phase, paragraph 7.030 (https://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf), and some useful background information can be found in the relevant PCT Assembly documents¹.

There is no specific time limit for submitting informal comments; however, the earliest time when you could submit them is after the issuance of the written opinion of the ISA, and it is recommended to submit them before the expiration of 28 months from the priority date, so that they will be available to designated Offices upon entry into the national phase. Any informal comments received after 30 months from the priority date will simply be kept in the file of the IB; they will not be made available on PATENTSCOPE (as is generally the case with any other document submitted to the IB after that time limit), nor will they be transmitted to the designated Offices. During national phase prosecution, if you would like any of the designated Offices to take into account any comments you would like to make on the written opinion of the ISA, you should file them directly with each Office concerned. Note that, as far as the language of informal comments is concerned, it is the practice of the IB to communicate to designated Offices informal comments in any language (and also sometimes in more than one language), and that any designated Office would be free to require a translation of such comments, where appropriate.

Unlike the requirement that the statement relating to amendments to the claims made under PCT Article 19 should contain a maximum of 500 words (PCT Rule 46.4), there is no maximum word count for informal comments. Also, unlike amendments under PCT Article 19, informal comments will not be published with the international application, although they will be made publicly available on PATENTSCOPE (via the “documents” tab) as from the date of international publication². The informal comments will not be sent to the ISA, nor will they be sent to the IPEA if you file a demand.

Please note that informal comments can be uploaded to the IB using the “Upload Documents” function in the ePCT system (https://pct.wipo.int/ePCT). It is recalled that, in order to do this, it is sufficient to create a basic WIPO user account and to use the ePCT public services option, which does not require you to authenticate your user account with a digital certificate. Alternatively, the informal comments can be faxed to: +41 22 338 82 70.

If you do file a demand and would like the IPEA to consider the comments you sent to the IB as informal comments, you would have to re-submit them directly to the IPEA under PCT Article 34, as part of the international preliminary examination procedure (Chapter II). If you do this, in order to avoid confusion, be sure to delete any reference to “informal comments” and include a title to the effect that the comments are a response for the purposes of Chapter II. For information on the formal procedure for submitting responses to written opinions under Chapter II, whereby you can submit one or more amendments or arguments to the IPEA, and have the possibility to communicate orally with the IPEA, see PCT Rule 66.2 to 66.6 and 66.8. If a demand is filed, informal comments will not be forwarded to the designated Offices, however they will still be made available to the public on PATENTSCOPE.

Please be aware that, where applicable, you may be more likely to obtain a stronger patent if you address any issues raised in the written opinion of the ISA by submitting amendments under PCT Article 19 together with a statement under Article 19, and/or by filing a demand and submitting amendments under PCT Article 34. Although submitting Article 19 amendments can be done in addition to submitting informal comments, you should be careful to clearly distinguish between the different types of submission. As was said above, if you wish to submit the content of your informal comments for the purposes of international preliminary examination, you would have to re-submit your comments to the IPEA clarifying that they are for the purposes of Chapter II.

It is recalled that, in the case of international applications filed with the European Patent Office (EPO) as receiving Office claiming priority from an earlier application already searched by the EPO, and where the EPO has been chosen as ISA, it is possible to submit informal comments to the EPO regarding the earlier application together with the international application. Provided the necessary requirements are met, the examiner performing the international search would then take into account those informal comments. This procedure, known as “PCT Direct”, should not be confused with the regular informal comments under the PCT that are discussed above (for further information on PCT Direct, see PCT Newsletter No. 11/2014, page 4).

* Corrigendum of the practical advice published in PCT Newsletter No. 01/2015: Information on submitting informal comments to address issues raised in the written opinion of the International Searching Authority

Reference is made to the “Practical Advice” published in PCT Newsletter No. 01/2015 regarding informal comments on the written opinion of the International Searching Authority (ISA). Please note that, with regard to the receipt by the International Bureau (IB) of informal comments after 30 months from the priority date (see second paragraph of the answer), it was stated that such informal comments would “simply be kept in the file of the IB, and that they would not be made available on PATENTSCOPE (as is generally the case with any other document submitted to the IB after that time limit)”.

Please note that, even though the international phase of an international application ends after 30 months, the informal comments would, nevertheless, be made available on PATENTSCOPE. However, they would be referred to as “Applicant Correspondence” rather than “Informal Comments on Written Opinion of the ISA”. Other documents or papers, for example, requests for recording of a change under PCT Rule 92bis, would also be made available on PATENTSCOPE after that time limit, even if no further action could be taken by the IB on the request itself; where applicable, there would be an indication that the document/paper had been received late.

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1. See PCT/A/31/10 (paragraph 47) and PCT/A/31/6 (paragraphs 22, 23, 25, 28, 30, 31, 35, 43 and 44) at: https://www.wipo.int/meetings/en/details.jsp?meeting_id=4656
2. Prior to the deletion of PCT Rule 44ter on 1 July 2014, written opinions, together with any informal comments submitted by the applicant in response to such opinions, were only available on PATENTSCOPE after the expiration of 30 months from the priority date.