Chapter 1800 - Patent Cooperation Treaty


INTRODUCTION

[Editor Note: This chapter was not substantively revised for the Ninth Edition of the MPEP. Each section has a revision indicator of “[R-08.2012],” meaning that the section as reproduced in this Edition is the version in force in August 2012 with the following exceptions: 1) As a result of the publication process, form paragraphs reproduced in this chapter reflect the text used by examiners effective November 2013 rather than those in force in August 2012; 2) The marks indicating added or deleted text from prior revisions have been removed; and 3) The notation “[Reserved]” has been added for section numbers previously missing in the hierarchy (i.e., section numbers that were never used or no longer have text). See the ninth revision of the Eighth Edition of the MPEP published August 2012 as posted on the USPTO Web site on the MPEP Archives page (http://www.uspto.gov/web/offices/ pac/mpep/old/index.htm) for the text of form paragraphs in force in August 2012 and the prior revision marks.]

This chapter is designed to be a guide for patent examiners in searching and examining applications filed under the Patent Cooperation Treaty (PCT). Applicants desiring additional information for filing international applications should obtain a copy of the PCT Applicant’s Guide from the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

The Articles and Regulations under the PCT are reproduced in Appendix T of this Manual and the Administrative Instructions are reproduced in Appendix AI of this Manual. The text of the PCT Applicant’s Guide , the monthly PCT Newsletter , the weekly PCT Gazette , downloadable PCT forms, and additional information about the processing of international applications are available from WIPO’s website (www.wipo.int/pct).

PCT applications are processed by the International Application Processing Division within the U.S. Patent and Trademark Office.

1801    Basic Patent Cooperation Treaty (PCT) Principles [R-08.2012]

I.   MAJOR CONCEPTS OF THE PCT

The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, “an international application,” in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant “designates” or “elects,” that is, names, as countries or regions in which patent protection is desired. (For international applications filed on or after January 1, 2004, the filing of an international application will automatically constitute the designation of all contracting countries to the PCT on that filing date.) In the same manner, the PCT enables foreign applicants to file a PCT international application, designating the United States of America, in their home language in their home patent office and have the application acknowledged as a regular U.S. national filing. The PCT also provides for an international search report and written opinion (for international applications filed on or after January 1, 2004) that are established normally at 16 months from the priority date, and publication of the international application after 18 months from the priority date. Upon payment of national fees and the furnishing of any required translation, usually 30 months after the filing of any priority application for the invention, or the international filing date if no priority is claimed, the application will be subjected to national procedures for granting of patents in each of the designated countries. For any countries remaining whose national laws are not compatible with the 30 month period set forth in PCT Article 22(1), the filing of a demand for an international preliminary examination electing such countries within 19 months from the priority date will result in an extension of the period for entering the national stage to 30 months from the priority date. An up-to-date list of such countries may be found on WIPO’s web site (www.wipo.int/pct/en/index.html). A brief description of the basic flow under the PCT is provided in MPEP § 1842 .

The PCT offers an alternative route to filing patent applications directly in the patent offices of those countries which are Contracting States of the PCT. It does not preclude taking advantage of the priority rights and other advantages provided under the Paris Convention and the WTO administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement). The PCT provides an additional and optional foreign filing route to patent applicants.

The filing, search and publication procedures are provided for in Chapter I of the PCT. Additional procedures for a preliminary examination of PCT international applications are provided for in optional PCT Chapter II.

In most instances a national U.S. application is filed first. An international application for the same subject matter will then be filed subsequently within the priority year provided by the Paris Convention and the priority benefit of the U.S. national application filing date will be claimed.

II.   RECEIVING OFFICE (RO)

The international application (IA) must be filed in the prescribed receiving Office (RO)( PCT Article 10 ). The United States Patent and Trademark Office will act as a receiving Office for United States residents and nationals ( 35 U.S.C. 361(a) ). Under PCT Rule 19.1(a)(iii) , the International Bureau of the World Intellectual Property Organization will also act as a Receiving Office for U.S. residents and nationals. The receiving Office functions as the filing and formalities review organization for international applications. International applications must contain upon filing the designation of at least one Contracting State in which patent protection is desired and must meet certain standards for completeness and formality ( PCT Articles 11(1) and 14(1) ).

Where a priority claim is made, the date of the earlier filed national application is used as the date for determining the timing of international processing, including the various transmittals, the payment of certain international and national fees, and publication of the application. Where no priority claim is made, the international filing date will be considered to be the “priority date” for timing purposes ( PCT Article 2(xi) ).

The international application is subject to the payment of certain fees within 1 month from the date of filing. The receiving Office will grant an international filing date to the application, collect fees, handle informalities by direct communication with the applicant, and monitor all corrections ( 35 U.S.C. 361(d) ). By 13 months from the priority date, the receiving Office should prepare and transmit a copy of the international application, called the search copy (SC), to the International Searching Authority (ISA); and forward the original, called the record copy (RC), to the International Bureau (IB) ( PCT Rules 22.1 and 23 ). A second copy of the international application, the home copy (HC), remains in the receiving Office ( PCT Article 12(1) ). Once the receiving Office has transmitted copies of the application, the International Searching Authority becomes the focus of international processing.

III.   INTERNATIONAL SEARCHING AUTHORITY (ISA)

The basic functions of the International Searching Authority (ISA) are to conduct a prior art search of inventions claimed in international applications; it does this by searching in at least the minimum documentation defined by the Treaty ( PCT Articles 15 and 16 and PCT Rule 34 ), and for international applications filed on or after January 1, 2004, to issue a written opinion (PCT Rule 43 bis ) which will normally be considered to be the first written opinion of the International Preliminary Examining Authority where international preliminary examination is demanded. SeePCT Rule 66.1 bis .

For most applications filed with the United States Receiving Office, the applicant may choose (in the Request form) the U.S. Patent and Trademark Office , the European Patent Office , or the Korean Intellectual Property Office to act as the International Searching Authority. However, the European Patent Office may not be competent to act as an International Searching Authority for certain applications filed by nationals or residents of the United States. See MPEP § 1840.01 for a discussion of applications and subject matter that will not be searched by the European Patent Office. The International Searching Authority is also responsible for checking the content of the title and abstract ( PCT Rules 37.2 and 38.2 ).

An international search report (ISR), and for international applications filed on or after January 1, 2004, a written opinion, will normally be issued by the International Searching Authority within 3 months from the receipt of the search copy (usually about 16 months after the priority date) ( PCT Rule 42 ). Copies of the international search report and prior art cited will be sent to the applicant by the ISA ( PCT Rules 43 and 44.1 ). The international search report will contain a listing of documents found to be relevant and will identify the claims in the application to which they are pertinent. In applications filed on or after January 1, 2004, the ISA will normally issue a written opinion as to whether each claim appears to satisfy the PCT Article 33 criteria of “novelty,” “inventive step,” and “industrially applicable.” The written opinion may also indicate defects in the form or content of the international application under the PCT articles and regulations, as well as any observations the ISA wishes to make on the clarity of the claims, the description, and the drawings, or on the question of whether the claims are fully supported by the description.

Once the international search report and written opinion are established, the ISA transmits one copy of each to the applicant and the International Bureau, and international processing continues before the International Bureau.

IV.   INTERNATIONAL BUREAU (IB)

The basic functions of the International Bureau (IB) are to maintain the master file of all international applications and to act as the publisher and central coordinating body under the Treaty. The World Intellectual Property Organization (WIPO) in Geneva, Switzerland performs the duties of the International Bureau.

If the applicant has not filed a certified copy of the priority document in the receiving Office with the international application, or requested upon filing that the receiving Office prepare and transmit to the International Bureau a copy of the prior U.S. national application, the priority of which is claimed, the applicant must submit such a document directly to the International Bureau or the receiving Office not later than 16 months after the priority date ( PCT Rule 17 ). The request (Form PCT/RO/101) contains a box which can be checked requesting that the receiving Office prepare the certified copy. This is only possible, of course, if the receiving Office is a part of the same national Office where the priority application was filed.

The applicant has normally 2 months from the date of transmittal of the international search report to amend the claims by filing an amendment and may file a brief statement explaining the amendment directly with the International Bureau ( PCT Article 19 and PCT Rule 46 ). The International Bureau will then normally publish the international application along with the search report and any amended claims at the expiration of 18 months from the priority date ( PCT Article 21 ). The written opinion, on the other hand, will not be made publicly available until the expiration of 30 months from the priority date. See PCT Rule 44 ter . The international publication includes a front page containing bibliographical data, the abstract, and a figure of the drawing ( PCT Rule 48 ). The publication also contains the search report and any amendments to the claims submitted by the applicant. If the application is published in a language other than English, the search report and abstract are also published in English. The International Bureau publishes a PCT Gazette in the French and English languages which contains information similar to that on the front pages of published international applications, as well as various indexes and announcements ( PCT Rule 86 ). The International Bureau also transmits copies of the publication of the international application to all designated Offices that have requested to receive the publication (PCT Article 20PCT Rule 47, and PCT Rule 93 bis .1) .

V.   DESIGNATED OFFICE (DO) and ELECTED OFFICE (EO)

The designated Office is the national Office (for example, the USPTO) acting for the state or region designated under Chapter I. Similarly, the elected Office is the national Office acting for the state or region elected under Chapter II.

PCT Article 22(1) was amended, effective April 1, 2002, to specify that a copy of the international application, a translation thereof (as prescribed), and the national fee are due to the designated Office not later than at the expiration of 30 months from the priority date. Accordingly, the time period for filing the copy of the international application, the translation, and the fee under PCT Article 22 is now the same as the 30 month time period set forth in PCT Article 39 . The USPTO has adopted the 30 month time limit set forth in PCT Article 22(1). Most Contracting States have changed their national laws for consistency with PCT Article 22(1) as amended. An up-to-date listing of Contracting States that have adopted Article 22(1) as amended is maintained at WIPO’s website at http://www.wipo.int/pct/en/texts/pdf/time_limits.pdf. For those few remaining Contracting States that have not adopted Article 22(1) as amended, if no “Demand” for international preliminary examination has been filed within 19 months of the priority date, the applicant may be required to complete the requirements for entering the national stage within 20 months from the priority date of the international application in the national offices of those states. When entering the national stage following Chapter I, the applicant has the right to amend the application within the time limit set forth in PCT Rule 52.1 . After this time limit has expired (PCT Article 28 and PCT Rule 52 ), each designated Office will make its own determination as to the patentability of the application based upon its own specific national or regional laws (PCT Article 27(5)).

