IPA patent 6.3.8.2-box-i-basis-of-opinion-report-for-isos-ipeos-and-iprps — IP Australia Patent Manual of Practice and Procedure – 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs

Also in this Chapter: 6.3.8.1 Front Page and Notification Application Details 6.3.8.3 Box II Priority 6.3.8.4 Box III Non-Establishment of Opinion with Regard to Novelty, Inventive Step & Industrial Applicability 6.3.8.5 Box IV Unity of Invention 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability 6.3.8.7 Box VI Certain Documents Cited 6.3.8.8 Box VII Certain Defects 6.3.8.9 Box VIII Certain Observations ​​​​​​​​​​​​​​ Key Legislation: Patent Cooperation Treaty: Article 19 Amendment of the Claims Before the International Bureau Article 34 Procedure Before the International Preliminary Examining Authority PCT Administrative Instructions: Annex C INSTRUCTIONS RELATING TO THE PRESENTATION OF NUCLEOTIDE AND AMINO ACID SEQUENCE LISTINGS IN INTERNATIONAL PATENT APPLICATIONS UNDER THE PCT Regulations under the PCT: Rule 23.1(b) Procedure Rule 48.3(b) Languages of Publication Rule 55.2 Translation of International Application Rule 55.3 Language and Translation of Amendments and Letters Rule 70.2(c) Basis of the Report Rule 70.16(b) Annexes to the Report Rule 91 Rectification of Obvious Mistakes in the International Application and Other Documents PCT ISPE Guidelines: Paragraph 17.22 Amendments Resulting in Gaps in Numbering Paragraph 18.03 Statement Concerning Amendments Related Chapters: 6.1.9 Basis of the Search 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings 6.3.4.1 Demand and Top-up Search 6.3.5.2 Supplementary International Search Report 6.3.8.1 Front Page and Notification Application Details 6.3.9.1 Article 19 or Article 34(2)(b) Amendments 6.3.9.4 Rule 91 Obvious Mistakes in Documents RIO - Processing PCT Tasks - Box I On this page Types of sheets in the application Substitute sheets Rectified sheets Sheets incorporated by reference Erroneously filed sheets Basis of Opinion for an ISO - Box I Item 1 Item 2 Item 3 Item 4 Item 5 Basis of Opinion for IPEOs and IPRPII - Box I Item 1 Item 2 Application as originally filed or furnished Amendments Supplemental Box relating to Sequence Listing Item 3 Item 4 Abstracts Item 5 Item 6 of IPEO (Item 7 of IPRPII) Item 6 of IPRPII Types of sheets in the application The application may contain substitute sheets, rectified sheets, sheets incorporated by reference, and erroneously filed sheets. See below for further detail on each type. Substitute sheets Substitute pages or sheets that have been filed in response to an invitation by the Receiving Office to correct defects in the international application, are deemed to be part of the international application ‘as originally filed’. If the applicant responds to the invitation to correct defects by substituting sheets of the application, these sheets are identified with ‘SUBSTITUTE SHEET (RULE 26)’ stamped on them. Rectified sheets Rectified sheets filed as Rule 91 obvious mistakes amendments (or, pre 1 April 2007, obvious errors) are also regarded ‘as originally filed’ sheets. These sheets are identified in Box I ‘Basis of the Opinion’ or ‘Basis of the Report’. They are transmitted as ‘RECTIFIED SHEET (RULE 91)’ amendments to the International Bureau by the PCT unit once the examiner has accepted them. Sheets incorporated by reference The application may also contain sheets submitted after the international filing date and are identified with ‘INCORPORATED BY REFERENCE (Rule 20.6)’. These sheets are also deemed to be part of the international application ‘as originally filed’ (see 6.1.9 Basis of the Search ). Erroneously filed sheets The application may also contain sheets stamped ‘ERRONEOUSLY FILED (RULE 20.5bis)’. These sheets usually need not be taken into account for examination. Basis of Opinion for an ISO - Box I Note: Box I of the International Search Opinion (ISO) ‘Basis of the Opinion’ must always be included in the ISO. The ‘Box I (Basis of Opinion)’ sheet is automatically included in the ISO template. Box I of the ISO contains Items 1 to 5, which are described in detail below. For an example of the form, see Annex A - Written Opinion-ISA . Item 1 Item 1 relates to the language considerations on which the opinion is based. For language considerations refer to the PCT Rules ( Rule 23.1(b) , Rule 48.3(b) , Rules 55.2 and/or 55.3 ). In practice, problems in this area rarely occur. Item 2 Item 2 relates to an opinion established taking into account the rectification of an obvious mistake under Rule 91. Where there is an indication on the file that the rectification of an obvious mistake has been authorised, the examiner shall indicate this in the international report and establish the report on the basis of this rectification. Note that if the