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International Preliminary Examination is an optional procedure under Chapter II of the Patent Co-operation Treaty.

It allows for central examination by a selected International Preliminary Examining Authority.

Having fallen into disuse, it is now gaining in popularity once more. We take advantage of the pages of Patent issues to set out some pros and cons of this procedure.
International Preliminary Examination is available up to 22 months after the initial filing or priority date.

If requested, it should be concluded within 8 months, in time for entry into national and regional offices (which fall due 30 or 31 months after initial filing or priority depending on the country).

It is initiated by filing a Demand for examination together with a response to the objections raised in the International Search Report and, if desired, an amendment to the claims or even the description.

When is International Preliminary Examination useful?

• Wide filing program contemplated.

If you are planning to enter the national/regional phase in many countries, International Preliminary Examination is advisable. It allows you to address the Examiner's objections centrally and thus reduces prosecution costs later. All being well, if the Examiner's objections can be largely overcome, the application can enter the national/regional phase with a positive International Preliminary Report on Patentability (Chapter II) and this will smooth its passage through the various national and regional offices. In this scenario, overall costs are reduced.

• Rapid grant required. The International Preliminary Examiner is under a tight timetable. It is likely that the application will be examined by 30 months, and this may accelerate subsequent national processing.

In the EPO, for example, where the EPO itself was the International Preliminary Examination Authority, the patent can promptly proceed to grant or proceed with, at most, only minor editorial amendments. It may also be possible to make use of the results under the various Patent Prosecution Highways, Modified Examination systems and other systems for recognition of examination results to accelerate prosecution.

• Difficult case to present. It allows you an additional opportunity to amend as a matter of right. If you are quick and make the most of the procedure, you can even fit in an interview with the Examiner and/or a second round of amendments in the International Phase before he/she finally draws up the International Preliminary Report on Patentability (Chapter II). Once you enter the national/regional offices, the number of times you can amend is dictated by the rules of those offices.

In the EPO, for example, you are entitled to one more opportunity (although in practice you generally have several). In the US Patent and Trademark Office, you can make a preliminary amendment and one amendment after examination, but thereafter further amendment may require payment of a fee for continuation. Other offices can be quite inflexible and you risk ending up in appeal proceedings.

When is International Preliminary Examination not useful?

• Deferring cost. For many clients, the PCT system is about deferring costs until the national phase deadline. International Preliminary Examination involves bring forward costs that can be postponed. These include examination fees and professional time charges to analyse and address the objections and file an amendment. Where the applicant may drop the case, or is awaiting funding, it is best left.

• Going ahead in few countries. If, say, the EPO is the only office to be selected at the national/regional phase, there is little advantage in bringing forward costs which could be incurred later for the same result.

• Minimising cost. Again where only a few countries are contemplated, International Preliminary Examination may actually add to the costs incurred, as additional material needs translating at national phase entry, and additional amendments may be required in each territory to meet national requirements or specific objections, thus undermining the economic advantages of central amendment.

• Running slow. Not all applicants want to press ahead to grant by the quickest route. Many prefer to watch how the market develops before committing to a particular amendment of the claims. Equally, once an applicant commits to a particular amendment, competitors can begin their design-around efforts. Sometimes it is better to "keep ‘em guessing".

Bearing these points in mind, some strategies can be considered.

First, who should be selected as the Examining Authority? Many applicants choose their home country to examine. But that is likely merely to duplicate work performed on the priority application, and may be ignored by the foreign countries which are the objective of the PCT filing. Some therefore choose, where possible, another patent office, such as the European Patent Office, where the results can be re-used in the national phase in the territory concerned and may also be influential in others.
Who then should handle communications with the Examining Authority? The cheapest solution is for everything to be handled by the originating patent attorney.

But many are unaware that where a foreign patent office is selected, it is possible to authorise a local representative to handle communications with the Examining Authority. Where the case is important, advantages of language, proximity for interviews, and familiarity with local requirements may favour using a proximate attorney firm such as Jenkins in the International Phase, and the overall cost is usually broadly neutral, merely brought forward in time from the subsequent national phase.

Is the timing right? The tight timetable is not to the liking of all patent applicants. Instructions are needed in good time to file a response to the objections along with the Demand for International Preliminary Examination. Also, you should have your subsequent strategy ready, as there may be very little time between receiving the International Preliminary Report on Patentability (Chapter II) and having to proceed with the national/regional phase. In other words, make that strategic decision based on the search report and not on the result of this procedure.
Finally, how much should you put into it? If a half-hearted reply is made to the objections, or the applicant thinks the Examiner is wrong and should back down, there is a risk that the procedure will deliver no benefit.

It is not uncommon that an Examiner will remain firm in his or her objections.

Worse still, you will have to proceed to the national/regional phase in the face of those re-affirmed objections. It may then be more difficult to persuade a national examiner to take a different view.

In our experience, if the Examiner is unmoved, the International Preliminary Report on Patentability Conclusion (Chapter II) may contain very little additional analysis not already set out in the International Search Report. This can be frustrating and a waste of money. Applicants should pick their battles and fight them to win.

Chapter II, if used correctly, thus presents opportunities for cheaper, faster and better patent prosecution to those who know how to play the game. We hope this article will assist our clients in making better use of it.

More Breathing Space for EP(PCT) Applicants but unwanted delay too
From 1 May 2011, the European Patent Office has decided to extend, from 1 month to 6 months, the time period for filing claims or responding to the Written Opinion of the International Searching Authority when commencing European processing of a PCT application. The period for response is triggered by issuing a communication under Rule 161/162 (explained in Autumn 2009
Patent issues).

More breathing space for ex-PCT applicants? Yes, but there's a catch. The EPO have announced that it's not only a maximum time period, but also a minimum delay.

The change assists applicants having to file a response to an international search opinion. It allows more time to formulate appropriate claims and a response strategy after European regional phase entry. But once the Rule 161/162 communication has issued, the 6-month period it establishes cannot be shortened. An early response is not enough to progress the prosecution of the application. The application will not be passed to the Search Division or the Examining Division for action until the full period has elapsed, even if the applicant fulfills all the requirements of Rules 161 and 162 EPC (e.g., by amending the claims, paying fees and/or, where the EPO was the ISA, addressing any issues raised in the international search). This irritating catch was announced in the May Official Journal of the EPO.

We have made enquiries with the EPO and it has been confirmed to us that even formally requesting that the application be sent to the responsible division will not cut short the 6-month period.

Unless the applicant waives the right to receive the Rule 161/162 communication, the supplementary search or examination of a Euro-PCT applications will now start later than was previously the case, and this longer period may cause an undesired delay in prosecution.

Waiving the right to the communication under Rules 161 and 162 EPC

An applicant who wishes to press on with prosecution may choose to waive the right to communication under Rules 161 and 162 EPC. In this case, the application will proceed direct to the Search or Examining Division.
We advise doing so if:

• no substantive response to the Written Opinion is necessary; or
• you are in a position to give us complete instructions (including amendments if necessary) to respond to the Written Opinion in advance of European regional phase entry and we have your instructions to reduce the claims to just 15 (if there are more than that number of claims) or you are content to pay claims fees for any claims in excess of that number.

If you additionally require accelerated examination, we recommend this is explicitly requested on European regional phase entry.