PCT Article 33 — – The International Preliminary Examination (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting PCT Article 33, including 51 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Summary

The – The International Preliminary Examination is a process where the International Searching Authority issues an international search report (ISR) and written opinion within 3 months of receiving the search copy.

What this section covers

An international search report and written opinion will normally be issued by the International Searching Authority within 3 months from the receipt of the search copy.

Key obligations

An international search report and written opinion must be issued by the International Searching Authority within 3 months of receiving the search copy.
Practitioners must ensure compliance with the requirements for filing and responding to these documents within the specified timeframes.

Practice notes

Practitioners should carefully review the international search report and written opinion for any potential issues that may affect their application.
Practitioners should be aware of missing or incomplete claims in the search copy, as this can lead to delays and additional costs.

International Search Report and Written Opinion RequiredMPEP 1801
ISA Must Provide ISR and Prior Art Copies to ApplicantMPEP 1801
Listing of Relevant Documents in ISRMPEP 1801
Opinion on PCT Claim CriteriaMPEP 1801
Written Opinion on International Application Clarity and SupportMPEP 1801Permitted
A Citations Do Not Require Claim SpecificationMPEP 1844.01Recommended
Requirement for Continuation Sheet if Space FilledMPEP 1844.01
Demand for International Preliminary Examination After Filing PCT ApplicationMPEP 1864
Demand for International Preliminary Examination Requires Proper RequestMPEP 1864
International Search Report and Written Opinion Required for DemandMPEP 1864
Demand Allows Amendments to ApplicationMPEP 1864
U.S. Examiner Considers International Searching Authority's Written OpinionMPEP 1878
Further Written Opinion Required When Applicant Persuasively Argues Against Initial Written OpinionMPEP 1878Required
Further Written Opinion Required for New ArtMPEP 1878Recommended
Lack of Unity Should Not Be Raised NarrowlyMPEP 1850Recommended
Consider Degree of Interdependence Between AlternativesMPEP 1850Recommended
Lack of Unity When Independent Claims Share Common MatterMPEP 1850
Examiner Determination Based on MeritsMPEP 1850Prohibited
Translation Required for Priority ClaimMPEP 1870Permitted
Translation Required for Priority ClaimMPEP 1870Permitted
Priority Document Must Be Translated to EnglishMPEP 1878Permitted
Priority Claim Requires Translation Within Time LimitMPEP 1878Permitted
Written Opinion Must Be Prepared Simultaneously With International Search ReportMPEP 1878Required
Statement Must Cite Supporting DocumentsMPEP 1879Required
Conclusion Statement for Novelty, Inventive Step, and Industrial Applicability Must Be Accompanied by Supporting Citations and ExplanationsMPEP 1879Required
Identify Published Applications or Patents as Prior ArtMPEP 1879Recommended
Written Opinion Requirements Apply Mutatis MutandisMPEP 1843Required
Public Written Disclosure Is Prior ArtMPEP 1843.01Required
Non-Written Disclosures Not Considered Prior ArtMPEP 1843.01Prohibited
International Preliminary Report Must Address Non-Written DisclosuresMPEP 1843.01Required
Published Application Not Prior ArtMPEP 1843.01Prohibited
International Preliminary Report Must Address Certain Published DocumentsMPEP 1843.01Required
Patent Document E for Novelty Prior ArtMPEP 1844.01
Rules for Written Opinion Apply Mutatis MutandisMPEP 1845Required
Claims Meeting Industrial Applicability Follow Form 18.04.01MPEP 1845.01Recommended
Claims Must Meet Industrial Applicability CriteriaMPEP 1845.01Recommended
Positive Statements for Novelty and Inventive Step Required Before Form Paragraph 18.04MPEP 1845.01
Requirement for Further Written Opinion on Claims Lack of Novelty, Inventive Step, or Industrial ApplicabilityMPEP 1860Recommended
Prior Art Includes Worldwide Written Disclosures Before Relevant DateMPEP 1878.01(a)Required
Oral Disclosures Not Prior Art After Written NoticeMPEP 1878.01(a)Prohibited
International Preliminary Report Must Address Non-Written DisclosuresMPEP 1878.01(a)Required
Published Application Not Prior ArtMPEP 1878.01(a)Prohibited
International Preliminary Report Must Address Certain Published DocumentsMPEP 1878.01(a)Required
Novelty Requirement for PCTMPEP 1878.01(a)(1)
Inventive Step Requirement for PCTMPEP 1878.01(a)(2)
Claim Must Be Compared to Prior Art as a WholeMPEP 1878.01(a)(2)Required
Industrial Applicability Defined for Written Opinion and IP ReportMPEP 1878.01(a)(3)
Report Must Not State PatentabilityMPEP 1879Prohibited

Further Written Opinion Required When Applicant Persuasively Argues Against Initial Written OpinionMPEP 1878Required
Written Opinion Must Be Prepared Simultaneously With International Search ReportMPEP 1878Required
Statement Must Cite Supporting DocumentsMPEP 1879Required
Conclusion Statement for Novelty, Inventive Step, and Industrial Applicability Must Be Accompanied by Supporting Citations and ExplanationsMPEP 1879Required
Written Opinion Requirements Apply Mutatis MutandisMPEP 1843Required
Public Written Disclosure Is Prior ArtMPEP 1843.01Required
International Preliminary Report Must Address Non-Written DisclosuresMPEP 1843.01Required
International Preliminary Report Must Address Certain Published DocumentsMPEP 1843.01Required
Rules for Written Opinion Apply Mutatis MutandisMPEP 1845Required
Prior Art Includes Worldwide Written Disclosures Before Relevant DateMPEP 1878.01(a)Required
International Preliminary Report Must Address Non-Written DisclosuresMPEP 1878.01(a)Required
International Preliminary Report Must Address Certain Published DocumentsMPEP 1878.01(a)Required
Claim Must Be Compared to Prior Art as a WholeMPEP 1878.01(a)(2)Required

