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international search
Overview of the international search system
For all international applications for which the international filing date has been recognized, an international search is conducted by the International Searching Authority, and an international search report and written opinion of the International Searching Authority are prepared (Articles 15 to 18 of the Convention, etc.).
An international search is conducted for the purpose of discovering related prior art in order to determine whether the invention stated in the claims of the international application has novelty and inventive step.
Relevant prior art is art that is made available to the public by written disclosure (including drawings or other illustrations) anywhere in the world and that is described in the claims. (Rule 33.1(a)).
Also, based on the written opinion of the International Searching Authority, whether the invention described in the claims is considered novel or involves an inventive step (not obvious). Opinions will be presented on whether the product is considered to have industrial applicability, etc.
The International Searching Authority is specified by the receiving Office, and the International Searching Authority for international applications accepted by the Japan Patent Office is the Japan Patent Office for Japanese-language applications, and the Japan Patent Office or the European Patent Office (for English-language applications). (selected by the person).
In principle, the subject matter of an international search is all international searches, with the following exceptions: [subjects that do not require a search by the International Searching Authority] and [cases where the international application does not satisfy unity of invention]. This is an application.
(i) Scientific and mathematical theories
(ii) plant and animal varieties or essentially biological methods of plant and animal production; However, this does not apply to microbiological methods and products produced by microbiological methods.
(iii) plans, rules or methods for business activities, the performance of purely mental acts or games;
(iv) Methods for treating the human or animal body through surgery or therapy, and methods for diagnosing the human or animal body.
(v) Mere presentation of information
(vi) Computer programs that are outside the scope of which the International Searching Authority is prepared to search for prior art with respect to such programs;
[If the international application does not satisfy unity of invention]
- If the international application does not satisfy unity of invention, the International Searching Authority will ask you to pay an additional fee. If you do not pay the additional fee in response to this request, the international search report will be prepared only for the portion of the invention that is first mentioned in the claims (the "main invention"). Furthermore, if you pay additional fees in response to a request from the International Searching Authority for payment of additional fees, an international search report will be prepared for the portion of the invention for which the additional fees were paid (Article 17(3) of the Convention) (a)).
- Criteria for determining unity are stipulated by the PCT Regulations. The criteria for determining whether an international application satisfies unity of invention can be considered to be almost the same as the Japanese Patent Office's patent examination guidelines.
- An international application may only be filed for one invention or a group of inventions that are linked to form a single general inventive concept (Rule 13.1).
- If a group of inventions are claimed in the same international application, there is a technical relationship between these inventions that includes one or more of the same or corresponding special technical features. Only in certain cases will the requirement of unity of invention set out in Rule 13.1 be fulfilled. "Special technical features" means technical features that demonstrate the contribution that each claimed invention as a whole makes over the prior art (Rule 13.2).
・The determination of whether a group of inventions are linked to form a single general inventive concept is based on whether these inventions are stated in separate claims or are alternative to a single claim. without regard to what is stated in the form (Rule 13.3).
Written opinion of the International Searching Authority (ISA written opinion, ISO)
The International Searching Authority's written opinion is prepared by the International Searching Authority and examines whether the invention described in the claims is novel, and involves an inventive step (not obvious). This is a written opinion regarding whether or not the product is recognized as having industrial applicability.
The International Searching Authority's written opinion may also include observations regarding the clarity of the claims, the description and drawings, or whether the claims are sufficiently supported by the description. there is.
Before proceeding to the national phase of each country, the applicant of an international application must obtain an international opinion from the International Searching Authority regarding the novelty, inventive step, and industrial applicability of the claimed invention. You can get the opinion of the research organization.
(2-1) Criteria for determining novelty
The PCT Treaty and Regulations provide that a claimed invention shall be novel in the absence of any relevant prior art (Article 33 of the Treaty). (2), Rule 43bis.2.1(b)).
"Prior art" here means anything made available to the public by written disclosure anywhere in the world before the reference date (Rule 64.1(a)); ``Reference date'' is the international filing date or, if the international application carries a valid claim of priority from an earlier application, the date of the earlier application (Rule 64.1(b)).
(2-2) Criteria for determining inventive step
The PCT Treaty and Regulations provide that a claimed invention does not involve an inventive step if it is not obvious to a person skilled in the art on a given reference date in view of the prior art as defined in the Regulations. (Article 33(3) of the Convention, Rule 43bis.2.1(b)).
"Obvious" here means that it is obvious and logically derived from the prior art without going beyond the normal advancement of technology.
In addition, the basic considerations to be applied when determining inventive step are as follows.
(ii) The references must be considered as a whole and must motivate or encourage a person skilled in the art to combine the teachings of the documents in order to arrive at the claimed subject matter.
(iii) References must be considered without the unauthorized benefit of hindsight afforded by the claimed invention.
