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1878 MANUAL OF PATENT EXAMINING PROCEDURE
(c) No international preliminary examination will be conducted
on inventions not previously searched by an International
Searching Authority.
(d) The International Preliminary Examining Authority will
establish a written opinion if any defect exists or if the claimed
invention lacks novelty, inventive step Of industrial applicability
and will set a non-extendable time limit in the written opinion for
the applicant to reply.
(e) If no written opinion under paragraph (d) of this section
is necessary, or after any written opinion and the reply thereto or
the expiration of the time limit for reply to such written opinion,
an .international preliminary examination report will beestablished
by the International Preliminary Examining Authority. One
copy will be submitted to the International Bureau and one copy
will be submitted to the applicant.
(f) An applicant will be permitted a personal or telephone
interyiew with the examiner, which must be conducted during the
non-extendable time limit for reply by the applicantto a written
opinion. Additional interviews may be conducted where the
examiner determines that such additional interviews may be helpful
to advancing the international preliminary examination procedure.
A summary of any such personal or telephone interview
must be filed by the applicant as apart of the reply to the written
opinion or, if applicant files no reply, be made of record in the file
by the examiner.
(g) If the application whose priority is claimed in the international
application is in a language other than English, the
United States International Preliminary Examining Authority
may, where the validity of the priority claim is relevant for the formulation
of the opinion referred to in Article 33(1), invite the
applicant to furnish an English translation of the priority document
within two months from the date of the invitation. If the
translation is not furnished within thattime limit, the international
preliminary examination report may be established as if the priority
had not been claimed.
A written opinion must be prepared ifthe examiner:
(A) Considers that the international application
has any of the defects described in PCT Article 34(4);
(B) Considers that the report should be negative
with respect to any of the claims because of a lack of
novelty, inventive step (non-obviousness) or industrial
applicability;
(C) Notices any defects in the form or contents of
the international application under the PCT;
(D) Considers that any amendment goes beyond
the disclosure in the international application as originally
filed;
(E) Wishes to make an observation onthe clarity
of the claims, the description, the drawings or to question
whether the claims are fully supported by the
description;
August 2001
1800-106
(F) Decides not to carry out the international pre'
liminary examination on a claim for which no International
Search Report was issued; or
(G) Considers that no acceptable amino acid
sequence listing is available in a form that would
allow a meaningful international preliminary examination
to be carried out.
The applicant must be notified on Form PCTIIPEAJ
408 of the defects found in the application. The examiner
is further required to fully state the reasons for
hislher opinion (PCT Rule 66.2(b» and invite a written
reply, with amendments where appropriate (PCT
Rule 66.2(c», setting a time limit for the reply of normally
2 months.
The examiner should insert the words "first" or
"second", as the case may be, in the space provided
on page I of the written opinion.
ITEM I. BASIS OF OPINION
Applicant has two opportunities to amend the international
application prior to international preliminary
examination. Under PCT Article 19, the applicant is
entitled to one opportunity to amend the claims of the
international application by filing amendments with
the International Bureau within 2 months of the mailing
of the international search report. See PCT Rule
46.1. Applicant is also permitted to make amendments
before the International Preliminary Examining
Authority under PCT Article 34(2)(b) and PCT Rule
66.1. Any amendment, however, that does not accompany
the filing of the Demand but is filed later may
not be considered unless it reaches the examiner
before he/she takes up the application for examination.
For the purpose of completing Box I, Item I, of
Form PCTIIPEAJ408, substitute and/or rectified
sheets of the specification and drawings filed during
Chapter I proceedings are considered to be originally
filed pages/sheets and should be listed as originally
filed pages/sheets. Only those amendments or rectifications
to the specification and drawings filed on the
date of Demand or after the filing of a Demand should
be listed as later filed pages/sheets. Substitute and/or
rectified sheets of claims filed during the Chapter I
proceedings are also considered to be originally filed
pages/sheets and should be listed as originally filed
pages/sheets. However, amended sheets of claims
filed under Article 19 in response to the international
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