Patent Proceedings at International Stage: PCT Chapter I and PCT Chapter II

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The international (PCT) patent application plays the role of an international patent application for a certain period of time or until national phase entry in each of the national countries. The PCT patent application does not result in a grant of a patent, however, the applicant or inventor can prosecute the PCT patent application with International search authority (ISA) and/or International Preliminary Examination Authority (IPEA) during the international stage to obtain a preliminary and non-binding opinion on patentability requirements of the invention. There are two proceedings at the PCT stage, PCT Chapter I, and PCT Chapter II.

PCT Chapter I

Chapter I of the PCT begins with filing a PCT patent application. By default, the PCT patent application is subjected to an automatic search and examination process. The ISA conducts examination and issues the international search report (ISR) along with a written opinion of ISA (WOISA) usually within 16 months from the date of filing of the priority application. After receiving the ISR/WOISA, the applicant or inventor can optionally file claim amendments within 2 months from the date of the ISR or within 16 months from the priority date, whichever time limit expires later. The informal comments to the WOISA can be submitted only during the international phase, preferably before the expiry of 28 months from the priority date.

The PCT patent application will be published with the amended claims set,  if any along with ISR. The informal comments if any will be transmitted to each of the Designated Offices by the International Bureau (IB). Under PCT Chapter I, the WOISA of the PCT patent application will be reissued as an International Preliminary Report on Patentability (IPRP), referred as Chapter I IPRP.

Under Chapter I of the PCT, ISAexamines and issues the preliminary and non-binding opinion,IPRP (Chapter I)on patentability requirements of the PCT patent application without interaction between the applicant/inventor and the Examiner. The IPRP-Chapter I along with the informal comments will be made available to the public by the International Bureauupon expiration of 30 months from the priority date of the PCT patent application.

PCT Chapter II

Under PCT Chapter II, the applicant can file a demand for the international preliminary examination. The deadline for filing the Demand is 3 months from the date of mailing of the International Search Report and Written Opinion of International Search Authority, or 22 months from the priority date, whichever expires later. The claim amendments, amendments to drawings, description, and/or arguments addressing the objections raised in the Written Opinion of International Search Authority must be filed by the same deadline, and are generally filed at the time of the Demand filing.

Under Chapter II demand, the IPEA reconsiders Written Opinion of International Search Authority based on the amendments and/or arguments filed by the applicant or inventor. If the Examiner finds that the amendments and/or arguments overcome the objections in WOISA then issue a positive IPRP Chapter II. The Examiner also sends a second written opinion inviting a further reply from the applicant or inventor in case the Examiner requires any clarification or the amendments and /or arguments do not address the objection in the WOISA.

The PCTChapter II Demand allows the applicant or inventor to interact with the Examiner during the international phase. The IPEA prepares and issues an IPRP Chapter II after receiving a reply from the applicant or inventor. The IPRP Chapter II may be the same as WOISA if the amendments and/or arguments do not overcome the objections in WOISA. The IPRP-Chapter II along with the amendments/arguments will be made available to the public by the International Bureau upon expiration of 30 months from the priority date of the PCT patent application.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

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