William and Mary Law School

PCT Chapter II

Dear Readers,

I was able to find my old patent bar outline for Chapter II.

The applicant has to demand for International Preliminary Examination within 3 months from the International Search Record or no search declaration, whichever is later or within 22 months form priority date.  The time line for Chapter II is rather complex.

Normally the PTO is used for US nationals and residents.  The EPO is used if they ran the international search.  An invitation to pay the examination fee under MPEP 1867 is sent.  This invitation is basically a payment slip.  Additional fees are required if the invention lacks unity of invention.  These additional fees are similar to restrictions.  The applicant has one more chance to amend before the International Preliminary Examination begins.  The International Preliminary Examining Authority conducts this examination.  No further written opinion is issued unless the applicant files a persuasive argument against International Searching Authority’s negative opinion.  If the US International Preliminary Examining Authority issues a further written opinion, applicant may reply with amendments and/or arguments within 2 months.  The reply must not contain new matter not previously discussed. 

An applicant may request an interview with International Preliminary Examining Authority.  One interview is a matter of right.  Any additional interviews are granted at examiner’s discretion.  All interviews are made of record.  An International Preliminary Report on Patentability is issued.  For International Applications filed on or after January 1st 2004 the later of 28 months from International Application filing date or priority date, or 6 months from start of IPE, or 6 months from receipt of necessary translation.  Each claim in the Preliminary Report states whether novelty, inventive step and industrial applicability is satisfied.  Any relevant documents should be sited by the applicant.  All entered amendments should be identified.  And any reasons for non-satisfaction should be given.  Final remarks on the unity of invention should be made if necessary.  No opinion as to the patentability should be made. 

I apologize for the shortness of this blog.  Chapter II still confuses me a little bit.  I normally do not work with Chapter II, however I would like to learn more considering Chapter II’s general importance. 

Last part coming soon. 

Tony Guo