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A preliminary examination regarding the PCT international applications

April 2, 2019

Five procedural actions are stipulated in accordance with the Patent Cooperation Treaty (PCT) regarding international applications: filing an application and checking the materials for their compliance with the formal requirements; carrying out an international search and drawing up a search report based on it and the first written message or preparing a declaration on the impossibility of carrying out the international search; carrying out an additional search; carrying out an international preliminary examination; publishing an international application. The majority of the above actions is mandatory, and in accordance with the Patent Cooperation Treaty, there in no need filing separate petitions or applications to carry out them. However, there are also a number of non-mandatory actions, carrying out which is stipulated only if the applicant has filed the relevant petitions. One of such actions is carrying out the international preliminary examination.

After receiving the results of the international search under the Patent Cooperation Treaty, the applicant may file a claim for carrying out the international preliminary examination to use its results in the selected member-states to the Patent Cooperation Treaty, in which he wishes to obtain protection of his technical solution. The purpose of the international preliminary examination is to draw up a preliminary and necessary conclusion on whether the claimed invention is new, whether it complies with an inventive step and whether it can be industrially applicable. However, any contracting state is entitled to apply additional or other criteria to decide whether the claimed invention is patentable in this state.

Along with filing the claim for carrying out the international preliminary examination, the applicant has an opportunity to amend the description, claims and drawings. Such amendments are most often made by the applicant in case of the poor results at the international search stage. In addition to the amendments to the application materials, the applicant has an opportunity to submit his comments regarding the sources of the information identified as a result of the search.

The claim is filed directly to the competent Authority of the International Preliminary Examination. For the Russian applicants, such competent authorities are the Federal Executive Authority on Intellectual Property (ROSPATENT) and the European Patent Office. It should be noted that the European Patent Office carries out the international preliminary examination only for those international applications for which the international search has been carried out at the European Patent Office or at one of the following Offices of: Austria, Spain or Sweden. This means that the European Patent Office will not carry out the international preliminary examination based on the search results prepared by ROSPATENT.

The claim for carrying out the international preliminary examination may be filed within three months from the date of forwarding the international search report or the declaration on the impossibility of carrying out the international search to the applicant, or within twenty two months starting from a priority date, depending on what period expires later.

After receiving the claim for carrying out the international preliminary examination, the international Authority of the Preliminary Examination, within six months from the date of filing the claim or within twenty eight months starting from the priority date, depending on which period expires later, carries out the relevant examination and sends a notification on its results to the applicant.

The international preliminary examination conclusion does not contain any statements on whether the claimed invention is patentable or non-patentable under any national legislation or whether it is represented lake that.

The international preliminary examination has a confidential nature, which means by virtue of Article 38 of the Patent Cooperation Treaty that the International Bureau of the WIPO and the Authority of the International Preliminary Examination do not allow access without any request or consent of the applicant (any means including a personal message and a regular publication, by which third parties can receive the information) to the materials of the international examination at any time, to any person or authority, with the exception of the selected Offices (the national Offices of the states or the national Offices acting on behalf of the states that carry out a final check in accordance with the criteria established by the domestic legislation) after making the international preliminary examination conclusion.

The international preliminary examination is the second phase of the PCT and, together with its first phase (filing the international application and carrying out the international search), it constitutes an international stage of the procedure for considering the application according to the PCT system (the international phase of the PCT).

All amendments will be reflected, when the international application is published. Together with these amendments, in the future, any person will be able to get acquainted with the results of carrying out the international preliminary examination.

 For the applicants, filing the claim for carrying out the international preliminary examination is another opportunity to change the opinion of the international authority regarding the patentability of the offered technical solution. Having received positive results for the international application, at the international phase, the applicant is much more likely to obtain a patent in a foreign country, while reducing preliminary a number of the questions regarding his application.  Also, for some applicants, filing the claim for carrying out the international preliminary examination will increase the period of a transition to the national phases in Luxembourg and Tanzania from 20 months to 30 months starting from the priority date. In order to extend the transition to the national phases in Luxembourg and Tanzania, the claim for carrying out the international preliminary examination should be filed within 19 months starting from the priority date.

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Author of article

Marianna Boykova

Marianna Boykova

Patent Attorney