What is the scope of subject matter examined in international preliminary examination?

The scope of subject matter examined in international preliminary examination is broad but has some limitations. According to MPEP 1874:

“It should be noted that subject matter which is normally examined under U.S. national procedure should also be examined as an International Preliminary Examining Authority.”

However, there are some important considerations:

• Subject matter not searched under Chapter I will not be examined under Chapter II, even if claims are modified to be acceptable for examination.
• The International Preliminary Examining Authority may decide not to carry out an examination if the application relates to subject matter outside its required scope under the Regulations.
• Examiners should check the appropriate box on Form PCT/IPEA/408 or Form PCT/IPEA/409 if certain claims relate to subject matter for which no international preliminary examination is required.

To learn more:

• International Preliminary Examination
• PCT
• Patent Cooperation Treaty
• Subject Matter Scope
• Patent Examination