rectification occurred before 1 April 2007, it is referred to as an ‘obvious error’. See 6.3.9.4 Rule 91 Obvious Mistakes in Documents for information regarding obvious mistakes. Item 3 Item 3 relates to the considerations for nucleotide and/or amino acid sequence listings (see 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings ). Where a nucleotide or amino acid sequence listing is provided and the search and opinion are conducted in respect of this sequence listing, examiners should complete Item 3 and Item 4 (if appropriate) of Box I. Where a sequence listing is provided, but the search and opinion are not conducted in respect of this sequence listing, Items 3 and 4 of Box I are left blank. Examiners should indicate under Item 5 of Box I (Additional comments) that: There was a sequence listing originally filed but it was not used for the purposes of this search and opinion. Where sequences are present in the drawings or figures, or in the text of the description (but not in the form of a sequence listing), and the search and opinion are conducted in respect of these sequences, Items 3 and 4 of Box I are left blank. Examiners should indicate under Item 5 of Box I that: A sequence listing was not filed. However, the sequences depicted in (Figure 1, Table 3 etc.) were used for the purposes of this search and opinion. Note: A sequence listing is a separate part of the description that is presented in a specific format (see Annex C of the Administrative Instructions under the PCT). Nucleotide or amino acid sequences that appear in the figures or drawings, or in the text of the description, do not constitute a sequence listing. Item 4 Item 4 relates to cases in which more than one version or copy of a sequence listing has been filed or furnished. Checking this item box will indicate that the applicant has submitted the required statements that the information in any subsequent or additional copies is identical to that in the application as filed or does not go beyond the application as filed. The considerations for nucleotide and/or amino acid sequence listings may be found in 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings . Item 5 Item 5 is for ‘Additional comments’. Additional comments include the examples under Item 3 above. Another example is where the examiner notices that the incorporated elements or parts in the sheets marked with ‘INCORPORATED BY REFERENCE (Rule 20.6)’ were not completely contained in the priority document (see 6.1.9 Basis of the Search ). In this instance, examiners should indicate under Item 5 that: There are doubts as to whether the missing parts or correct elements or parts in the sheets marked with ‘INCORPORATED BY REFERENCE (Rule 20.6)’ were actually completely contained in the priority document. Therefore, additional documents in the ‘L’ category are included as they would be relevant if a re-dating of the application is made. Basis of Opinion for IPEOs and IPRPII - Box I The items present in Box I of the International Preliminary Examination Opinion (IPEO) and Box I of the International Preliminary Report on Patentability Chapter 2 (IPRPII) are described below. For example forms of each, see Annex B - Written Opinion-IPEO and Annex D - IPRPII . Item 1 See Item 1 of the ‘Basis of Opinion for an ISO’ above. Item 2 The 5 checkboxes under Item 2 are for indicating the elements of the international application that the report is based on. Application as originally filed or furnished The first checkbox of Item 2 is ‘the international application as originally filed/furnished’. Where all documents examined are as originally filed, only mark this first checkbox. Amendments An applicant may file amendments with a covering letter in response to an opinion. On receipt of these amendments, the PCT Unit will indicate on the top right hand corner of the Amended sheets the application number and the date of receipt. Note that the date stated on the covering letter may differ from the filing date (see PCT/GL/ISPE/12 at paragraph 18.03 et seq ). Article 19 Under Article 19 only claims may be amended. Where amendments to the claims have been made under Article 19, they should be referred to in Item 2 of Box I as ‘Nos....as amended (together with any statement) under Art 19’. These sheets are usually identified by ‘AMENDED SHEET (ARTICLE 19)’. Article 34 Where amendments have been made to the description or drawings under Article 34 , these should be referred to in Item 2 of Box I as ‘pages....received by this Authority on....with the letter of ....’. Where amendments have been made to the claims under Article 34, these should be referred to in Item 2 of Box I as ‘Nos....received by this Authority on....with the letter of ....’