What is a Chapter II Demand?

After you receive your International Search Report and Written Opinion, the next step in the PCT process is to consider submitting informal comments, an amendment under Article 19 or Article 34, and/or making a Chapter II Demand. Although fewer than half of PCT applications choose to take advantage of this procedure, recent Patent Prosecution Highway (PPH) opportunities have made this a desirable option for PCT applicants. A Chapter II Demand provides the applicant a right to amend the application and file formal arguments that can be considered during the national stage. This can be especially cost-effective when compared to the expense of filing preliminary amendments in several jurisdictions, since the single PCT amendment will carry forth in all contracting PCT countries. Thus, one change works in over 150 countries. These arguments can be considered by the Examiner before the International Preliminary Examination Authority (IPEA) report is established and will often be used as a first office action on the merits in many national patent offices. This can change an unfavorable written opinion by the ISA into a favorable opinion in the International Preliminary Examination Report (IPER). It is important to understand that the Examiner will generally not run a new search on the amended claims. He will rely on the earlier search by the International Search Authority (ISA). Instead, he will be able to bring in new art if he is aware of it. (Remember, Examiners are generally experts in the art/technology and regularly review state of the art in that field).

Additionally, the Chapter II Demand entitles you to an oral Examiner interview if you request one at the time of filing. This can be especially useful if you have an initial report that is unfavorable, giving you a chance to change the Examiner’s mind before his report is final. These weigh heavily in the national stage so this can be a significant strategic advantage. A positive search report can be used to reduce costs and time in the total patent prosecution process in participating countries, in some case allowing for PPH program participation to accelerate examination at the national stage with the search and IPEA opinion.

In short, you should consider making a Chapter II Demand if you plan on taking advantage of the PPH procedure during the national stage. The Chapter II Demand offers cost- and time-reducing opportunities for your national applications. However, if you do not plan to utilize the PPH program, or your written opinion was favorable, a Chapter II Demand expense can be saved and written opinion will automatically become the IPER.