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PCT Support Station

International Search / International Preliminary Examination



International Search
(1) Outline of International Search System

For every international application accorded its international filing data, an International Searching Authority carries out the international search and establishes an international searching report and a written opinion of the International Searching Authority (Articles 15 to 18).

The objective of the international search is to discover relevant prior art in determining whether or not the claimed invention of an international application is novel and involves an inventive step.

Relevant prior art consists of everything that has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and that is capable of being of assistance in determining whether or not the claimed invention is novel and involves an inventive step (is non-obvious) (Rule 33.1(a)).


Further, the written opinion of the International Searching Authority provides an opinion as to whether or not the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), to be industrially applicable, etc.

The International Searching Authority is specified depending on a receiving office. International applications received by the Japan Patent Office (JPO) are, if written in Japanese, searched by the JPO and, if written in English, searched by the JPO or a European Patent Office (Applicant's choice).

In principle, all international applications are searched except the following [Subject matter which does not need to be searched by an International Search Authority] and [International application which does not comply with the requirement of unity of invention].


[Subject matter which does not need to be searched by an International Search Authority] (Rule 39.1)

  • (i) scientific and mathematical theories
  • (ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes
  • (iii) schemes, rules or methods of doing business, performing purely mental acts or playing games
  • (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods
  • (v) mere presentation of information
  • (vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs



[International application which does not comply with the requirement of unity of invention]

If an international application does not comply with the requirement of unity of inventions, the International Searching Authority invites the Applicant to pay additional fees. If the Applicant does not comply with the invitation, the International Searching Authority establishes the international search report on those parts of the international application which related to the invention first mentioned in the claims (“main invention”). If the Applicant pays the additional fees in response to the invitation, the International Searching Authority also establishes the international search report on those parts of the international application which related to inventions for which the additional fees were paid (Article 17(3)(a)).

The Patent Cooperate Treaty stipulates the criterion for determining unity of invention. The criterion for determining whether or not the international application complies with unity of invention can be regarded as almost same as the criterion of the patent examination guidelines of the JPO.




" Criterion for Determining Unity of Invention >

  • The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (Rule 13.1).
  • Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art (Rule 13.2).
  • The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim (Rule 13.3).



(2)Written Opinion of the International Searching Authority (ISA Written Opinion, ISO)

The written opinion of the International Searching Authority, which is established by the International Searching Authority, is a written opinion as to whether or not the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), to be industrially applicable, etc.

Further, the written opinion of the International Searching Authority may include an opinion as to clarity of claims, description, and drawings or as to whether or not the claims are sufficiently supported by the description.

From the written opinion of the International Searching Authority, the Applicant of the international application can obtain an opinion of the International Searching Authority as to novelty, inventive step, and industrial applicability of the claimed invention, prior to entering the international application into the national phase in different countries.


(2-1) Criterion for Determining Novelty

The Patent Cooperation Treaty and the Regulations under the PCT stipulate that a claimed invention is considered novel if it is not anticipated by the prior art (Article 33(2) and Rule 43 2.1(b)).

The term “prior art” herein means everything made available to the public prior to the relevant date anywhere in the world by means of written disclosure (Rule 64.1(a)), and the term “relevant date” means the international filing date or, where the international application claims the priority of an earlier application and the claim is considered to be valid, the filing date of such earlier application (Rule 64.1(b)).


(2-2) Criterion for Determining Inventive Step

The Patent Cooperation Treaty and the Regulations under the PCT stipulate that a claimed invention is considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the relevant date, obvious to a person skilled in the art (Article 33(3) and Rule 43bis.1(b))

The term “obvious” herein means that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art.

The following are the basic considerations that apply in determining inventive step.


  • (i) the claimed invention must be considered as a whole
  • (ii) the references must be considered as a whole and the skilled person must be motivated or prompted into combining the teaching of the documents so as to arrive at the subject matter as claimed
  • (iii) the references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention

The details of criterion for determining novelty and inventive step are given in the “PCT International Search and Preliminary Examination Guidelines Part ΙΙΙ, Examiners considerations common to both the international searching authority and the international preliminary examining authority




(3) Response to International Search Report

(3-1) Amendment in accordance with the provisions of Article 19

The Applicant is entitled to one opportunity to amend claims of an international application (amendment made under Article 19) within two months from the date of transmittal of the international search report or 16 months from the priority date, whichever time limit expires later (Article 19, Rule 46.1).