If the applicant desires to obtain the benefit of delaying the entry into the national stage until 30 months from the priority date in one or more countries where the 30 month time limit set forth inPCT Article 22(1) as amended does not apply, a Demand for international preliminary examination must be filed with an appropriate International Preliminary Examining Authority within 19 months of the priority date. Those states in which the Chapter II procedure is desired must be “elected” in the Demand. For international applications filed on or after January 1, 2004, the applicant should file the demand with the competent International Preliminary Examining Authority (IPEA) before the expiration of the later of the following time limits: (A) three months from the date of transmittal to the applicant of the international search report and written opinion under PCT Rule 43 bis .1, or of the declaration referred to in PCT Article 17(2)(a) ; or (B) 22 months from the priority date of the international application. However, applicant may still desire to file the demand by 19 months from the priority date for those countries that have not yet adopted PCT Article 22(1) as amended.

The original Demand is forwarded to the International Bureau by the IPEA. The International Bureau then notifies the various elected Offices that the applicant has entered Chapter II and sends a copy of any amendments filed under PCT Article 19 and any statement explaining the amendments to the IPEA. See PCT Rule 62. In applications filed on or after January 1, 2004, the International Bureau also sends the IPEA a copy of the written opinion established by the International Searching Authority unless the International Searching Authority is also acting as IPEA. See PCT Rule 62.1(i).

VI.   INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY (IPEA)

The International Preliminary Examining Authority (IPEA) normally starts the examination process when it is in possession of:

  • (A) the demand;
  • (B) the amount due;
  • (C) if the applicant is required to furnish a translation under PCT Rule 55.2, that translation;
  • (D) either the international search report or a notice of the declaration by the International Searching Authority (ISA) that no international search report will be established; and
  • (E) if the international application has a filing date on or after January 1, 2004, the written opinion established under PCT Rule 43 bis .1.

However, for international applications having an international filing date on or after January 1, 2004, the IPEA shall not start the international preliminary examination before the expiration of the later of three months from the transmittal of the international search report (or declaration that no international search report will be established) and written opinion; or the expiration of 22 months from the priority date unless the applicant expressly requests an earlier start, with the exception of the situations provided for in PCT Rule 69.1(b)-(e).

The written opinion of the ISA is usually considered the first written opinion of the IPEA unless the IPEA has notified the International Bureau that written opinions established by specified International Searching Authorities shall not be considered a written opinion for this purpose. See PCT Rule 66.1 bis . Also, the IPEA may, at its discretion issue further written opinions provided sufficient time is available. See PCT Rule 66.4.

The IPEA establishes the international preliminary examination report (entitled “international preliminary report on patentability” for applications having an international filing date on or after January 1, 2004), which presents the examiner’s final position as to whether each claim is “novel,” involves “inventive step,” and is “industrially applicable” by 28 months from the priority date. A copy of the international preliminary examination report is sent to the applicant and to the International Bureau. The International Bureau then communicates a copy of the international preliminary examination report to each elected Office.

The applicant must complete the requirements for entering the national stage by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application as to that elected Office; however, some elected Offices provide a longer period to complete the requirements.

A listing of all national and regional offices, and the corresponding time limits for entering the national stage after PCT Chapter I and PCT Chapter II, may be found on WIPO’s web site at: http://www.wipo.int/pct/en/index.html.

1802    PCT Definitions [R-08.2012]

The PCT contains definitions in PCT Article 2 and in PCT Rule 2 , which are found in MPEP Appendix T. Additional definitions are in 35 U.S.C. 351 , found in MPEP Appendix L, in 37 CFR 1.9and 1.401 , found in MPEP Appendix R, and in PCT Administrative Instructions Section 101 , found in MPEP Appendix AI.

1803    Reservations Under the PCT Taken by the United States of America [R-08.2012]

The United States of America had originally declared that it was not bound by Chapter II ( PCT Article 64 (1) ), but withdrew that reservation on July 1, 1987.

It has also declared that, as far as the United States of America is concerned, international publication is not required ( PCT Article 64 (3) ). Accordingly, under PCT Article 64(3)(b), if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months. Even though the United States Patent and Trademark Office has begun pre-grant publication under 35 U.S.C. 122(b), the United States has not removed its reservation under PCT Article 64(3)because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application will, however, be published under 35 U.S.C.122(b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent.

The United States of America also made a reservation under PCT Article 64(4) which relates to the prior art effective date of a U.S. patent issuing from an international application. See 35 U.S.C. 102(e) and 363 .

The above reservations under PCT Article 64(3) and (4) are still in effect.

The U.S. Receiving Office continues to accept applications only in English. See 35 U.S.C. 361(c)PCT Rules 20.1(c) 26.3 ter (a) and 26.3 ter (c) permit an international filing date to be accorded even though portions of an international application are in a language not acceptable to the Receiving Office. PCT Rules 20.1 (c) , 26.3 ter (a) and 26.3 ter (c) are not compatible with the national law applied by the United States Patent and Trademark Office (USPTO) as Receiving Office. Thus, the USPTO has taken a reservation on adherence to these Rules pursuant to PCT Rules 20.1 (d) , 26.3 ter (b) and 26.3 ter (d). As a result, PCT Rules 20.1 (c) , 26.3 ter (a) and 26.3 ter (c) shall not apply to the USPTO as Receiving Office for as long as the aforementioned incompatibility exists.

PCT Rules 49.5 ( c- bis ) and 49.5 (k) continue not to be compatible with the national law applied by the USPTO as a Designated Office. See 35 U.S.C. 371 (c)(2). Also, PCT Rules 49 ter .1(a)-(d) and 49 ter .2( a)-(g) are not compatible with the national law applied by the USPTO as a Designated Office. See 35 U.S.C. 119 (a). Thus, the USPTO has taken a reservation on adherence to these Rules pursuant to PCT Rules 49.5 (l), 49 t er .1 (g) and 49 ter .2 (h). As a result, PCT Rules 49.5 ( c- bis ) , 49.5(k) , 49 ter .1(a)-(d) and 49 ter .2(a)-(g) shall not apply to the USPTO as Designated Office for as long as the aforementioned incompatibility exists. See the International Bureau’s notice published on the WIPO web site at: http://www.wipo.int/pct/en/texts/reservations/res_incomp.pdf.

1804    [Reserved]

1805    Where To File an International Application [R-08.2012]

35 U.S.C. 361  Receiving Office.

(a) The Patent and Trademark Office shall act as a Receiving Office for international applications filed by nationals or residents of the United States. In accordance with any agreement made between the United States and another country, the Patent and Trademark Office may also act as a Receiving Office for international applications filed by residents or nationals of such country who are entitled to file international applications.

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See 37 CFR 1.421 - 1.423 as to who can file an international application.

Only if at least one of the applicants is a resident or national of the United States of America may an international application be filed in the United States Receiving Office ( PCT Article 9(1)and (3), PCT Rules 19.1 and 19.2 , 35 U.S.C. 361(a) and 37 CFR 1.412(a) , 1.421 ). The concepts of residence and nationality are defined in PCT Rule 18.1 . For the purpose of filing an international application, the applicant may be either the inventor or the successor in title of the inventor (assignee or owner). However, the laws of the various designated States regarding the requirements for applicants must also be considered when filing an international application. For example, the patent law of the United States of America requires that, for the purposes of designating the United States of America, the applicant(s) must be the inventor(s) ( 35 U.S.C. 373 , PCT Article 27(3) ).

The United States Receiving Office is located at 2900 Crystal Drive in Arlington, Virginia. International applications and related papers may be deposited with the United States Receiving Office by addressing the papers to "Mail Stop PCT" and delivering them to the Customer Service Window at the USPTO’s Alexandria headquarters. The street address is: U.S. Patent and Trademark Office, Customer Service Window, Mail Stop PCT, Randolph Building, 401 Dulany Street, Alexandria, VA 22314. The mailing address for delivery by the U.S. Postal Service is: Mail Stop PCT, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. It should be noted that the “Express Mail” provisions of 37 CFR 1.10 apply to the filing of all applications and papers filed in the U.S. Patent and Trademark Office, including PCT international applications and related papers and fees. It should be further noted, however, that PCT international applications and papers relating to international applications are specifically excluded from the Certificate of Mailing or Transmission procedures under 37 CFR 1.8 . See MPEP § 1834 . If 37 CFR 1.8 is improperly used, the date to be accorded the paper will be the date of actual receipt in the Office unless the receipt date falls on a Saturday, Sunday, or Federal holiday in which case the date of receipt will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday ( 37 CFR 1.6 ).

Irrespective of the Certification practice under 37 CFR 1.8(a) , facsimile transmission (without the benefit of the certificate under 37 CFR 1.8(a) ) may be used to submit certain papers in international applications. However, facsimile transmission may not be used for the filing of an international application, the filing of color drawings under 37 CFR 1.437 , or the filing of a copy of the international application and the basic national fee to enter the U.S. national stage under 35 U.S.C. 371 . See 37 CFR 1.6(d) (3) and (4), 1.8 (a)(2)(i)(D), and 1.8 (a)(2)(i)(F). The Demand for international preliminary examination may be filed by facsimile transmission. See MPEP § 1834.01 .

The United States Receiving Office and PCT Help Desk are available to offer guidance on PCT requirements and procedures. See MPEP § 1730 for information on contacting the staff and other available means for obtaining information.

