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4.1
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General remarks
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The EPO may act as an International Preliminary Examining Authority under the terms of Art. 155.
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Art. 155(1), (2)
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When the EPO acts as an International Preliminary Examining Authority, the provisions of the PCT International Search and Preliminary Examination Guidelines will apply to the examination procedure.
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An international preliminary examination report (IPER) will be established within the prescribed time limit and in the form prescribed in Rule 70 PCT. One copy each of the international preliminary examination report and its annexes, if any, will be transmitted, on the same day, to the International Bureau and to the applicant (Rule 71.1 PCT).
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Art. 35 PCT
Rule 70 PCT
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With regard to deadlines and procedural steps before the EPO as an International Preliminary Examining Authority, see the Guide for applicants: "How to get a European patent, Part 2: PCT procedure before the EPO - Euro-PCT", April 2002. A new edition will be published soon. Fundamental changes of the Regulations under the PCT effecting the processing in the international phase entered into force on 1 January 2004. In the new edition only the new procedure, applicable to applications with a filing date on or after 1 January 2004, will be set out. The edition of April 2002, insofar as the former procedure in general is set out therein, is still useful for applications with a filing date before 1 January 2004. For applications concerning nucleotide or amino acid sequences, see A-VII, 4.2 and Supplement No. 2 to OJ 11/1998.
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The objective of the international preliminary examination according to Art. 33(1) PCT is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step, and to be industrially applicable. With respect to these three criteria, substantially the same requirements apply as under the EPC (compare Art. 33(2), (3) and (4) with Art. 54(1), 56 and 57 EPC).
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Art. 33 PCT
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Essential differences exist, however, between the procedures for international preliminary examination and the examination of European patent applications:
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(i)
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international preliminary examination does not lead to the grant of a patent or refusal of the application;
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(ii)
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for international preliminary examination the time limits set in Rule 69 PCT are to be met;
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(iii)
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the procedure followed in cases of lack of unity of invention; and
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(iv)
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in accordance with the Agreement between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization (OJ 12/2001, 601), the EPO may limit its examination work as an IPEA (see also the Notice from the President of the EPO dated 26 November 2001, OJ 1/2002, 52, defining the limitation criteria, and the Information in OJ 3/2002, 175). Limitations on the EPO's competence as IPEA for applications in the field of biotechnology and telecommunications have been lifted (Notice from the EPO, dated 31.10.2003, OJ EPO 2003, 633). A limitation of the EPO's competence is applicable for applications relating to business methods. Further restrictions regarding the preliminary examination of applications relating to business methods follow from the application of Rule 67.1(iii) and 66.1(e) PCT (see Notice from the EPO, dated 26.03.2002, OJ EPO 2002, 260).
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At present it is not possible to file the demand or any other document with the EPO as IPEA in electronic form.
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CHAPTER IX APPLICATIONS UNDER THE PATENT COOPERATION TREATY (PCT)
4.2 The international preliminary examination report (IPER)
