IP Quick Tip: PCT Chapter II proceedings

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Read our IP Brochure on Patent Applications under the PCT. Connect with Henry Selby-Lowndes.

Hello everyone and welcome to today’s IP Quick Tip on Patent Cooperation Treaty, or PCT, Chapter II proceedings.

Chapter II is an optional further round of international examination which can give Applicants an additional chance to address objections raised in the opinion of the International Search Authority before that same patent authority. Since every contracting state has its own criteria for assessing patentability, this might seem like an extra layer of unnecessary costs. This is probably the case if only minor amendments are needed to address the objections.

However, if significant amendments are required, Chapter II can provide a very effective way of turning a negative opinion into a positive International Preliminary Examination Report, or IPER for short.

Although non-binding, a positive IPER may influence the opinion of national or regional patent offices, and even save costs at a later stage. In Chapter II, there may be more than one round of active correspondence between the Applicant and Examiner.

This is of great interest to start-ups and SMEs who need early certainty regarding the patentability of a certain technology and an application’s overall chances of success.

A strategic decision can then be made on whether to pursue the PCT application further.

On the other hand, in some cases it might make more sense not to risk a negative IPER and simply tackle the objections at a national or regional level. For further information on PCT applications, please take a look at our corresponding IP Brochure.