WARNING - although the United States patent law at 35 U.S.C. 21(a) authorizes the Director to prescribe by rule that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service, PCT Rule 20.1(a) provides for marking the “date of actual receipt on the request.” Although the “Express Mail” provisions under 37 CFR 1.10 have not been contested to date regarding PCT applications, applicants should be aware of a possible different interpretation by foreign authorities.

PCT Rule 19.4 provides for transmittal of an international application to the International Bureau as Receiving Office in certain instances. For example, when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite residence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See 37 CFR 1.412(c) (6). The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office. This practice will avoid the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application indicates an applicant to be a national or resident of a PCT Contracting state or is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office. Of course, where questions arise regarding residence or nationality, i.e., the U.S. is not clearly competent, the application will be forwarded to the International Bureau as Receiving Office. Note, where no residence or nationality is indicated, the U.S. is not competent, and the application will be forwarded to the International Bureau as Receiving Office so long as the necessary fee is paid. The fee is an amount equal to the transmittal fee.

If all of the applicants are indicated to be residents or nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an international filing date.

Any applicant who is a resident or national of a PCT Contracting State may also file their application directly with the International Bureau as receiving Office. An applicant may wish to consider filing directly with the International Bureau as receiving Office instead of the United States Receiving Office in the situation where applicant is filing their international application after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. See MPEP § 1828.01. An applicant may also request that an application be forwarded to the International Bureau for processing in its capacity as receiving Office in accordance with PCT Rule 19.4 (a)(iii) in situations where the international application was filed with the United States Receiving Office after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard.

Applications filed with, or forwarded to, the International Bureau must have a foreign filing license.

1806    [Reserved]

1807    Agent or Common Representative and General Power of Attorney [R-08.2012]

37 C.F.R. 1.455  Representation in international applications.

  • (a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative ( PCT Art. 49 , Rules 4.8 and 90 and § 11.9 ). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record ( PCT Rule 90.1 (d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated ( PCT Rule 90.6 (b) and (c)).
  • (b) Appointment of an agent, attorney or common representative (PCT Rule 4.8 ) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
  • (c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
  • (d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions .

PCT Rule 90

Agents and Common Representatives

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90.4. Manner of Appointment of Agent or Common Representative

  • (a) The appointment of an agent shall be effected by the applicant signing the request, the demand, or a separate power of attorney. Where there are two or more applicants, the appointment of a common agent or common representative shall be effected by each applicant signing, at his choice, the request, the demand or a separate power of attorney.
  • (b) Subject to Rule 90.5 , a separate power of attorney shall be submitted to either the receiving Office or the International Bureau, provided that, where a power of attorney appoints an agent under Rule 90.1 (b), (c), or (d)(ii), it shall be submitted to the International Searching Authority or the International Preliminary Examining Authority, as the case may be.
  • (c) If the separate power of attorney is not signed, or if the required separate power of attorney is missing, or if the indication of the name or address of the appointed person does not comply with Rule 4.4 , the power of attorney shall be considered nonexistent unless the defect is corrected.
  • (d) Subject to paragraph (e), any receiving Office, any International Searching Authority, any International Preliminary Examining Authority and the International Bureau may waive the requirement under paragraph (b) that a separate power of attorney be submitted to it, in which case paragraph (c) shall not apply.
  • (e) Where the agent or the common representative submits any notice of withdrawal referred to in Rules 90 bis .1 to 90 bis .4 , the requirement under paragraph (b) for a separate power of attorney shall not be waived under paragraph (d).

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Where an appointment of an agent or common representative is effected by a separate power of attorney, that power of attorney must be submitted to either the receiving Office or the International Bureau. However, a power of attorney appointing an agent or subagent to represent the applicant specifically before the International Searching Authority or the International Preliminary Examining Authority must be submitted directly to that Authority. See PCT Rule 90.4 (b).

The Customer Number Practice set forth in MPEP § 403 may not be used in the international phase to appoint an agent or designate a correspondence address. A power of attorney making use of the Customer Number Practice in the international phase to indicate the name or address of an appointed person will be considered nonexistent unless the defect is corrected. See PCT Rule 90.4 (c).

I.   “GENERAL” POWER OF ATTORNEY

PCT Rule 90

Agents and Common Representatives

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90.5. General Power of Attorney

  • (a) Appointment of an agent in relation to a particular international application may be effected by referring in the request, the demand, or a separate notice to an existing separate power of attorney appointing that agent to represent the applicant in relation to any international application which may be filed by that applicant (i.e., a “general power of attorney”), provided that:
    • (i) the general power of attorney has been deposited in accordance with paragraph (b), and
    • (ii) a copy of it is attached to the request, the demand or the separate notice, as the case may be; that copy need not be signed.
  • (b) The general power of attorney shall be deposited with the receiving Office, provided that, where it appoints an agent under Rule 90.1 (b), (c), or (d)(ii), it shall be deposited with the International Searching Authority or the International Preliminary Examining Authority, as the case may be.
  • (c) Any receiving Office, any International Searching Authority and any International Preliminary Examining Authority may waive the requirement under paragraph (a)(ii) that a copy of the general power of attorney is attached to the request, the demand or the separate notice, as the case may be.
  • (d) Notwithstanding paragraph (c), where the agent submits any notice of withdrawal referred to in Rules 90 bis .1 to 90 bis .4 to the receiving Office, the International Searching Authority or the International Preliminary Examining Authority, a copy of the general power of attorney shall be submitted to that Office or Authority.

*****

“General” powers of attorney are recognized for the purpose of filing and prosecuting an international application before the international authorities. See PCT Rule 90.5 .

Any general power of attorney must be filed with the receiving Office if the appointment was for the purposes of the international phase generally, or with the International Searching Authority or International Preliminary Examining Authority if the appointment was specifically to represent the applicant before that Authority. The appointment will then be effective in relation to any particular application filed by that applicant provided that the general power of attorney is referred to in the request, the Demand or a separate notice, and that a copy of the general power of attorney is attached to that request, Demand or separate notice. That copy of the signed original need not, itself, be separately signed.

II.   WAIVER OF REQUIREMENT FOR A POWER OF ATTORNEY

Pursuant to PCT Rules 90.4 (d) and 90.5 (c), which are applicable to international applications having an international filing date on or after January 1, 2004, the receiving Office, International Bureau, International Searching Authority and International Preliminary Examining Authority may waive the requirement for a separate power of attorney or copy of the general power of attorney in all cases except with respect to notice of withdrawals under PCT Rule 90 bis (i.e., notices withdrawing international applications, designations, priority claims, demands or elections). The USPTO, when acting in its capacity as a receiving Office, International Searching Authority, or International Preliminary Examining Authority, will in most cases waive the requirement for a separate power of attorney and copy of the general power of attorney in international applications having an international filing date on or after January 1, 2004. However, a separate power of attorney or copy of the general power of attorney may still be required in certain cases, e.g., where an agent’s authority to act on behalf of the applicant is in doubt.

Model power of attorney and general power of attorney forms are available online from WIPO’s web site (www.wipo.int/pct/en/index.html).

1808    Change in or Revocation of the Appointment of an Agent or a Common Representative [R-08.2012]

PCT Rule 90

Agents and Common Representatives

*****

90.6. Revocation and Renunciation

  • (a) Any appointment of an agent or common representative may be revoked by the persons who made the appointment or by their successors in title, in which case any appointment of a sub-agent under Rule 90.1 (d) by that agent shall also be considered as revoked. Any appointment of a subagent under Rule 90.1 (d) may also be revoked by the applicant concerned.
  • (b) The appointment of an agent under Rule 90.1 (a) shall, unless otherwise indicated, have the effect of revoking any earlier appointment of an agent made under that Rule.
  • (c) The appointment of a common representative shall, unless otherwise indicated, have the effect of revoking any earlier appointment of a common representative.
  • (d) An agent or a common representative may renounce his appointment by a notification signed by him.
  • (e) Rule 90.4 (b) and (c) shall apply, mutatis mutandis , to a document containing a revocation or renunciation under this Rule.

37 C.F.R. 1.455  Representation in international applications.

  • (a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative ( PCT Art. 49 , Rules 4.8 and 90 and § 11.9 ). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record ( PCT Rule 90.1 (d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated ( PCT Rule 90.6 (b) and (c)).
  • (b) Appointment of an agent, attorney or common representative (PCT Rule 4.8 ) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
  • (c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
  • (d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions .

The appointment of an agent or a common representative can be revoked. The document containing the revocation must be signed by the persons who made the appointment or by their successors in title. The appointment of a sub-agent may also be revoked by the applicant concerned. If the appointment of an agent is revoked, any appointment of a sub-agent by that agent is also considered revoked. Also, as an agent may not be appointed by Customer Number Practice in the international phase (see MPEP §  1807 ), an appointment of an agent may not be revoked by reference to a Customer Number.

The appointment of an agent for the international phase in general automatically has the effect, unless otherwise indicated, of revoking any earlier appointment of an agent. The appointment of a common representative similarly has the effect, unless otherwise indicated, of revoking any earlier appointment of a common representative.

Renunciation of an appointment may be made by means of a notification signed by the agent or common representative. The applicant is informed of the renunciation by the International Bureau.

The rules for signing and submission of a power of attorney set forth in PCT Rule 90.4 (b) and (c) also apply to a revocation or renunciation of an appointment. See PCT Rule 90.6 (e).

U.S. attorneys or agents wishing to withdraw from representation in international applications may request to do so. To expedite the handling of requests for permission to withdraw as attorney, the request should be submitted to Mail Stop PCT and should indicate the present mailing addresses of the attorney who is withdrawing and of the applicant. The Office will not accept address changes to a new practitioner or law firm absent the filing of a power of attorney to the new representative. Because the United States Patent and Trademark Office (USPTO) does not recognize law firms, each attorney of record must sign the notice of withdrawal, or the notice of withdrawal must contain a clear indication of one attorney signing on behalf of another.

