GL-PCT E I – I ntroduction Part E contains guidelines for those procedural steps in respect of international applications which may occur at a number of stages in the procedure.

GL-PCT E General

Contents

Chapter II – Observations by third parties

Chapter III – Patent Prosecution Highway (PPH)

GL-PCT C IX 4 Complaint against the findings at the search stage

If the search was restricted and the applicant complains about the findings at the search stage, the complaint will be dealt with by the Complaint Handling Unit at the EPO.[Art. 17(3)(a); Art. 17(2)(a)(i); (ii); ]

In order to ensure that a submission is treated as a complaint, applicants are advised to use the online complaint form and explicitly state that

GL-PCT C IX 3 Request for examination of certain claims only

Applicants sometimes file a request for examination of certain claims only without actually restricting the set of claims, e.g. in order to achieve a positive IPER although the findings for some claims would be negative.

GL-PCT C IX 2 Request for examination of a different set of claims

The filing of different sets of claims for different elected States or of different (main and auxiliary) requests based on different sets of claims is not accepted since examining such claims is both time-consuming and against the intention of the PCT.

GL-PCT C IX 1 Withdrawal of demand under Chapter II

Applicants are entitled to a refund of the whole amount of the international preliminary examination fee if the demand is withdrawn before 30 months from the priority date and on condition that international preliminary examination has not started. If the examiner has actually started to examine the file, no refund will be made. The starting date of international preliminary examination can in most cases be derived from Form PCT/IPEA/409, which in Box I, point 6, indicates the date of the top-up search (Rule 70.2(f)).

GL-PCT C IX – Special requests

1. Withdrawal of demand under Chapter II

2. Request for examination of a different set of claims

3. Request for examination of certain claims only

4. Complaint against the findings at the search stage

GL-PCT C VIII 4 Rectification of the IPER

Since an IPER is a non-binding opinion and not a decision, the PCT provides for neither opposition nor appeal against it. Establishment of the IPER is normally the end of the international phase.

GL-PCT C VIII 3 Positive or negative IPER

As for the WO‑ISA, the examiner needs to indicate whether the IPER is to be considered positive or negative.

GL-PCT C VIII 2.1 Sequence listings

Where no (complete) international search was carried out because the applicant did not file an electronic sequence listing conforming to WIPO Standard ST.25 in response to a request from the ISA or did not pay the late furnishing fee, the IPER will indicate under Section III that the examination is limited according to Rule 13ter.2 to the same extent as the search was limited because the applicant failed to comply with Rule 5.2 (no sequence listing) and/or