The amendment made under Article 19 should not go beyond the disclosure in the international application as filed (Article 19(2)).

If the claims are amended under Article 19, the amended claims are published in the international application (Rule 48.2 (f)). The International Bureau also transmits the amended claims to the designated Offices (Article 20(2)).

By amending claims in the international phase in accordance with the provisions of Article 19, it is possible to make amendments in advance which are otherwise to be made after entry into the national phase. This makes it possible to enter an international application into the national phase with amended claims. Therefore, there is an advantage that obvious deficiencies, for example, can be rectified in the international phase.


(3-2) Submission of Unofficial Comment

The Applicant is not allowed to file an official argument to the written opinion of the International Searching Authority, but is allowed to submit, to the International Bureau, unofficial comments on the written opinion of the International Searching Authority.

The International Bureau transmits the unofficial comments to the designated Office. However, whether or not to take the unofficial comments into consideration is decided at the discretion of an Examiner in the Patent Office of each country.


(3-3) Demand for International Preliminary Examination

The Applicant can have the international preliminary examination for the international application if the Applicant makes a demand for the international preliminary examination. The demand for the international preliminary examination needs to be made at any time prior to the expiration of whichever periods expires later: (i) three months from the date of transmittal of the international search report, the written opinion of the International Searching Authority, or a declaration that no international search report will be established; or (ii) 22 months from the priority date (Rule 54bis.1(a))

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International Preliminary Examination
(1) Outline of International Preliminary Examination System

When the Applicant makes a demand for the international preliminary examination within the prescribed time, the International Preliminary Examining Authority carries out the international preliminary examination and establishes the written opinion of the International Preliminary Examining Authority and the international preliminary examination report (Articles 33 to 35 etc.). The demand for the international preliminary examination needs to be made at any time prior to the expiration of whichever periods expires later: (i) three months from the date of transmittal of the international search report, the written opinion of the International Searching Authority, or a declaration that no international search report will be established; or (ii) 22 months from the priority date (Rule 54bis.1(a))

The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on whether or not the claimed invention appears to be novel, to involve an inventive step, and to be industrially applicable (Article 33(1)). It should be noted that that if any amendments under Article 19 have been made, the amendments are taken into account in the international preliminary examination (Rule 66.1 (c)).

The International Preliminary Examining Authority is specified depending on a receiving office. International applications received by the JPO as a receiving office are, if written in Japanese, examined by the JPO to serve as the competent International Preliminary Examining Authority and, if written in English, examined by the JPO or the European Patent Office (Applicant's choice) to serve as the competent International Preliminary Examining Authority.

The international preliminary examination report is established after issue of one or more written opinions and, in some cases, other communications with the International Preliminary Examining Authority.

If the international application does not comply with the requirement of unity of invention, the International Preliminary Examining Authority invites the Applicant to pay additional fees or to restrict the claims. If the Applicant does not comply with the invitation, the International Preliminary Examining Authority establishes an international preliminary examination report on those parts of the international application which relate to what appears to be the main invention (Article 34(3)(a)).

It should be noted that the criterion for determining unity of invention, novelty, and inventive step in the international preliminary examination is the same as those in the international search.



(2) Advantageous points in Having International Preliminary Examination

  • New written opinion
    The International Preliminary Examination allows an Applicant to obtain a deeper opinion than the written opinion of the International Searching Authority, and thereby to make a more appropriate decision on whether or not to enter an international application into the national phase in an elected state.
  • Amendment
    The Applicant has a right to amend claims, description, and drawings (amendment under Article 34) (Article 34(2)(b)). The Applicant is further given opportunity to submit a written reply to the written opinion of the International Searching Authority (Article 34(2)(d)). When submitting the written replay, the Applicant can also communicate with an Examiner of the International Preliminary Examination Authority, for example, through interview. This allows the Applicant to appropriately express their opinion to the Examiner (Rule 66.6).
  • International Preliminary Examination Report
    The Applicant can submit the written replay to the written opinion or make amendments so as to obtain the international preliminary examination report that confirms patentability of the international application.
  • Others
    Although the international preliminary examination report is not binding, the international preliminary examination report that confirms patentability of the international application may increase the possibility that a patent is granted after entry into the national phase, especially, in emerging nations where the result of the international search and the international preliminary examination tend to be regarded as important.
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