In accordance with 37 CFR 10.40 , the USPTO will usually require the practitioner(s) to certify that he, she or they have: (1) given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner(s) intends to withdraw from employment; (2) delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and (3) notified the client of any replies that may be due and the time frame within which the client must respond. Furthermore, as 37 CFR 10.40 permits withdrawal from representation before the Office for reasons set forth in 37 CFR 10.40 (b) and (c), if the reasons for withdrawal do not conform to one of the mandatory or permissive reasons set forth in 37 CFR 10.40 , the Office will not approve the request.

The Office will not approve requests from practitioners to withdraw from applications where the requesting practitioner was not appointed in a power of attorney but is acting, or has acted, in a representative capacity pursuant to 37 CFR 1.34 . In these situations, the practitioner is responsible for the correspondence the practitioner files in the application while acting in a representative capacity. As such, there is no need for the practitioner to obtain the permission of the Office to withdraw from representation.

Practitioners should note that the International Bureau will not record a change in the agent if the requested change is received by it after the expiration of 30 months from the priority date. See PCT Rule 92 bis . Where a request to withdraw from representation is filed with the USPTO after the expiration of this time period, the request may not be treated on the merits.

For withdrawal of attorney or agent in the national stage, see MPEP § 402.06 .

1809    [Reserved]

1810    Filing Date Requirements [R-08.2012]

PCT Article 11

Filing Date and Effects of the International Application

  • (1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that, at the time of receipt:
    • (i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
    • (ii) the international application is in the prescribed language,
    • (iii) the international application contains at least the following elements:
      • (a) an indication that it is intended as an international application,
      • (b) the designation of at least one Contracting State,
      • (c) the name of the applicant, as prescribed,
      • (d) a part which on the face of it appears to be a description,
      • (e) a part which on the face of it appears to be a claim or claims.

*****

35 U.S.C. 363  International application designating the United States: Effect.

An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office except as otherwise provided in section 102(e) of this title.

35 U.S.C. 373  Improper Applicant.

An international application designating the United States, shall not be accepted by the Patent and Trademark Office for the national stage if it was filed by anyone not qualified under chapter 11 of this title to be an applicant for the purpose of filing a national application in the United States. Such international applications shall not serve as the basis for the benefit of an earlier filing date under section 120 of this title in a subsequently filed application, but may serve as the basis for a claim of the right of priority under subsections (a) through (d) of section 119 of this title, if the United States was not the sole country designated in such international application.

37 C.F.R. 1.431  International application requirements.

  • (a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or more claims, an abstract, and one or more drawings (where required). ( PCT Art. 3 (2) and Section 207 of the Administrative Instructions .)
  • (b) An international filing date will be accorded by the United States Receiving Office, at the time of receipt of the international application, provided that:
    • (1) At least one applicant is a United States resident or national and the papers filed at the time of receipt of the international application so indicate ( 35 U.S.C. 361 (a), PCT Art. 11 (1)(i)).
    • (2) The international application is in the English language ( 35 U.S.C. 361 (c), PCT Art. 11 (1)(ii)).
    • (3) The international application contains at least the following elements (PCT Art. 11 (1)(iii)):
      • (i) An indication that it is intended as an international application (PCT Rule 4.2 );
      • (ii) The designation of at least one Contracting State of the International Patent Cooperation Union (§ 1.432 );
      • (iii) The name of the applicant, as prescribed (note §§ 1.421 - 1.423 );
      • (iv) A part which on the face of it appears to be a description; and
      • (v) A part which on the face of it appears to be a claim.
  • (c) Payment of the international filing fee (PCT Rule 15.2 ) and the transmittal and search fees (§ 1.445 ) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. The international filing, transmittal, and search fee payable is the international filing, transmittal, and search fee in effect on the receipt date of the international application.
    • (1) If the international filing, transmittal and search fees are not paid within one month from the date of receipt of the international application and prior to the sending of a notice of deficiency which imposes a late payment fee, applicant will be notified and given one month within which to pay the deficient fees plus the late payment fee. Subject to paragraph (c)(2) of this section, the late payment fee will be equal to the greater of:
      • (i) Fifty percent of the amount of the deficient fees; or
      • (ii) An amount equal to the transmittal fee.
    • (2) The late payment fee shall not exceed an amount equal to fifty percent of the international filing fee not taking into account any fee for each sheet of the international application in excess of thirty sheets (PCT Rule 16 bis ).
    • (3) The one-month time limit set pursuant to paragraph (c) of this section to pay deficient fees may not be extended.
  • (d) If the payment needed to cover the transmittal fee, the international filing fee, the search fee, and the late payment fee pursuant to paragraph (c) of this section is not timely made in accordance with PCT Rule 16 bis .1 (e), the Receiving Office will declare the international application withdrawn under PCT Article 14 (3)(a).

  THE “INTERNATIONAL FILING DATE”

An international filing date is accorded to the earliest date on which the requirements under PCT Article 11 (1) were satisfied. If the requirements under PCT Article 11 (1) are not satisfied as of the date of initial receipt of the international application papers, the receiving Office will invite applicant to correct the deficiency within a set time limit. See PCT Article 11 (2) and PCT Rule 20.3. In such case, the international filing date will be the date on which a timely filed correction is received by the receiving Office. In applications filed on or after April 1, 2007, if the defect under PCT Article 11 (1) is that the purported international application fails to contain a portion which on its face appears to be a description or claims, and if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the initial receipt date may be retained as the international filing date if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6 . If the defect under PCT Article 11 (1) is not timely corrected, the receiving Office will promptly notify the applicant that the application is not and will not be treated as an international application. See PCT Rule 20.4 . Where all the sheets pertaining to the same international application are not received on the same day by the receiving Office, in most instances, the date of receipt of the application will be amended to reflect the date on which the last missing sheets were received. As an amended date of receipt may cause the priority claim to be forfeited, applicants should assure that all sheets of the application are deposited with the receiving Office on the same day. In applications filed on or after April 1, 2007, if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the initial receipt date may be retained as the international filing date if the submitted correction was completely contained in the earlier application. Again see PCT Rules 4.18 and 20.6 .

An all too common occurrence is that applicants will file an international application in the U.S. Receiving Office and no applicant has a U.S. residence or nationality. Applicants are cautioned to be sure that at least one applicant is a resident or national of the U.S. before filing in the U.S. Receiving Office. Where no applicant indicated on the request papers is a resident or national of the United States, the USPTO is not a competent receiving Office for the international application under PCT Rule 19.1(a) . Nonetheless, the date the international application was filed in the USPTO will not be lost as a filing date for the international application if at least one applicant is a resident or national of any PCT Contracting State. Under PCT Rule 19.4 , the USPTO will receive the application on behalf of the International Bureau as receiving Office (PCT Rule 19.4(a)) and, upon payment of a fee equal to the transmittal fee, the USPTO will promptly transmit the international application to the International Bureau under PCT Rule 19.4 (b). However, if all of the applicants are indicated to be both residents and nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an international filing date.

The USPTO is also not competent to receive international applications that are not in the English language and, upon payment of a fee equal to the transmittal fee, the USPTO will forward such applications to the International Bureau under PCT Rule 19.4 provided they are in a language accepted by the International Bureau as receiving Office.

A discussion of PCT Rule 19.4 is also included in MPEP § 1805 .

1811    [Reserved]

1812    Elements of the International Application [R-08.2012]

PCT Article 3

The International Application

  • (1) Applications for the protection of inventions in any of the Contracting States may be filed as international applications under this Treaty.
  • (2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.
  • (3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.
  • (4) The international application shall:
    • (i) be in a prescribed language;
    • (ii) comply with the prescribed physical requirements;
    • (iii) comply with the prescribed requirement of unity of invention;
    • (iv) be subject to the payment of the prescribed fees.

Any international application must contain the following elements: request, description, claim or claims, abstract and one or more drawings (where drawings are necessary for the understanding of the invention ( PCT Article 3(2) and PCT Article 7(2) ). The elements of the international application are to be arranged in the following order: the request, the description (other than any sequence listing part thereof), the claims, the abstract, the drawings, and the sequence listing part of the description (where applicable) ( Administrative Instructions Section 207 (a) ). All the sheets contained in the international application must be numbered in consecutive Arabic numerals by using the following separate series of numbers: a first series applying to the request; a second series to the description, claims and abstract; a third series to the drawings (where applicable); and a further series to the sequence listing part of the description (where applicable) (PCT Rule 11.7 and Administrative Instructions Section 207 (b) ). Only one copy of the international application need be filed in the United States Receiving Office ( 37 CFR 1.433(a) ). The request is made on a standardized form (Form PCT/RO/101), copies of which can be obtained from the USPTO or online from WIPO’s web site (www.wipo.int/pct/en/index.html). The “Request” form can also be presented as a computer printout prepared using the PCT-SAFE software. This software can be downloaded from the PCT-SAFE web site (www.wipo.int/pct-safe). The details of a computer generated Request form are provided in Administrative Instructions Section 102 bis.

