Where the PCT fits
A PCT application is usually filed at the end of the 12-month provisional period, claiming priority from the provisional. There is no such thing as an international patent. The PCT is a centralised application and examination procedure, and protection is eventually granted country by country in the national phase. The international phase is the period in between, and the written opinion is its centrepiece. Our article on the difference between a provisional and a complete application covers the earlier stage.
The international search and written opinion
When you file a PCT application you choose an International Searching Authority from the patent offices available to you. Australian applicants can choose IP Australia, among others. The authority searches the prior art against your claims and issues two documents: an international search report listing the most relevant documents found, and a written opinion giving the examiner's preliminary view on whether each claim is new, inventive and industrially applicable. These usually arrive around 16 months from the priority date.
The international application is then published at 18 months from the priority date, together with the search report. The written opinion is not published at that stage. If you take no further steps, it is converted into an international preliminary report on patentability, sent to the countries you enter in the national phase, and made publicly available.
If you requested an international-type search on your provisional, you can ask the International Searching Authority to take its results into account. Where IP Australia carried out that search and also acts as the International Searching Authority, the PCT rules require it to do so as far as possible. Combined with claims already adjusted in response to the earlier search, this considerably improves the prospects of a clear first written opinion. We compare the two searches in prefiling novelty search vs international-type search.
Responding under Chapter I
If the written opinion is favourable, there is often nothing more to do in the international phase. If it raises objections, you have two options. The simpler one is to amend the claims under Article 19 of the PCT, within two months of the search report or 16 months from the priority date, whichever is later. The amended claims are published with the application, but they are not re-examined. The written opinion still reflects the original claims, so national examiners will see both.
International preliminary examination under Chapter II
The fuller option is to file a demand for international preliminary examination under Chapter II. The demand must be filed within three months of the search report and written opinion, or by 22 months from the priority date, whichever is later.
With the demand you can amend the claims, description and drawings under Article 34, and file arguments explaining why the amended claims are new and inventive over the cited prior art. The examining authority then considers the amendments and arguments and may issue a further written opinion, giving you another opportunity to respond. Finally, it issues an international preliminary report on patentability under Chapter II, usually by 28 months from the priority date. That report replaces the original written opinion as the document the national offices see.
The effect is that you can turn an adverse written opinion into a positive report before the national phase. You deal with the objections once, centrally, rather than separately in every country you enter.
Dealing with an objection once in the international phase is almost always cheaper than dealing with it separately in every country you enter.
Why a clear opinion matters in the national phase
The written opinion and the international preliminary report are not binding on national patent offices. Each country examines the application under its own law and may cite additional prior art. In practice, though, they carry real weight. National examiners routinely use the international search and opinion as their starting point, and a positive report often leads to acceptance with few objections or none.
A positive opinion can also speed things up. Under the Patent Prosecution Highway arrangements, many national offices allow an applicant with favourable PCT results to request accelerated examination on corresponding claims. And because examination responses are often the largest and least predictable cost of the patent process, every objection resolved in the international phase is one you don't pay to address several times over.
When is Chapter II worth it?
Chapter II involves additional official and professional fees, so it isn't always necessary. It is worth considering when the written opinion raises objections you can overcome by amendment or argument, and when you intend to enter several countries, so that the benefit of a positive report is multiplied. It is usually not needed when the written opinion is already favourable, or when you plan to enter only one or two countries and can deal with the objections there just as efficiently.
Putting it together
The written opinion is most valuable when it is clear from the start, and that depends on decisions made much earlier: a provisional with properly drafted claims and detailed support, and an international-type search during the provisional period to test those claims before the PCT is filed. We explain how these stages fit together in our approach to patent applications.
If you have a PCT application with an adverse written opinion, or are about to file one, contact Patentec for a free initial consultation. We'll look at the objections and advise whether amendment, argument or Chapter II examination is the best way forward.