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International preliminary examination is an optional examination procedure that can be requested during the international phase of an international (PCT) patent application. Requesting international preliminary examination is referred to as filing a Chapter II Demand.
As part of the international phase of a PCT application, all applications are subject to search and examination by the chosen International Searching Authority (ISA). Following search and examination, the ISA will issue an International Search Report (ISR) which includes a Written Opinion on the patentability of the claimed invention (i.e. whether the invention is considered novel, involves an inventive step, and is industrially applicable). The Written Opinion is a preliminary non-binding opinion which may be overruled later in the application process (e.g. at the national/regional phase).
Following the initial search and examination by the ISA (and any supplementary international search, if requested), the PCT application may proceed to the national/regional phase without any further international examination (under Chapter I). Alternatively, and by request of the Applicant, the PCT application may undergo international preliminary examination before entering the national/regional phase (under Chapter II).
The figure below highlights the key features of the Chapter I and Chapter II international phase options:
International preliminary examination under Chapter II is an optional examination procedure during the international phase of a PCT application. International preliminary examination provides the Applicant with the opportunity to submit arguments in response to the ISR and Written Opinion, as well as filing amendments to the claims, description and/or drawings.
International preliminary examination is carried out by the International Preliminary Examining Authority (IPEA), which is typically the same as the ISA that issued the ISR and Written Opinion.
The IPEA will review the patentability of the claimed invention, taking into account any arguments and/or amendments submitted by the Applicant when making the request. The IPEA will then issue at least one further Written Opinion to which the Applicant may respond.
Importantly, international preliminary examination allows the Applicant to interact with the Examiner and gives the opportunity to address any objections raised in the ISR and Written Opinion. The outcome of international preliminary examination is then used to draw up an International Preliminary Report on Patentability (IPRP), which is later passed on to the national/regional patent offices for their consideration. Thus, international preliminary examination can be used to generate a positive IPRP, which may help accelerate grant of the application at the national/regional phase.
In contrast, Chapter I (i.e. where no international preliminary examination has been requested) does not provide the Applicant with the opportunity to interact with the Examiner. Under Chapter I, an IPRP is drawn up based on the ISR and Written Opinion (i.e. the ISR and Written Opinion is simply re-issued as the IPRP). However, the Applicant can still provide a voluntary response to the ISR and Written Opinion by submitting comments and/or amendments to the claims only, but these will not be considered by the Examiner during the international phase.
The deadline for filing a Chapter II Demand for international preliminary examination is the later of 22 months from the priority date, or 3 months from issuance of the ISR and Written Opinion.
The request can be made by filing a request form and paying the official fees. Arguments and/or amendments to defend the patentability of the claimed invention should also be submitted when filing the request.
The official fees and costs for preparing arguments and/or claim amendments make this a relatively expensive procedure (several thousands of pounds). Thus, the majority of Applicants choose not to request international preliminary examination and instead wait until the national/regional phase to make any amendments and/or arguments. However, in certain circumstances, requesting international preliminary examination during the international phase may be beneficial, as outlined below.
Before deciding on whether to request international preliminary examination, it is advisable to firstly review the ISR and Written Opinion.
Where a particularly negative ISR and Written Opinion has been issued, international preliminary examination may be useful in order to obtain a more positive IPRP.
A positive IPRP can help speed up the grant of the application in the national/regional phase, and can also be useful commercially to provide an indication of the potential strength of the IP protection (e.g. for investment purposes).
International preliminary examination allows the Applicant to address any issues raised in a negative ISR and Written Opinion in a single, central procedure. This can be more time and cost-effective than filing multiple responses with each national/regional office during the national/regional phase. For the majority of our clients, the European Patent Office is the ISA and so a positive IPRP can result in quick grant of a European Patent at the regional phase. However, this is not always the case. On entry to the national/regional phase, most patent offices will conduct their own examination of the application and will apply their own national laws. Thus, even if a positive IPRP is issued in the international phase, each national/regional office may raise further objections which will need to be addressed during the national/regional phase.
Furthermore, if the Applicant wishes to amend the description and/or drawings during the international phase (not only the claims), this can only be done by requesting international preliminary examination.
In brief, international preliminary examination is particularly helpful if there is a clear route for overcoming any issues raised in the ISR and Written Opinion. However, in most cases, a clear route to achieving an allowable application does not exist and there may be several different approaches to consider. For example, different territories apply different laws and standards for assessing patentability, and so a more tailored approach may be needed for each different territory. In such cases, it is often best to wait until the national/regional phase of the application to make amendments and/or arguments.
Generally, most Applicants choose not to request international preliminary examination and instead await the national/regional phase to make any necessary amendments and/or arguments.
If you would like to discuss the option of requesting international preliminary examination with one of our qualified attorneys, please do not hesitate to contact us.