1813 - 1816    [Reserved]

1817    PCT Member States [R-08.2012]

An updated list of PCT Contracting States is available from WIPO’s web site (www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf). The following list of PCT Contracting States was updated at the time of publication of the MPEP:

 
State Ratification, Accession or Declaration Date of Ratification, Accession or Declaration Date From Which State May Be Designated
(1) Central African Republic° Accession 15 September 1971 01 June 1978
(2) Senegal° Ratification 08 March 1972 01 June 1978
(3) Madagascar Ratification 27 March 1972 01 June 1978
(4) Malawi Accession 16 May 1972 01 June 1978
(5) Cameroon° Accession 15 March 1973 01 June 1978
(6) Chad° Accession 12 February 1974 01 June 1978
(7) Togo° Ratification 28 January 1975 01 June 1978
(8) Gabon° Accession 06 March 1975 01 June 1978
(9) United States of America Ratification 26 November 1975 01 June 1978
(10) Germany°° Ratification 19 July 1976 01 June 1978
(11) Congo° Accession 08 August 1977 01 June 1978
(12) Switzerland°° Ratification 14 September 1977 01 June 1978
(13) United Kingdom°° Ratification 24 October 1977 01 June 1978
(14) France°° Ratification 25 November 1977 01 June 1978
(15) Russian Federation Ratification 29 December 1977 01 June 1978
(16) Brazil Ratification 09 January 1978 01 June 1978
(17) Luxembourg°° Ratification 31 January 1978 01 June 1978
(18) Sweden°° Ratification 17 February 1978 01 June 1978
(19) Japan Ratification 01 July 1978 01 October 1978
(20) Denmark°° Ratification 01 September 1978 01 December 1978
(21) Austria°° Ratification 23 January 1979 23 April 1979
(22) Monaco°° Ratification 22 March 1979 22 June 1979
(23) Netherlands°° Ratification 10 April 1979 10 July 1979
(24) Romania°° Ratification 23 April 1979 23 July 1979
(25) Norway °° Ratification 01 October 1979 01 January 1980
(26) Liechtenstein°° Accession 19 December 1979 19 March 1980
(27) Australia Accession 31 December 1979 31 March 1980
(28) Hungary °° Ratification 27 March 1980 27 June 1980
(29) Democratic People’s Republic of Korea (North Korea ) Accession 08 April 1980 08 July 1980
(30) Finland°° Ratification 01 July 1980 01 October 1980
(31) Belgium°° Ratification 14 September 1981 14 December 1981
(32) Sri Lanka Accession 26 November 1981 26 February 1982
(33) Mauritania° Accession 13 January 1983 13 April 1983
(34) Sudan Accession 16 January 1984 16 April 1984
(35) Bulgaria °° Accession 21 February 1984 21 May 1984
(36) Republic of Korea (South Korea) Accession 10 May 1984 10 August 1984
(37) Mali° Accession 19 July 1984 19 October 1984
(38) Barbados Accession 12 December 1984 12 March 1985
(39) Italy°° Ratification 28 December 1984 28 March 1985
(40) Benin° Accession 26 November 1986 26 February 1987
(41) Burkina Faso° Accession 21 December 1988 21 March 1989
(42) Spain°° Accession 16 August 1989 16 November 1989
(43) Canada Ratification 02 October 1989 02 January 1990
(44) Greece°° Accession 09 July 1990 09 October 1990
(45) Poland°° Accession 25 September 1990 25 December 1990
(46) Côte d’Ivoire° Ratification 31 January 1991 30 April 1991
(47) Guinea° Accession 27 February 1991 27 May 1991
(48) Mongolia Accession 27 February 1991 27 May 1991
(49) Czech Republic °° Declaration 18 December 1992 01 January 1993
(50) Ireland°° Ratification 01 May 1992 01 August 1992
(51) Portugal°° Accession 24 August 1992 24 November 1992
(52 ) New Zealand Accession 01 September 1992 01 December 1992
(53) Ukraine Declaration 21 September 1992 25 December 1991
(54) Viet Nam Accession 10 December 1992 10 March 1993
(55) Slovakia °° Declaration 30 December 1992 01 January 1993
(56) Niger° Accession 21 December 1992 21 March 1993
(57) Kazakhstan Declaration 16 February 1993 25 December 1991
(58) Belarus Declaration 14 April 1993 25 December 1991
(59) Latvia°° Accession 07 June 1993 07 September 1993
(60) Uzbekistan Declaration 18 August 1993 25 December 1991
(61) China Accession 01 October 1993 01 January 1994
(62) Slovenia °° Accession 01 December 1993 01 March 1994
(63) Trinidad and Tobago Accession 10 December 1993 10 March 1994
(64) Georgia Declaration 18 January 1994 25 December 1991
(65) Kyrgyzstan Declaration 14 February 1994 25 December 1991
(66) Republic of Moldova Declaration 14 February 1994 25 December 1991
(67) Tajikistan Declaration 14 February 1994 25 December 1991
(68) Kenya Accession 08 March 1994 08 June 1994
(69) Lithuania°° Accession 05 April 1994 05 July 1994
(70) Armenia Declaration 17 May 1994 25 December 1991
(71) Estonia °° Accession 24 May 1994 24 August 1994
(72) Liberia Accession 27 May 1994 27 August 1994
(73) Swaziland Accession 20 June 1994 20 September 1994
(74) Mexico Accession 01 October 1994 01 January 1995
(75) Uganda Accession 09 November 1994 09 February 1995
(76) Singapore Accession 23 November 1994 23 February 1995
(77) Iceland°° Accession 23 December 1994 23 March 1995
(78) Turkmenistan Declaration 01 March 1995 25 December 1991
(79) The former Yugoslov Republic of Macedonia Accession 10 May 1995 10 August 1995
(80) Albania Accession 04 July 1995 04 October 1995
(81) Lesotho Accession 21 July 1995 21 October 1995
(82) Azerbaijan Accession 25 September 1995 25 December 1995
(83) Turkey°° Accession 01 October 1995 01 January 1996
(84) Israel Ratification 01 March 1996 01 June 1996
(85) Cuba Accession 16 April 1996 16 July 1996
(86) Saint Lucia Accession 30 May 1996 30 August 1996
(87) Bosnia and Herzegovina Accession 07 June 1996 07 September 1996
(88) Serbia Ratification 01 November 1996 01 February 1997
(89) Ghana Accession 26 November 1996 16 February 1997
(90) Zimbabwe Accession 11 March 1997 11 June 1997
(91) Sierra Leone Accession 17 March 1997 17 June 1997
(92) Indonesia Accession 05 June 1997 05 September 1997
(93) Gambia Accession 09 September 1997 09 December 1997
(94) Guinea-Bissau° Accession 12 September 1997 12 December 1997
(95) Cyprus°° Accession 01 January 1998 01 April 1998
(96) Croatia °° Accession 01 April 1998 01 July 1998
(97) Grenada Accession 22 June 1998 22 September 1998
(98) India Accession 07 September 1998 07 December 1998
(99) United Arab Emirates Accession 10 December 1998 10 March 1999
(100) South Africa Accession 16 December 1998 16 March 1999
(101) Costa Rica Accession 03 May 1999 03 August 1999
(102) Dominica Accession 07 May 1999 07 August 1999
(103) United Republic of Tanzania Accession 14 June 1999 14 September 1999
(104) Morocco Accession 08 July 1999 08 October 1999
(105) Algeria Ratification 08 December 1999 08 March 2000
(106) Antigua and Barbuda Accession 17 December 1999 17 March 2000
(107) Mozambique Accession 18 February 2000 18 May 2000
(108) Belize Accession 17 March 2000 17 June 2000
(109) Colombia Accession 29 November 2000 28 February 2001
(110) Ecuador Accession 07 February 2001 07 May 2001
(111) Equatorial Guinea° Accession 17 April 2001 17 July 2001
(112) Philippines Ratification 17 May 2001 17 August 2001
(113) Oman Accession 26 July 2001 26 October 2001
(114) Zambia Accession 15 August 2001 15 November 2001
(115) Tunisia Accession 10 September 2001 10 December 2001
(116) Saint Vincent and the Grenadines Accession 06 May 2002 06 August 2002
(117) Seychelles Accession 07 August 2002 07 November 2002
(118) Nicaragua Accession 06 December 2002 06 March 2003
(119) Papua New Guinea Accession 14 March 2003 14 June 2003
(120) Syrian Arab Republic Accession 26 March 2003 26 June 2003
(121) Egypt Ratification 06 June 2003 06 September 2003
(122) Botswana Accession 30 July 2003 30 October 2003
(123) Namibia Accession 01 October 2003 01 January 2004
(124) San Marino Accession 14 September 2004 14 December 2004
(125) Comoros Accession 03 January 2005 03 April 2005
(126) Nigeria Accession 08 February 2005 08 May 2005
(127) Libyan Arab Jamahiriya Accession 15 June 2005 15 September 2005
(128) Saint Kitts and Nevis Accession 27 July 2005 27 October 2005
(129) Lao People’s Democratic Republic Accession 14 March 2006 14 June 2006
(130) Honduras Accession 20 March 2006 20 June 2006
(131) Malaysia Accession 16 May 2006 16 August 2006
(132) El Salvador Accession 17 May 2006 17 August 2006
(133) Guatemala Accession 14 July 2006 14 October 2006
(134) Malta °° Accession 01 December 2006 01 March 2007
(135) Montenegro Declaration 04 December 2006 03 June 2006
(136) Bahrain Accession 18 December 2006 18 March 2007
       
(137) Dominican Republic Accession 28 February 2007 28 May 2007
(138) Angola Accession 27 September 2007 27 December 2007
(139) Sao Tome and Principe Accession 03 April 2008 03 July 2008
°Members of African Intellectual Property Organization (OAPI) regional patent system. Only regional patent protection is available for OAPI member states. A designation of any state is an indication that all OAPI states have been designated.
°°Members of European Patent Convention (EPC) regional patent system. Either national patents or European patents for member States are available through PCT, except for Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, Netherlands, and Slovenia, for which only European patents are available if the PCT is used.
The following states are members of African Regional Intellectual Property Organization (ARIPO) regional patent system and are Contracting States of both the Harare Protocol and the PCT: (4) Malawi, (34) Sudan, (68) Kenya, (73) Swaziland, (75) Uganda, (81) Lesotho, (89) Ghana, (90) Zimbabwe, (91) Sierra Leone, (93) Gambia, (103) United Republic of Tanzania, (107) Mozambique, (114) Zambia, (122) Botswana, and (123) Namibia. Note that with the accession of Botswana to the PCT, all 14 States party to the Harare Protocol are now also Contracting States of the PCT. State (73) Swaziland can only be designated for the purposes of an ARIPO patent and not for the purposes of a national patent. All other PCT Contracting States which are also party to the Harare Protocol can be designated either for a national or an ARIPO patent, or both a national and an ARIPO patent.
The following states are members of the Eurasian Patent Organization (EAPO) regional patent system: (15) Russian Federation, (57) Kazakhstan, (58) Belarus, (65) Kyrgyzstan, (66) Republic of Moldova, (67) Tajikistan, (70) Armenia, (78) Turkmenistan, and (82) Azerbaijan. All PCT Contracting States which are also party to the Eurasian Patent Convention can be designated either for a national or a Eurasian patent, or both a national and a Eurasian patent. Note, however, that it is not possible to designate only some of these States for a Eurasian patent and that any designation of one or more States for a Eurasian patent will be treated as a designation of all the States which are party to both the Convention and the PCT for a Eurasian patent.

