We will examine and present the issue in the form of examples (in 2 posts) so that it becomes easier for readers to understand.

Let's take the things from the beginning. During the examination of a PCT application the applicant will receive a Search Report together with the written opinion of the International Examining Authority (ISA), which gives a first, non-binding opinion on the issues of novelty , inventive step and industrial application presented by the application. In addition, the written opinion may mention various formal deficiencies, which the examiner found during the study of the application.
If the applicant decides not to file a request for International Preliminary Examination, the International Bureau will issue the International Examining Authority's written opinion as a Reference (ISR) and send it to the offices designated by the applicant in his application. If, on the other hand, the applicant, after reading the attached documents and the written opinion of the Examining Authority, decides to take action, then he should file an application with the International Preliminary Examining Authority (IPEA), requesting an International Preliminary Examination together with his arguments and corrections, as well as with the payment of the corresponding fees. Otherwise, the applicant may submit informal comments in response to the written opinion of the International Examining Authority, which will be kept in the application file and in the event that no request for an International Preliminary Examination is filed, they will be forwarded to the respective designated offices. The deadline for filing a request for an International Preliminary Examination is three months from the date of dispatch of the International Search Report or 22 months from the priority date (whichever is later). Additionally, the International Preliminary Examining, in addition to giving applicants the right to formally respond to an adverse written opinion, offers them the opportunity to amend the description, claims and/or plans of their application. The result of this process is the issuance of an International Preliminary Examination Report (IPER),

Let us now look at the cases separately:

 The first (and most favorable) case finds the applicant having received the International Examining Authority's Search Report, where all claims appear to be novel, have an inventive step and are capable of industrial application. Furthermore, the examiner makes no mention of formal omissions or other errors.

In such a case it is obvious that the examiner has not discovered anything "negative", the written opinion of the examining authority is overall positive with regard to the 3 main criteria and therefore the filing of a request for an international preliminary examination is of little use, except perhaps very specific cases, where the applicant wishes to modify one or more parts of his application. Essentially, the positive findings of the Research Report of the International Examining Authority will be transferred to the National and Regional Offices of the designated states and the examiners of each office will take them into account during the respective examination process before issuing the respective patent.

 The second case has to do respectively with a Research Report of the International Examining Authority, where all the claims appear to present novelty, to have an inventive step and to be amenable to industrial application, as before, with the difference that the examiner mentions one or more formal deficiencies.

Under the PCT Diplomas Treaty, all national or regional offices are obliged to accept the formal requirements detailed in the Treaty. An office has the possibility to apply a standard different from the requirements of the PCT Treaty, only if this standard is characterized (and is) more favorable to the applicant himself. There are therefore offices that have not included specific defects and deficiencies in their national legislation, or even if they have, they do not take them into account. However, in the event that the examiner detects formal deficiencies, the applicant must take these observations into account and decide: i) whether the national offices concerned will require the correction of these defects and ii) whether the cost of such corrections (by submitting a request for an International Preliminary Examination) will be less than making the corresponding corrections before each national office separately. The answer to these questions will depend on the type of formal deficiencies and on the States in which the application will be included in their national phase. In most cases it is probably best to correct before the national offices, and it probably makes little sense to correct by filing a request for a Preliminary Examination. Of course, each case must be considered separately and either the most economical procedure during the respective national phase must be chosen, or the process that best serves the problem strategically. For example, it may be more cost-effective for the applicant to correct specific problems early during the International phase, rather than before the designated Offices during the respective national phases, where, in country-specific cases, resolving these problems may be a tiresome issue. Also, there are cases where it is particularly important that an application enters the national phase with a "clean" research report. In such cases, even if the shortage concerns a limited number of Offices, and even if it adds some expense to the whole process, it is probably worth applying for an International Preliminary Examination. it may be more cost-effective for the applicant to correct specific problems early during the International phase, rather than before the designated Offices during the respective national phases, where, in country-specific cases, resolving these problems may be a tedious matter. Also, there are cases where it is particularly important that an application enters the national phase with a "clean" research report. In such cases, even if the shortage concerns a limited number of Offices, and even if it adds some expense to the whole process, it is probably worth applying for an International Preliminary Examination. it may be more cost-effective for the applicant to correct specific problems early during the International phase, rather than before the designated Offices during the respective national phases, where, in country-specific cases, resolving these problems may be a tedious matter. Also, there are cases where it is particularly important that an application enters the national phase with a "clean" research report. In such cases, even if the shortage concerns a limited number of Offices, and even if it adds some expense to the whole process, it is probably worth applying for an International Preliminary Examination. solving these problems can be a tedious matter. Also, there are cases where it is particularly important that an application enters the national phase with a "clean" research report. In such cases, even if the shortage concerns a limited number of Offices, and even if it adds some expense to the whole process, it is probably worth applying for an International Preliminary Examination. solving these problems can be a tedious matter. Also, there are cases where it is particularly important that an application enters the national phase with a "clean" research report. In such cases, even if the shortage concerns a limited number of Offices, and even if it adds some expense to the whole process, it is probably worth applying for an International Preliminary Examination.

(In the next post we will look at the most unfavorable cases that can be presented during the Report of the International Investigative Authority and we will see ways that these can be dealt with.)