International preliminary Examination is an optional part on the applicant for an International application, but all PCT applications nevertheless undergo examination either with or without having examiner interaction with the applicant. The Examiner – applicant interaction occurs only when a Demand is filed under Chapter II of the PCT. Filing of Demand is completely optional.
A Demand is usually filed in response to the written opinion of the ISA (International Search Authority), especially if it is a negative opinion. Thus filing a demand is a way of overcoming the objections raised by the ISA on the patentability to obtain a more favorable or positive International preliminary report on patentability (IPRP).
A Demand shall be filed with the competent International Preliminary Examination Authority (IPEA) in PCT Demand Form (PCT/IPEA/401) along with the amendments or the arguments and the letter accompanying the amendments to support the amendments with the prescribed fees. The Demand may be filed any time before the expiry of 22 months from the priority date, or 3 months from the issuance of the Written Opinion of the International Search Authority, whichever is later.
Further examination will be carried out by the IPEA based on the amendments filed along with the Demand and the IPRP will be provided. The demand filing will be effective for all the ‘election’ states designated during the filing of the International application if not withdrawn. Though not binding on the states, the results of the International Preliminary Examination can be used by these ‘election’ states.
An IPRP will be issued for all PCT applications. If a Demand is not filed, the written opinion of the ISA will again constitute the content of IPRP.
A Demand is filed optionally in response to the written opinion of the ISA especially when the opinion is negative to request for further examination based on the amendments or arguments filed. The filing of Demand helps to reduce the number of objections that may arise during the National/Regional phase at individual patent offices. A clearly written IPRP will give the applicant a good idea of the countries where he may choose to enter during the National/ Regional Phase and also keeps the applicant and the national offices at a far advantageous way during the national procedures.
Thus, if the written opinion of the ISA is positive, the applicant may choose not to file a Demand. But if the written opinion is negative, it is better to demand further examination where the examiner reconsiders the written opinion of the ISA in view of the amendments filed with the demand.
You can download the PCT international search and preliminary examination guidelines as effective from October 1, 2015, here.
Authored by Bency Varghese
Contributed by Portfolio team of BananaIP
For more info, write to [email protected]