More specific criteria for novelty and inventive step are as follows:PCT International Search and Preliminary Examination Guidelines (Japanese provisional translation) Part III Examiner considerations common to the International Searching Authority and the International Preliminary Examining Authority” (Japan Patent Office).
What to do after receiving an international search report
(3-1) Amendment based on the provisions of Article 19 of the Convention
The applicant may amend the claims only once (Article 2 amendment) within a period of two months from the date of sending the international search report or 16 months from the priority date, whichever expires later. (Article 1, Regulation 19 of the Convention).
Amendments pursuant to the provisions of Article 19 of the Convention cannot go beyond the scope of disclosure of the international application at the time of filing (Article 19(2) of the Convention)
If an amendment is made pursuant to Article 19 of the Convention, the amended scope of claims will be published internationally (Rule 48.2(f)). Additionally, the amended scope of claims will be communicated by the International Bureau to the designated Office (Article 20(2) of the Convention).
By amending the scope of claims in the international phase based on the provisions of Article 19 of the Treaty, it is possible to carry out the amendment procedures after entering the national phase in advance, and it is possible to enter the national phase in the amended state. . Therefore, it can be said that there is an advantage in correcting obvious deficiencies at the international stage.
(3-2) Submission of informal comments
Applicants cannot formally object to the written opinion of the International Searching Authority, but may submit informal comments to the International Bureau to the written opinion of the International Searching Authority.
Informal comments will be forwarded by the International Bureau to the designated Offices, but whether or not to take them into consideration will be at the discretion of each national patent office examiner.
(3-3) Request for international preliminary examination
An applicant can undergo an international preliminary examination of an international application by filing a request for an international preliminary examination. The request for international preliminary examination must be filed within 3 months from the date of sending the international search report and the written opinion of the International Searching Authority or the declaration that no international search report will be filed, or 22 months from the priority date, whichever expires later. (Rule 54, paragraph 2.1(a)).
international preliminary examination
Overview of the international preliminary examination system
If the applicant files a request for an international preliminary examination within the prescribed time limit, the International Preliminary Examining Authority will conduct an international preliminary examination and prepare a written opinion of the International Preliminary Examining Authority and an international preliminary examination report (Article 33 of the Convention). ~Article 35, etc.) The deadline for filing a request for international preliminary examination is 3 months from the date of sending the international search report and the written opinion of the International Searching Authority or a declaration that no international search report will be filed, or 22 months from the priority date, whichever is later. (Rule 54bis.2.1(a)).
The purpose of the international preliminary examination is to provide a preliminary and non-binding opinion on the novelty, inventive step and industrial applicability of the claimed invention (Article 33 of the Convention). (1)). In addition, if amendments have been made pursuant to Article 19 of the Convention, such amendments will be taken into account at the international preliminary examination (Rule 66.1(c)).
The International Preliminary Examining Authority is specified by the receiving Office, and the competent International Preliminary Examining Authority for international applications accepted by the Japan Patent Office as the receiving Office is the Japan Patent Office for Japanese applications and the Japan Patent Office for English applications. Office or the European Patent Office (selected by the applicant).
The international preliminary examination report is prepared after one or more written opinions and possibly other communications with the International Preliminary Examining Authority.
If the international application does not meet the unity of invention requirement, the International Preliminary Examining Authority will require you to pay additional fees or restrict the scope of the claims. If the applicant does not comply with this request, an international preliminary examination report will be prepared for the portion of the international application that relates to the invention that is recognized as the main invention (Article 34(3)(a) of the Convention).
The criteria for determining unity, novelty, and inventive step in the international preliminary examination are the same as those in the international search.
Advantages of taking an international preliminary examination
・New position paper
The international preliminary examination report provides applicants with a more advanced opinion than the written opinion of the International Searching Authority, allowing them to make a better decision as to whether or not to proceed to the national phase of the selected country.
·correction
Amendments to the claims, description, and drawings (Article 34 amendment) can be made (Article 34(2)(b) of the Convention). In addition, you will have the opportunity to submit a reply to the written opinion of the International Searching Authority (Article 34(2)(d) of the Convention). At this time, the applicant may have an interview or other interaction with the examiner of the International Preliminary Examining Authority, allowing the applicant to accurately express his or her opinion to the examiner (Rule 66.6).
・International preliminary examination report
An applicant can obtain an international preliminary examination report affirming patentability by submitting a written reply or making amendments to the written opinion.
·Others
Although the international preliminary examination report is not binding, emerging countries in particular tend to place importance on the results of international searches and international preliminary examinations, so it is important to obtain an international preliminary examination report that affirms patentability. This increases the possibility of obtaining rights after entering the national phase.
<Contents within the page>
PCT Support Office Procedures for PCT international applications International search/international preliminary examination Glossary Fees for PCT international applications