Applications Assigned to Relevant Examining TCsMPEP 708
Reduced Fees for PCT-Satisfying Applications in National StageMPEP 1893.03Permitted
Examination Order for Nonprovisional ApplicationsMPEP 708

MPEP Section	Rules
MPEP § 1801	International Search Report and Written Opinion RequiredMPEP 1801 ISA Must Provide ISR and Prior Art Copies to ApplicantMPEP 1801 Listing of Relevant Documents in ISRMPEP 1801 Opinion on PCT Claim CriteriaMPEP 1801 Written Opinion on International Application Clarity and SupportMPEP 1801Permitted
MPEP § 1843	Written Opinion Requirements Apply Mutatis MutandisMPEP 1843Required
MPEP § 1843.01	Public Written Disclosure Is Prior ArtMPEP 1843.01Required Non-Written Disclosures Not Considered Prior ArtMPEP 1843.01Prohibited International Preliminary Report Must Address Non-Written DisclosuresMPEP 1843.01Required Published Application Not Prior ArtMPEP 1843.01Prohibited International Preliminary Report Must Address Certain Published DocumentsMPEP 1843.01Required
MPEP § 1844.01	A Citations Do Not Require Claim SpecificationMPEP 1844.01Recommended Requirement for Continuation Sheet if Space FilledMPEP 1844.01 Patent Document E for Novelty Prior ArtMPEP 1844.01
MPEP § 1845	Rules for Written Opinion Apply Mutatis MutandisMPEP 1845Required
MPEP § 1845.01	Claims Meeting Industrial Applicability Follow Form 18.04.01MPEP 1845.01Recommended Claims Must Meet Industrial Applicability CriteriaMPEP 1845.01Recommended Positive Statements for Novelty and Inventive Step Required Before Form Paragraph 18.04MPEP 1845.01
MPEP § 1850	Lack of Unity Should Not Be Raised NarrowlyMPEP 1850Recommended Consider Degree of Interdependence Between AlternativesMPEP 1850Recommended Lack of Unity When Independent Claims Share Common MatterMPEP 1850 Examiner Determination Based on MeritsMPEP 1850Prohibited
MPEP § 1860	Requirement for Further Written Opinion on Claims Lack of Novelty, Inventive Step, or Industrial ApplicabilityMPEP 1860Recommended
MPEP § 1864	Demand for International Preliminary Examination After Filing PCT ApplicationMPEP 1864 Demand for International Preliminary Examination Requires Proper RequestMPEP 1864 International Search Report and Written Opinion Required for DemandMPEP 1864 Demand Allows Amendments to ApplicationMPEP 1864
MPEP § 1870	Translation Required for Priority ClaimMPEP 1870Permitted Translation Required for Priority ClaimMPEP 1870Permitted
MPEP § 1878	U.S. Examiner Considers International Searching Authority's Written OpinionMPEP 1878 Further Written Opinion Required When Applicant Persuasively Argues Against Initial Written OpinionMPEP 1878Required Further Written Opinion Required for New ArtMPEP 1878Recommended Priority Document Must Be Translated to EnglishMPEP 1878Permitted Priority Claim Requires Translation Within Time LimitMPEP 1878Permitted Written Opinion Must Be Prepared Simultaneously With International Search ReportMPEP 1878Required
MPEP § 1878.01(a)	Prior Art Includes Worldwide Written Disclosures Before Relevant DateMPEP 1878.01(a)Required Oral Disclosures Not Prior Art After Written NoticeMPEP 1878.01(a)Prohibited International Preliminary Report Must Address Non-Written DisclosuresMPEP 1878.01(a)Required Published Application Not Prior ArtMPEP 1878.01(a)Prohibited International Preliminary Report Must Address Certain Published DocumentsMPEP 1878.01(a)Required
MPEP § 1878.01(a)(1)	Novelty Requirement for PCTMPEP 1878.01(a)(1)
MPEP § 1878.01(a)(2)	Inventive Step Requirement for PCTMPEP 1878.01(a)(2) Claim Must Be Compared to Prior Art as a WholeMPEP 1878.01(a)(2)Required
MPEP § 1878.01(a)(3)	Industrial Applicability Defined for Written Opinion and IP ReportMPEP 1878.01(a)(3)
MPEP § 1879	Statement Must Cite Supporting DocumentsMPEP 1879Required Conclusion Statement for Novelty, Inventive Step, and Industrial Applicability Must Be Accompanied by Supporting Citations and ExplanationsMPEP 1879Required Identify Published Applications or Patents as Prior ArtMPEP 1879Recommended Report Must Not State PatentabilityMPEP 1879Prohibited
MPEP § 1893.03	Reduced Fees for PCT-Satisfying Applications in National StageMPEP 1893.03Permitted
MPEP § 708	Applications Assigned to Relevant Examining TCsMPEP 708 Examination Order for Nonprovisional ApplicationsMPEP 708

Related Provisions

Based on MPEP Last Modified: 10/30/2024 08:50:22

PCT Article 33 — – The International Preliminary Examination (MPEP Coverage Index) – BlueIron IP

PCT Article 33 – The International Preliminary Examination

Summary

Official MPEP § 33 — – The International Preliminary Examination

Article 33 – The International Preliminary Examination

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions