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1878 MANUAL OF PATENT EXAMINING PROCEDURE
box under subsection 3 and identify the claim numbers.
ITEM V. REASONED STATEMENT WITH RE­
GARD TO NOVELTY, INVENTIVE STEP, AND
INDUSTRIAL APPLICABILITY OF CLAIMS
In Item V, the examiner must list in summary form
all claims with regard to the criteria of novelty (N),
inventive step (IS), and industrial applicability (IA).
Item V is the main purpose of the Written Opinion.
All claims without fatal defects are treated on the
merits in Item V as to novelty, inventive step (nonobviousness)
and industrial applicability.
The treatment of claims in Item V is similar in format
to an Office action in a U.S. national patent application
except that the words "rejection" and
"patentability" are never used in a written opinion. On
the international level, all written opinions are nonbinding
and a patent does not issue; what does issue is
an international preliminary examination report
(IPER), which is nonbinding on the Elected States.
Examiner statements in Item V can bepositive and/
or negative. If, for example, claims define over the
prior art and meet the test of novelty, inventive step
(nonobviousness) and industrial applicability, a statement
equivalent to detailed reasons for allowance in a
corresponding U.S. application, indicating how the
claims meet the tests of novelty, inventive step and
industrial applicability is sufficient. If on the other
hand it is the opinion of the examiner that some or all
claims lack novelty, inventive step, and/or industrial
applicability, specific reasons for the opinion employing
PCT form paragraphs, if appropriate, must be
given similar to those used in U.S. national applications
including a statement of motivation to combine
references cited regarding negative statements of
inventive step.
Form paragraphs to be used by the examiners
appear in the relevant sections of this Manual. All
examiners are expected to use the PCT form paragraphs
in formulating any negative statements listed
in Item V.
Examiners are encouraged to indicate any amendments
which applicant could present which would
avoid a negative statement in the international preliminary
examination report.
All international applications where an examination
has been demanded should be searched by the exam-
August 2001
1800-108
iner at least to the point of bringing the previous
search up to date. Prior art discovered in a search and
applied in an Item V statement must be made of
record in Item V. Prior art already cited on the international
search report need not again be cited on the
written opinion or international preliminary examination
report. The subsequently discovered prior art is to
be cited in compliance with PCT Rule 43.5 and
Administrative Instructions Section 503 using the
same citation format used on the international search
report. Two copies of each newly cited reference
should be included in the PCT Chapter II file when it
is sent to PCT Operations for the mailing of the form
PCTIIPEA/40S. One of the copies of the newly cited
reference will be sent to the applicant and one copy
will be retained in the Chapter II file.
'f[ 18.01 Lacks Novelty
Claim [II novelty under PCT Article 33(2) as being anticipated
by [2].
Examiner Note:
1. In bracket I, pluralize 'claim' if needed, insert Claim no.(s),
and the verb -clack-. or --lacks--, as appropriate.
2. In bracket 2, insert name of prior art relied upon.
'f[ 18.02 Lacks Inventive Step - One Reference
Claim [II an inventive step under PCT Article 33(3) as being
obvious over [21. [31
Examiner Note:
1. In bracket 1, pluralize 'claim' if needed, insert claim no.ts),
and the verb --lack-- or -Iacks-, as appropriate.
2. Inbracket 2, insert name ofprior art relied upon.
3. In bracket 3, add reasoning.
'f[ 18.02.01 Lacks Inventive Step - Two References
Claim [II an inventive step under PCT Article 33(3) as being
obvious over [2] in view of [3]. [4]
Examiner Note:
1. In bracket I, pluralize 'claim' if needed, insert claim no.(s),
and the verb --lack-- or -dacks-c, as appropriate.
2. In bracket 2, insert name of PRllv1ARY prior art relied upon,
3. In bracket 3, insert name of SECONDARY prior. art relied
upon.
4. In bracket 4, add reasoning.
'f[ 18.02.02 Lacks Inventive Step - Additional Reference
Claim [II an inventive step under PCT Article 33(3) as being
obvious over the prior art as applied in the immediately preceding
paragraph and further in view of [2]. [31
Examiner Note:
1. This form paragraph may follow either 18.02 or 18.02.01.
2. In bracket 1, pluralize 'claim' if needed, insert claimno.(s),
and the verb c.-lack-c.· or -clacks->, as appropriate.