International Search and Preliminary Examination Procedure for PCT International Applications (Part 2)

Continued from the previous article（International Search and Preliminary Examination Procedure for PCT International Applications (Part 1)）

2、 International application for the international stage

（1） According to the amendment of Article 19 of the treaty

1. After receiving the international search report, there is one opportunity to modify the claims

2. Submit directly to the International Bureau

3. Submission deadline, whichever expires later:

Within 2 months from the date of transmission of the international search report, or 16 months from the priority date

4. Modify file

A complete set of claims replacement pages

You can submit a statement at the same time

Attached is a letter containing the basis for modification and other content (explaining the differences between the replacement page and the replaced page)

5. The modification should not exceed the original disclosure scope of the international application

6. Make international announcements to better determine the scope of temporary protection

（2） According to the amendment of Article 34 of the treaty

1. In the international preliminary examination procedure, modifications can be made to the specification, claims, and drawings

Page replacement of claims: complete set

Excluding abstract

2. To be submitted together with the international preliminary examination requirements or before the preparation of the international preliminary examination report

3. The modification should not exceed the original disclosure scope of the international application

4. Can be modified multiple times (no need to pay again)

3、 International preliminary examination procedure

（1） Basic concepts

1. International preliminary examination requirements

① Why request international preliminary examination

Provide opportunities for modifications to the specification, claims, and drawings

• Can defend against opposing opinions raised by international search authorities

Opportunities for obtaining more favorable evaluations in the international stage

• Obtain international preliminary examination report

② Submit Preliminary Examination Request Form

③ Submit defense opinions and/or modify documents

Submission deadline, whichever expires later:

Three months from the date of transmission of the international search report and written opinions from the international search authority;

22 months from the priority date

④ International preliminary examination requirements or selected withdrawal

2. International preliminary examination unit

① Responsible international preliminary review unit

Currently, when CNIPA serves as the receiving authority and the competent international search unit, only CNIPA

3. International preliminary examination

① Optional Programs

② The purpose is for the international preliminary examination unit to provide preliminary non binding opinions on novelty, creativity, and practicality

③ Related Day: Priority Day

④ Only review the claims related to inventions that have been searched by international search authorities

⑤ Initiate international preliminary review:

International Preliminary Examination Requirements (applicable on or after July 1, 2019)

International search report (or declaration made under Article 17 (2) (a) of the treaty) and written opinion of the international search authority

International preliminary examination fee (CNY 1500) and handling fee (CHF200)

⑥ There is no need to wait until the deadline specified in Rule 54bis. 1 (a) expires

Unless the applicant explicitly requests to postpone the commencement until the expiration of the deadline

⑦ The request letter includes a statement of modifications, and upon receipt of the modified document

4. International Preliminary Examination Report

① Report completion deadline, whichever expires later:

28 months from the priority date; or

6 months after initiating the initial review

② Same standard as the written opinion of the international search authority based on

③ Possible attachments:

The replacement page and its letter modified according to Article 19 of the treaty

The replacement page and its letter modified according to Article 34 of the treaty

• Initial review opinion statement

• Modify the reference page

• Replacement pages and letters for obvious error corrections permitted under Rule 91

（2） Interpretation of main tables

1. Form 401 (International Preliminary Examination Request)

Pay attention to the language used in the requirements document

                       

2. 404 Form (Notice of Corrective Request for Defects)

   

3. Form 405 (Notice of Restriction of Claims or Payment of Additional Fees and Objection Fees when Applicable)

① Applicable standards are the same as those in the international search stage

② Regardless of whether the international search authority raises the issue of unity of invention, the examiner can consider this issue during the international preliminary examination stage

③ The examiner shall consider all documents cited in the international search report and any other relevant documents

4. Form 412 (Notice of Correction Request)

① Obvious Error Correction (Rule 91)

② Obvious errors appearing in the specification, claims, drawings or their supplementary documents, or in modifications made in accordance with Article 19 or 34 of the treaty, and the application is in the international preliminary examination procedure, approved by the international preliminary examination authority

5. 416 Form (Notification of Transmitting International Preliminary Report on Patentability)

6. Form 409 (International Preliminary Patent Examination Report (PCT Chapter II))

                                                                 

Source: Public lecture learning platform of China National Intellectual Property Administration

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