1817.01   Designation of States in International Applications Having an International Filing Date On or After January 1, 2004 [R-08.2012]

[Note: The regulations under the PCT were changed effective January 1, 2004. A corresponding change was made to Title 37 of the Code of Federal Regulations. See January 2004 Revision of Patent Cooperation Treaty Application Procedure , 68 FR 59881 (Oct. 20, 2003), 1276 O.G. 6 (Nov. 11, 2003). All international applications having an international filing date before January 1, 2004, will continue to be processed under the procedures in effect on the international filing date. For the designation of states in international applications having an international filing date before January 1, 2004, see MPEP § 1817.01(a) for the information that previously appeared in this section] .

PCT Rule 4

The Request (Contents)

*****

4.9. Designation of States; Kinds of Protection; National and Regional Patents

  • (a) The filing of a request shall constitute:
    • (i) the designation of all Contracting States that are bound by the Treaty on the international filing date;
    • (ii) an indication that the international application is, in respect of each designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State:
    • (iii) an indication that the international application is, in respect of each designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless Article 45(2) applies, a national patent.
  • (b) Notwithstanding paragraph (a)(i), if, on October 5, 2005, the national law of a Contracting State provides that the filing of an international application which contains the designation of that State and claims the priority of an earlier national application having effect in that State shall have the result that the earlier national application ceases to have effect with the same consequences as the withdrawal of the earlier national application, any request in which the priority of an earlier national application filed in that State is claimed may contain an indication that the designation of that State is not made, provided that the designated Office notifies the International Bureau by January 5, 2006, that this paragraph shall apply in respect of designations of that State and that the notification is still in force on the international filing date. The information received shall be promptly published by the International Bureau in the Gazette.
  • (c) [Deleted]

37 C.F.R. 1.432  Designation of States by filing an international application.

The filing of an international application request shall constitute:

  • (a) The designation of all Contracting States that are bound by the Treaty on the international filing date;
  • (b) An indication that the international application is, in respect of each designated State to which PCT Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State; and
  • (c) An indication that the international application is, in respect of each designated State to which PCT Article 45 (1) applies, for the grant of a regional patent and also, unless PCT Article 45 (2) applies, a national patent.

For international applications having an international filing date on or after January 1, 2004, the filing of an international application request constitutes: (A) the designation of all Contracting States that are bound by the Treaty on the international filing date; (B) an indication that the international application is, in respect of each designated State to which PCT Article 43 or 44applies, for the grant of every kind of protection which is available by way of the designation of that State; and (C) an indication that the international application is, in respect of each designated State to which PCT Article 45 (1) applies, for the grant of a regional patent and also, unless PCT Article 45 (2) applies, a national patent. See 37 CFR 1.432 and PCT Rule 4.9 . This automatic indication of all designations and all types of protection possible overcomes a pitfall in the designation system in effect for applications having an international filing prior to January 1, 2004, where applicants inadvertently omitted a designation or type of protection and failed to timely satisfy the requirements under former PCT Rule 4.9 (b) to perfect a precautionary designation.

Pursuant to PCT Rule 4.9 (b), certain States may be excepted from the all-inclusive designation system under limited circumstances. Specifically, where the international application contains a priority claim to an earlier national application having effect in a State whose national law provides that the designation of such State has the result that the earlier national application ceases to have effect in such State, then the request may contain an indication that such State is not designated. Applicability of PCT Rule 4.9 (b) is contingent upon timely notice by the affected Office to the International Bureau. As of April 1, 2006, the request may exclude the following designations: Germany (DE), Japan (JP), Republic of Korea (KR), and Russian Federation (RU). See “Reservations and Incompatibilities” at http://www.wipo.int/pct/en/applicants.html for further information.

  APPLICANT FOR PURPOSES OF EACH DESIGNATION

Where there is but a single applicant, the right to file an international application and to designate Contracting States or regions exists if the applicant is a resident or national of a PCT Contracting State. The applicant can be an individual, corporate entity or other concern. In the case where there are several applicants who are different for different designated states, the right to file an international application and to designate Contracting States or regions exists if at least one of them is a resident or national of a Contracting State. If entry into the U.S. national phase is desired, inventors must be indicated as applicants at least for purposes of the United States.

1817.01(a)   Designation of States and Precautionary Designations in International Applications Having an International Filing Date Before January 1, 2004 [R-08.2012]

[Note: For the designation of States in applications having an international filing date on or after January 1, 2004, see MPEP § 1817.01 .]

Former

37 C.F.R. 1.432  Designation of States and payment of designation and confirmation fees.

  • (a) The designation of States including an indication that applicant wishes to obtain a regional patent, where applicable, shall appear in the Request upon filing and must be indicated as set forth in PCT Rule 4.9 and section 115 of the Administrative Instructions . Applicant must specify at least one national or regional designation on filing of the international application for a filing date to be granted.
  • (b) If the fees necessary to cover all the national and regional designations specified in the Request are not paid by the applicant within one year from the priority date or within one month from the date of receipt of the international application if that month expires after the expiration of one year from the priority date, applicant will be notified and given one month within which to pay the deficient designation fees plus a late payment fee. The late payment fee shall be equal to the greater of fifty percent of the amount of the deficient fees up to a maximum amount equal to the basic fee, or an amount equal to the transmittal fee (PCT Rule 16 bis ). The one-month time limit set in the notification of deficient designation fees may not be extended. Failure to timely pay at least one designation fee will result in the withdrawal of the international application.
    • (1) The one designation fee must be paid:
      • (i) Within one year from the priority date;
      • (ii) Within one month from the date of receipt of the international application if that month expires after the expiration of one year from the priority date; or
      • (iii) With the late payment fee defined in this paragraph within the time set in the notification of the deficient designation fees or in accordance with PCT Rule 16 bis .1 (e).
    • (2) If after a notification of deficient designation fees the applicant makes timely payment, but the amount paid is not sufficient to cover the late payment fee and all designation fees, the Receiving Office will, after allocating payment for the basic, search, transmittal and late payment fees, allocate the amount paid in accordance with PCT Rule 16 bis .1 (c) and withdraw the unpaid designations. The notification of deficient designation fees pursuant to this paragraph may be made simultaneously with any notification pursuant to § 1.431 (c).
  • (c) The amount payable for the designation fee set forth in paragraph (b) is:
    • (1) The designation fee in effect on the filing date of the international application, if such fee is paid in full within one month from the date of receipt of the international application;
    • (2) The designation fee in effect on the date such fee is paid in full, if such fee is paid in full later than one month from the date of receipt of the international application but within one year from the priority date;
    • (3) The designation fee in effect on the date one year from the priority date, if the fee was due one year from the priority date, and such fee is paid in full later than one month from the date of receipt of the international application and later than one year from the priority date; or
    • (4) The designation fee in effect on the international filing date, if the fee was due one month from the international filing date and after one year from the priority date, and such fee is paid in full later than one month from the date of receipt of the international application and later than one year from the priority date.
  • (d) On filing the international application, in addition to specifying at least one national or regional designation under PCT Rule 4.9 (a), applicant may also indicate under PCT Rule 4.9 (b) that all other designations permitted under the Treaty are made.
    • (1) Indication of other designations permitted by the Treaty under PCT Rule 4.9 (b) must be made in a statement on the Request that any designation made under this paragraph is subject to confirmation ( PCT Rule 4.9 (c)) not later than the expiration of 15 months from the priority date by:
      • (i) Filing a written notice with the United States Receiving Office specifying the national and/or regional designations being confirmed;
      • (ii) Paying the designation fee for each designation being confirmed; and
      • (iii) Paying the confirmation fee specified in § 1.445 (a)(4).
    • (2) Unconfirmed designations will be considered withdrawn. If the amount submitted is not sufficient to cover the designation fee and the confirmation fee for each designation being confirmed, the Receiving Office will allocate the amount paid in accordance with any priority of designations specified by applicant. If applicant does not specify any priority of designations, the allocation of the amount paid will be made in accordance with PCT Rule 16 bis .1 (c).

The designation of States is the indication, in Box No. V of the request (except in the last sub-box of that Box), of the specific regional patents, national patents, and/or other kinds of protection the applicant is seeking. Specific designations for the purpose of obtaining national and regional patents are effected by indicating each Contracting State or region concerned. On the printed form, this is accomplished by marking the appropriate check-boxes next to the names of the States or regions. For detailed instructions regarding “specific” designations, see the “Notes to the Request Form (PCT/RO/101).”

All designations must be made in the international application on filing; none may be added later. However, there is a safety net designed to protect applicants who make mistakes or omissions among the specific designations, by way of making a precautionary designation of all other States which have not been specifically designated in the Request whose designation would be permitted under the Treaty.

In addition to specific designations described above, the applicant may, under PCT Rule 4.9(b) , indicate in the request that all designations which would be permitted under the PCT are also made, provided that at least one specific designation is made and that the request also contains a statement relating to the confirmation of any precautionary designations so made. That statement must declare that any such designation is subject to confirmation (as provided in Rule 4.9 (c)), and that any such designation which is not so confirmed before the expiration of 15 months from the priority date is to be regarded as withdrawn by the applicant at the expiration of that time limit.

Precautionary designations are effected in practice by including the necessary statement in the last sub-box of Box No. V of the request (the statement is set out in the printed request form). Since the precautionary designations are designed particularly to enable applicants to correct omissions and mistakes in the original list of specific designations, it is strongly recommended that applicants make the precautionary designations indication (by leaving the pre-printed statement in the printed form, if that form is used) unless there is a particular reason for doing otherwise. The request form makes provision for the applicant to omit designations if that is desired. It should be noted that no fees are payable in respect of precautionary designations except where the applicant later decides to confirm them.

Precautionary designations will be regarded as withdrawn by the applicant unless they are confirmed, but the applicant is not obliged to confirm them. The precautionary designation procedure enables the applicant to make, in the request, all designations permitted by the PCT in addition to those made specifically. For this purpose, the request must also contain a statement that any precautionary designations so made are subject to confirmation as provided in Rule 4.9 (c) and that any designation which is not so confirmed before the expiration of 15 months from the priority date is to be regarded as withdrawn by the applicant at the expiration of that time limit. Noting that the confirmation of designations is entirely at the applicant’s discretion, no notification is sent to the applicant reminding him or her that the time limit for confirming precautionary designations is about to expire. Applicants are cautioned that in order for the confirmation of a designation of the U.S. to be valid, the inventor must have been named in the application papers as filed, 37 CFR 1.421(b) .

  APPLICANT FOR PURPOSES OF EACH DESIGNATION

Where there is but a single applicant, the right to file an international application and to designate contracting states or regions exists if the applicant is a resident or national of a contracting state. The applicant can be an individual, corporate entity or other concern. If the United States is to be designated, it is particularly important to note that the applicant must also be the inventor.

In the case where there are several applicants who are different for different designated states, the right to file an international application and to designate contracting states or regions exists if at least one of them is a resident or national of a contracting state. If the United States is to be designated, it is important to note that the applicant must also be the inventor. If the inventor is not also the applicant, the designation of the United States is invalid.

1817.02   Continuation or Continuation-in-Part Indication in the Request [R-08.2012]

PCT Rule 4

The Request (Contents)

*****

4.11. Reference to Continuation or Continuation-in-Part, or Parent Application or Grant

  • (a) If:

*****

  • (ii) the applicant intends to make an indication under Rule 49 bis .1(d) of the wish that the international application be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application;

    the request shall so indicate and shall indicate the relevant parent application or parent patent or other parent grant.

*****

The Supplemental Box of the request form should be used where the applicant has an earlier pending United States nonprovisional application or international application designating the U.S. and wishes the later filed international application to be treated as a continuation or continuation-in-part of such earlier application. To properly identify the parent application, the specific reference must identify the parent application by application number and indicate the relationship to the parent application (i.e., “continuation” or “continuation-in-part”). The specific reference must also indicate the filing date of the parent application if the parent application is an international application. See 37 CFR 1.78 (a).

Identification of the parent application in the request does not relieve applicants from having to perfect the benefit claim upon entry into the U.S. national stage by including a proper claim in an application data sheet or in the first sentence(s) of the specification (see 37 CFR 1.78 (a)(2)). However, inclusion of a proper reference to the parent application in the international phase does provide certain benefits to applicants, e.g., where applicant chooses to file a continuing application claiming benefit under 35 U.S.C. 365 (c) to the international application (i.e., a bypass application) rather than entering the U.S. national phase under 35 U.S.C. 371.

1818    [Reserved]

1819    Earlier Search [R-08.2012]

PCT Rule 4

The Request (Contents)

*****

4.12. Taking into Account Results of Earlier Search

If the applicant wishes the International Searching Authority to take into account, in carrying out the international search, the results of an earlier international, international-type or national search carried out by the same or another International Searching Authority or by a national Office (“earlier search”):

  • (i) the request shall so indicate and shall specify the Authority or Office concerned and the application in respect of which the earlier search was carried out;
  • (ii) the request may, where applicable, contain a statement to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language.

*****

PCT Rule 12bis

Copy of Results of Earlier Search and of Earlier Application; Translation

12bis.1 Copy of Results of Earlier Search and of Earlier Application; Translation

  • (a) Where the applicant has, under Rule 4.12, requested the International Searching Authority to take into account the results of an earlier search carried out by the same or another International Searching Authority or by a national Office, the applicant shall, subject to paragraphs (c) to (f), submit to the receiving Office, together with the international application, a copy of the results of the earlier search, in whatever form (for example, in the form of a search report, a listing of cited prior art or an examination report) they are presented by the Authority or Office concerned.
  • (b) The International Searching Authority may, subject to paragraphs (c) to (f), invite the applicant to furnish to it, within a time limit which shall be reasonable under the circumstances:
    • (i) a copy of the earlier application concerned;
    • (ii) where the earlier application is in a language which is not accepted by the International Searching Authority, a translation of the earlier application into a language which is accepted by that Authority;
    • (iii) where the results of the earlier search are in a language which is not accepted by the International Searching Authority, a translation of those results into a language which is accepted by that Authority;
    • (iv) a copy of any document cited in the results of the earlier search.
  • (c) Where the earlier search was carried out by the same Office as that which is acting as the receiving Office, the applicant may, instead of submitting the copies referred to in paragraphs (a) and (b)(i) and (iv), indicate the wish that the receiving Office prepare and transmit them to the International Searching Authority. Such request shall be made in the request and may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee.
  • (d) Where the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, no copy or translation referred to in paragraphs (a) and (b) shall be required to be submitted under those paragraphs.
  • ""
    • ""
      • (e) Where the request contains a statement under Rule 4.12(ii) to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language, no copy or translation referred to in paragraphs (b)(i) and (ii) shall be required to be submitted under those paragraphs.
  • ""
    • ""
      • (f) Where a copy or translation referred to in paragraphs (a) and (b) is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library or in the form of the priority document, and the applicant so indicates in the request, no copy or translation shall be required to be submitted under those paragraphs.

Where the applicant wishes the International Searching Authority (ISA) to take into account, in carrying out the international search, the results of one or more earlier international, international-type, or national searches carried out by the same or another ISA or by a national Office, the application(s) must be identified in the request. Applicants should identify the application(s) in Box No. VII of the request by the filing date, application number, and the country or regional Office.

The United States Patent and Trademark Office performs an international-type search on all U.S. national applications filed on and after 1 June 1978. No specific request by the applicant is required and no number identifying the international-type search is assigned by the Office. See 37 CFR 1.104 (a)(3).

1820    Signature of Applicant [R-08.2012]

PCT Article 14

Certain Defects in the International Application

  • (1)
    • (a) The receiving Office shall check whether the international application contains any of the following defects, that is to say
      • (i) it is not signed as provided in the Regulations;

*****

PCT Rule 4

The Request (Contents)

*****

4.15. Signature

  • (a) Subject to paragraph (b), the request shall be signed by the applicant or, if there is more than one applicant, by all of them.
  • (b) Where two or more applicants file an international application which designates a State whose national law requires that national applications be filed by the inventor and where an applicant for that designated State who is an inventor refused to sign the request or could not be found or reached after diligent effort, the request need not be signed by that applicant if it is signed by at least one applicant and a statement is furnished explaining, to the satisfaction of the receiving Office, the lack of the signature concerned.

*****

PCT Rule 26

Checking by, and Correcting Before, the Receiving Office of Certain Elements of the International Application

*****

26.2 bis .  Checking of Requirements Under Article 14(1)(a)(i) and (ii)

  • (a) For the purposes of Article 14(1)(a)(i) , if there is more than one applicant, it shall be sufficient that the request be signed by one of them.
  • (b) For the purposes of Article 14(1)(a)(ii) , if there is more than one applicant, it shall be sufficient that the indications required under Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who is entitled according to Rule 19.1 to file the international application with the receiving Office.

  SIGNATURE OF APPLICANT OR AGENT

Pursuant to PCT Rule 4.15 , the international application must be signed in Box No. X of the request by the applicant, or, where there are two or more applicants, by all of them. However, under PCT Rule 26.2 bis , which is applicable to international applications having an international filing date on or after January 1, 2004, it is sufficient for purposes of PCT Article 14(1)(a)(i) that the application is signed by only one of the applicants. Thus, for international applications having an international filing date on or after January 1, 2004, the United States Receiving Office will not issue an invitation to applicants to furnish missing signatures where the request is signed by at least one of the applicants. Notwithstanding PCT Rule 26.2 bis , any designated/elected office, in accordance with its national law, can still require confirmation of the international application by the signature of any applicant for such designated state who has not signed the request. PCT Rule 51 bis .1(a)(vi) . Pursuant to 37 CFR 1.4 (d), the request filed may be either an original, or a copy thereof.

The international application may be signed by an agent.

For international applications having an international filing date on or after January 1, 2004, the requirement for the submission of a separate power of attorney may be waived by the receiving Office. The United States Receiving Office will, in most cases, waive the requirement for a separate power of attorney. See MPEP § 1807 .

If the international application has an international filing date before January 1, 2004, then the agent must be appointed as such by the applicant in a separate power of attorney signed by the applicant. If there are two or more applicants, the request may be signed by an agent on behalf of all or only some of them; in that case the agent must be appointed as such in one or more powers of attorney signed by the applicants on whose behalf the agent signs the application. Where a power of attorney appointing an agent who signs an international application having an international filing date prior to January 1, 2004 is missing, the signature is treated as missing until the power of attorney is submitted.

The signature should be executed in black indelible ink. The name of each person signing the international application should be indicated (preferably typewritten) next to the signature. Where a person signs on behalf of a legal entity (an organization such as a corporation, university, nonprofit organization, or governmental agency), his or her name and the capacity in which he or she signs should be indicated. Proof of the person’s authority to sign on behalf of the legal entity will be required if that person does not possess apparent authority to sign on behalf of the legal entity and that person has not submitted a statement that he or she is authorized to sign on behalf of the legal entity (discussed below). An officer (President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer or Chief Financial Officer) of an organization is presumed to have authority to sign on behalf of that organization. The signature of the chairman of the board is also acceptable, but not the signature of an individual director. Variations of these titles (such as vice-president for sales, executive vice-president, assistant treasurer, vice-chairman of the board of directors) are acceptable. In general, a person having a title (manager, director, administrator, general counsel) that does not clearly set forth that person as an officer of the organization is not presumed to be an officer or to have the authority to sign on behalf of the organization. However, an exception is made with respect to foreign juristic applicants. This is because in foreign countries, a person who holds the title “Manager” or “Director” is normally an officer or the equivalent thereof; therefore, those terms are generally acceptable as indicating proper persons to sign applications for foreign applicants. However, titles such as “Manager of Patents,” suggesting narrowly limited duties, are not acceptable. An attorney does not generally have apparent authority to sign on behalf of an organization.

