1862 Agreement With the International Bureau To Serve as an International Preliminary Examining Authority [R-07.2015]
PCT Article 32
The International Preliminary Examining Authority
- (1) International preliminary examination shall be carried out by the International Preliminary Examining Authority
- (2) In the case of demands referred to in Article 31(2)(a), the receiving Office, and, in the case of demands referred to in Article 31(2)(b), the Assembly, shall, in accordance with the applicable agreement between the interested International Preliminary Examining Authority or Authorities and the International Bureau, specify the International Preliminary Examining Authority or Authorities competent for the preliminary examination.
- (3) The provisions of Article 16(3) shall apply, mutatis mutandis, in respect of the International Preliminary Examining Authorities.
PCT Article 34
Procedure before the International Preliminary Examining Authority
- (1) Procedure before the International Preliminary Examining Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
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37 CFR 1.416 The United States International Preliminary Examining Authority.
- (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Preliminary Examining Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with agreement between the Patent and Trademark Office and the International Bureau.
- (b) The United States Patent and Trademark Office, when acting as an International Preliminary Examining Authority, will be identified by the full title “United States International Preliminary Examining Authority” or by the abbreviation “IPEA/US.”
- (c) The major functions of the International Preliminary
Examining Authority include:
- (1) Receiving and checking for defects in the Demand;
- (2) Forwarding Demands in accordance with PCT Rule 59.3;
- (3) Collecting the handling fee for the International Bureau and the preliminary examination fee for the United States International Preliminary Examining Authority;
- (4) Informing applicant of receipt of the Demand;
- (5) Considering the matter of unity of invention;
- (6) Providing an international preliminary examination report which is a nonbinding opinion on the questions whether the claimed invention appears to be novel, to involve inventive step (to be nonobvious), and to be industrially applicable; and
- (7) Transmitting the international preliminary examination report to applicant and the International Bureau.
An agreement was concluded between the United States Patent and Trademark Office (USPTO) and the International Bureau under which the USPTO agreed to serve as an International Preliminary Examining Authority for those applications filed in the USPTO as a Receiving Office and for those international applications filed in other receiving Offices for which the USPTO has served as an International Searching Authority. This agreement between the USPTO and IB is available on WIPO’s website (www.wipo.int/export/sites/www/pct/en/ texts/agreements/ag_us.pdf).
The agreement is provided for in PCT Articles 32(2) & (3) and 34(1), and in PCT Rules 59.1, 63.1, 72.1, and 77.1(a). Authority is given in 35 U.S.C. 361(c), 362(a) & (b) and in 364(a). 37 CFR 1.416(a) and PCT Administrative Instructions Section 103(c) are also relevant.
