4.1 General
4.1.1.What is the aim of the international preliminary examination?
4.1.001In its capacity as IPEA the EPO will carry out an international preliminary examination on condition that the applicant has (validly) filed a "demand" and paid the fees due. The usefulness of this optional procedure depends on the international application concerned and, especially, on the result of the international search (see points 3.2.005 ff). A demand under PCT Chapter II may, in particular, be useful in order to overcome objections raised in the WO‑ISA and possibly receive a positive IPER at the end of the PCT Chapter II procedure. However, before taking a decision whether to file a demand with the EPO as IPEA, applicants are strongly recommended to take special note of the information set out in points 4.1.006 ff.
4.1.002The purpose of the international preliminary examination under Chapter II PCT is not grant or refusal of a patent, but provision of a preliminary and non-binding opinion on whether the claimed invention appears to be novel, to involve an inventive step and to be industrially applicable as defined in Article 33 PCT. The statement whether these criteria are satisfied is set out in the International Preliminary Report on Patentability ("IPRP Chapter II") established by the IPEA.
Art. 35 PCT
R. 64 PCT, R. 65 PCT, R. 67-70 PCT
WIPO PCT Guide 10.001-10.003
OJ 2011, 532
PCT Newsletter 9/2018, 13
4.1.003While there is not a fully uniform approach to the criteria for patentability in the national laws of the PCT contracting states, their application during international preliminary examination is such that IPRP Chapter II provides the applicant with a good basis on which to evaluate the chances of obtaining patents in the procedures before the various designated Offices in the national phase.
4.1.004The term "IPRP Chapter II" is no more than a different name for the international preliminary examination report (IPER). Both terms refer to the same document, i.e. the report established by the competent IPEA containing the result of the international preliminary examination carried out by it. In the following the term IPER will be used.
4.1.005As set out above, the applicant may react to the ISR and WO‑ISA established by the ISA by filing amendments under Article 19 PCT and/or "informal comments" with the IB, and/or by filing a demand for international preliminary examination (see points 4.1.020 ff). Should the applicant decide to file a demand for international preliminary examination, the demand form together with amendments and/or arguments under Article 34 PCT are to be filed directly with the competent IPEA (see points 4.1.023 ff).