. The ‘received by this Authority on’ date is the date placed on the amendments by the International Preliminary Examining Authority (IPEA). The date of ‘with the letter of’ is the associated applicant's correspondence date. For all PCT applications, superseded amendments are not normally included. However, if the superseding amendments go beyond the original disclosure of the application as filed, both the superseded amendments and the superseding amendments are to be included. Supplemental Box relating to Sequence Listing The final checkbox of Item 2 references a supplemental box relating to a sequence listing. The considerations for nucleotide and/or amino acid sequence listings may be found in 6.1.18.1 Background Nucleotide and/or Amino Acid Sequence Listings . For details on the level of reporting required for sequence listings in the supplemental box, see Item 3 of the ‘Basis of Opinion for an ISO’ above. However, note that the relevant item numbers in Box I of the ISO differ to the relevant item numbers found in the Supplemental Box. Item 3 At times, amendments made under Article 19 or 34 result in cancellation or gaps in the numbering sequences of any one or more of: description pages claim numbers drawing sheets. In these instances, examiners must refer to these in Item 3 of Box I of the IPEO or IPRP (see PCT/GL/ISPE/12 at paragraph 17.22 ). Where cancellation of claims result in gaps in the numbering sequence of claim numbers, examiners must indicate this in Item 3. However, if the claims have been cancelled but there are no gaps in the numbering sequence of claim numbers, Item 3 is not to be used. More importantly, examiners must ensure the report in Box V (the reasoned statement) reflects the claims reported upon. Refer to 6.3.9.1 Article 19 or Article 34(2)(b) Amendments for further Article 19 or 34 considerations. Item 4 Item 4 of Box I has This opinion/report has been established as if (some of) the amendments listed below had not been made, since either they are considered to go beyond the disclosure as filed, or they were not accompanied by a letter indicating the basis for the amendments in the application as filed, as indicated in the Supplemental Box. Where amendments have been made which go beyond the original disclosure, examiners are to indicate this in Item 4 of Box I of the IPEO or IPRPII. The particular amendments are identified and brief reasons are given in a Supplemental Box sheet(s) ( Rule 70.2(c) ). For all PCT applications, replacement sheets which are superseded by replacement sheets (all of which go beyond the disclosure as filed) are required to be annexed to the IPRPII, along with the superseding replacement sheets. If there is more than one version of these superseding replacement sheets, then only the later or latest version is to be annexed. Examiners are to mark the second checkbox at Item 3a of the IPRPII cover sheet and indicate the total number of replacement sheets annexed ( Rule 70.16(b) ). See 6.3.8.1 Front Page and Notification Application Details for further details of the procedures in respect of annexes to be followed by examiners when amendments go beyond the disclosure. Abstracts In the case of abstracts, they cannot be amended under Article 34 and consequently if an applicant includes an amended abstract with their Article 34 amendments it should not be included in any Annex to an IPRPII. Examiners should ensure that a note stating that ‘the amendments to the abstract are of no effect since the abstract cannot be amended under Article 34’ is inserted after Item 2 on the IPRPII cover sheet. Item 5 The checkboxes under Item 5 relate to whether the report has been established taking or without taking into account the rectification of an obvious mistake authorised by or notified to this authority. Where there is an indication on the file that the rectification of an obvious mistake has been authorised, the examiner shall indicate this in the international report and establish the report on the basis of this rectification. Note that if the rectification occurred before 1 April 2007, it is referred to as an ‘obvious error’. See 6.3.9.4 Rule 91 Obvious Mistakes in Documents for information regarding obvious mistakes. Item 6 of IPEO (Item 7 of IPRPII) Item 6 of the IPEO and Item 7 of the IPRPII relate to whether supplementary international search report(s) has/have been received and taken into account in establishing the opinion or report. Where a supplementary international search report has been taken into account in establishing an opinion/report, the name of the Authority which conducted the supplementary international search shall be noted here. See 6.3.5.2 Supplementary International Search Report for information on Supplementary International Search Report. Item 6 of IPRPII Details of a top-up search shall be noted here. See 6.3.4.1 Demand and Top-up Search .