PPC PPC International Patent Systems & PCT 2 — Questions and Answers
Question 1: What is an 'International Search Report' (ISR) in the PCT process, and who prepares it?
- A report by WIPO listing all PCT member states; prepared by the International Bureau
- A prior art search identifying relevant documents; prepared by an International Searching Authority (ISA) (Correct answer)
- A report summarizing national phase outcomes; prepared by each designated office
- A legal opinion on patentability; prepared by the applicant's attorney
Correct answer: A prior art search identifying relevant documents; prepared by an International Searching Authority (ISA)
The International Search Report (ISR) is a list of prior art documents considered relevant to the PCT application's claims, prepared by an International Searching Authority (ISA) such as the USPTO, EPO, or JPO.
Question 2: What is 'Chapter II' of the PCT and what additional procedure does it offer?
- The mandatory second phase of all PCT applications requiring full examination
- An optional International Preliminary Examination providing a more detailed patentability assessment before national phase entry (Correct answer)
- The chapter governing national phase procedures in each designated state
- The chapter requiring translation of PCT applications into WIPO's official languages
Correct answer: An optional International Preliminary Examination providing a more detailed patentability assessment before national phase entry
PCT Chapter II offers an optional International Preliminary Examination (IPEA) that provides a deeper patentability assessment through demand filing, giving applicants more information before entering the national phase.
Question 3: What is the 'European Patent Office' (EPO) regional phase, and how does it differ from direct national filings in Europe?
- The EPO grants individual national patents; direct national filings are cheaper
- The EPO processes a single application to grant a European patent validated in multiple member states, avoiding separate filings in each country (Correct answer)
- The EPO only handles PCT applications, not direct European filings
- The EPO and national offices conduct joint examination of all European filings
Correct answer: The EPO processes a single application to grant a European patent validated in multiple member states, avoiding separate filings in each country
By filing at the EPO under the European Patent Convention (EPC), an applicant can pursue a single examination process that results in a European patent validated in selected EPC member states, rather than filing separately in each country.
Question 4: What does 'national phase entry' require in the US for an international PCT application?
- Only payment of the national fee
- Payment of the national fee, an English translation if required, and fulfillment of 35 U.S.C. § 371 requirements (Correct answer)
- Filing a brand-new US application incorporating the PCT claims
- Approval from WIPO to proceed in the US
Correct answer: Payment of the national fee, an English translation if required, and fulfillment of 35 U.S.C. § 371 requirements
Entering the US national phase under 35 U.S.C. § 371 requires paying the national fee, submitting an English translation (if the international application was not in English), and meeting other formality requirements within the 30-month deadline.
Question 5: Which international organization administers the PCT system and maintains the International Bureau?
- World Trade Organization (WTO)
- World Intellectual Property Organization (WIPO) (Correct answer)
- International Patent Office (IPO)
- United Nations Patent Agency (UNPA)
Correct answer: World Intellectual Property Organization (WIPO)
The World Intellectual Property Organization (WIPO), a specialized agency of the United Nations based in Geneva, administers the PCT and operates as the International Bureau that coordinates all PCT filings.
Question 6: What is the purpose of an 'International Preliminary Report on Patentability' (IPRP) in PCT prosecution?
- It grants a patent in all designated countries simultaneously
- It provides a non-binding opinion on whether the claims appear novel, inventive, and industrially applicable (Correct answer)
- It replaces the need for examination in national offices
- It lists countries where the application has been published
Correct answer: It provides a non-binding opinion on whether the claims appear novel, inventive, and industrially applicable
The IPRP provides a preliminary, non-binding assessment by the International Authority on whether the claims meet the patentability standards of novelty, inventive step, and industrial applicability, helping applicants and national offices during national phase examination.
PPC PPC International Patent Systems & PCT 2
What is an 'International Search Report' (ISR) in the PCT process, and who prepares it?