Proof that a person has the authority to sign on behalf of a legal entity may take the form of a copy of a resolution of the board of directors, a provision of the bylaws, or a copy of a paper properly delegating authority to that person to sign the international application on behalf of the legal entity.

It is acceptable to have a person sign the international application on behalf of a legal entity if that person submits a statement that the person has the authority to sign the international application on behalf of the legal entity. This statement should be on a separate paper and must not appear on the Request (or Demand) form itself. The statement must include a clause such as “The undersigned (whose title is supplied below) is empowered to sign the Request on behalf of the applicant.”

The international application can be filed without applicant’s signature on the request. The lack of any required signature on the request is a correctable defect under PCT Article 14(1)(a)(i) and (b), and can be remedied by filing a copy of the request (or, where the request has been signed by an agent, of a power of attorney) duly signed by the applicant within the time limit fixed by the receiving Office for the correction of this defect.

  APPLICANT INVENTOR UNAVAILABLE OR UNWILLING TO SIGN THE INTERNATIONAL APPLICATION

PCT Rule 4.15(b) provides that, where an applicant inventor for the designation of a State whose national law requires that national applications be filed by the inventor (the United States of America is the only Contracting State to have such a requirement in its national law) refused to sign the request or could not be found or reached after diligent effort, the request need not be signed by that applicant inventor if it is signed by at least one applicant and a statement is furnished explaining, to the satisfaction of the receiving Office, the lack of the signature concerned. The significance of PCT Rule 4.15 (b) has been greatly diminished with respect to international applications having an international filing date on or after January 1, 2004, in light of PCT Rule26.2 bis (a), which provides that where there is more than one applicant, the signature requirements for purposes of PCT Article 14 (1)(a)(i) will be considered to have been satisfied if the request is signed by one of the applicants.

For international applications having an international filing date prior to January 1, 2004, if the requisite statement under PCT Rule 4.15 (b) is furnished to the satisfaction of the receiving Office, the international application complies with the requirements of PCT Article 14(1)(a)(i) for the purposes of all designated States (including the United States of America) without adverse consequences in the international phase. However, additional proofs may be required by the United States Patent and Trademark Office after entry into the national phase if the required oath or declaration by the inventor is not signed by all the applicant inventors.

  INVENTOR DECEASED

37 C.F.R. 1.422  When the inventor is dead.

In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may file an international application which designates the United States of America.

A legal representative of a deceased inventor may be indicated in the international application as an applicant for the purposes of the United States. In such case, the indication in the request (in Box II or III, as appropriate) for the legal representative should be made as follows: SMITH, Alfred, legal representative of JONES, Bernard (deceased), followed by indications of the address, nationality and residence of the legal representative. The legal representative should be indicated as an “applicant only” except where the legal representative is also an inventor, in which case the legal representative should be indicated as an “applicant and inventor.” The name of the deceased inventor should also appear in a separate box (in Box III) with the indication of “deceased” (e.g., “JONES, Bernard (deceased))” and identified as an “inventor only” and not as an applicant.

1821    The Request [R-08.2012]

A general overview of certain aspects of the request follows.

37 C.F.R. 1.434  The request.

  • (a) The request shall be made on a standardized form (PCT Rules 3 and 4 ). Copies of printed Request forms are available from the United States Patent and Trademark Office. Letters requesting printed forms should be marked “Mail Stop PCT.”
  • (b) The Check List portion of the Request form should indicate each document accompanying the international application on filing.
  • (c) All information, for example, addresses, names of States and dates, shall be indicated in the Request as required by PCT Rule 4 and Administrative Instructions 110 and 201 .
  • (d) For the purposes of the designation of the United States of America, an international application shall include:
    • (1) The name of the inventor; and;
    • (2) A reference to any prior-filed national application or international application designating the United States of America, if the benefit of the filing date for the prior-filed application is to be claimed.
  • (e) An international application may also include in the Request a declaration of the inventors as provided for in PCT Rule 4.17 (iv).

The request must either be made on a printed form to be filled in with the required indications or be presented as a computer printout complying with the Administrative Instructions. Any prospective applicant may obtain copies of the printed request form, free of charge, from the receiving Office with which he/she plans to file his/her international application. Applicants may obtain an English language request form from the United States Patent and Trademark Office using the following address: Mail Stop PCT, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. Forms may also be obtained from the World Intellectual Property Organization (WIPO) web site (www.wipo.int/pct/en/forms/index.htm). Details of the requirements for the request if presented as a computer printout are set out in Administrative Instructions Section 102 bis .

As provided in Administrative Instructions Section 102 bis (c), reduced fees are payable in respect of an international application containing the request in PCT-EASY format filed, together with a PCT-EASY physical medium , with a receiving Office which, under paragraph (a), accepts the filing of such international applications. The United States Receiving Office currently accepts the following PCT-EASY physical media: 3.5 inch diskette, CD-R, and DVD-R. The PCT Applicant’s Guide, available online at http://www.wipo.int/pct/guide/en/, provides up-to-date information regarding physical media accepted by the receiving Offices. To prepare a request in PCT-EASY format and the PCT-EASY physical medium , applicants must use PCT-SAFE software, which is available for downloading at WIPO’s web site (www.wipo.int/pct-safe). For technical support and assistance with the software, the web site also provides contact information for the PCT-SAFE Help Desk.

The request contains a petition for the international application to be processed according to the PCT and must also contain certain indications. It must contain the title of the invention. It must identify the applicant and the agent (if any), and must contain the designation of at least one Contracting State. For international applications having an international filing date on or after January 1, 2004, the filing of an international application request constitutes the designation of all Contracting States that are bound by the PCT on the international filing date. See MPEP §1817.01 . The request must contain an indication of any wish of the applicants to obtain a European patent rather than, or in addition to, a national patent in respect of a designated State.

The request may not contain any matter that is not specified in PCT Rules 4.1 to 4.17 or permitted under PCT Rule 4.18 (a) by the Administrative Instructions. Any additional material will be deleted ex officio . See PCT Rule 4.18 (b) and Administrative Instructions Section 303 .

  DATES

Each date appearing in the international application or in any correspondence must be indicated by the Arabic number of the day, the name of the month and the Arabic number of the year, in that order. In the request, after, below or above that indication, the date should be repeated in parentheses with a two-digit Arabic numeral each for the number of the day and for the number of the month and followed by the number of the year in four digits, in that order and separated by periods, slashes or hyphens after the digit pairs of the day and of the month, for example, “20 March 2004 (20.03.2004),” “20 March 2004 (20/03/2004),” or “20 March 2004 (20-03-2004).” See Administrative Instructions Section 110 .

  SUPPLEMENTAL BOX

This box is used for any material which cannot be placed in one of the previous boxes because of space limitations. The supplemental information placed in this box should be clearly entitled with the Box number from which it is continued, e.g., “Continuation of Box No. IV.”

  FILE REFERENCE

The applicant or his/her agent may indicate a file reference in the box provided for this purpose on the first sheet of the request form, on each page of the other elements of the international application, on the first sheet of the demand form, and in any other correspondence relating to the international application. PCT Rule 11.6(f) indicates that the file reference may be included in the top margin of the sheets of the international application. As provided in Administrative Instructions Section 109 , the file reference may be composed either of letters of the Latin alphabet or Arabic numerals, or both. It may not exceed 12 characters including spaces. If the file reference exceeds 12 characters, the receiving Office may ex officio truncate the reference number to 12 characters and notify the applicant. The receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority (International Authorities) will use the file reference in correspondence with the applicant.

  TITLE OF INVENTION

The Request must contain the title of the invention; the title must be short (preferably 2 to 7 words) and precise ( PCT Rule 4.3 ). The title in Box No. I of the Request is considered to be the title of the application. The title appearing on the first page of the description ( PCT Rule 5.1(a) ) and on the page containing the abstract should be consistent with the title indicated in Box No. I of the Request form.

A title should not be changed by the examiner merely because it contains words which are not considered descriptive of the invention. Words, for example, such as “improved” or “improvement of” are acceptable. If the title is otherwise not descriptive of the invention, a change to a more descriptive title should be made and the applicant informed thereof in the search report.

Where the title is missing or is inconsistent with the title in the description, the receiving Office invites the applicant to correct the missing or inconsistent title.

  APPLICANT

Any resident or national of a Contracting State may file an international application. Where there are two or more applicants, at least one of them must be a national or a resident of a PCT Contracting State.

The question whether an applicant is a resident or national of a Contracting State depends on the national law of that State and is decided by the receiving Office. Also, possession of a real and effective industrial or commercial establishment in a Contracting State may be considered residence in that State, and a legal entity constituted according to the national law of a Contracting State is considered a national of that State.

The applicant must be identified by the indication of his/her name and address and by marking next to that indication, the check-box “This person is also inventor” in Box No. II, or “applicant and inventor” in Box No. III, where the applicant is also the inventor or one of the inventors, or the check-box “applicant only” where the applicant is not the inventor or one of the inventors. Where the applicant is a corporation or other legal entity (that is, not a natural person), the check-box “applicant only” must be marked. The applicant’s nationality and residence must also be indicated.

  NAMES

The names of a natural person must be indicated by the family name followed by the given name(s). Academic degrees or titles or other indications which are not part of the person’s name must be omitted. The family name should preferably be written in capital letters.

The name of a legal entity must be indicated by its full official designation (preferably in capital letters).

  ADDRESSES

Addresses must be indicated in such a way as to satisfy the requirements for prompt postal delivery at the address indicated and must consist of all the relevant administrative units up to and including the house number (if any). The address must also include the country.

1822    [Reserved]

1823    The Description [R-08.2012]

PCT Article 5

The Description

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

PCT Rule 5

The Description

5.1. Manner of the Description

  • (a) The description shall first state the title of the invention as appearing in the request and shall:
    • (i) specify the technical field to which the invention relates;
    • (ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;
    • (iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;
    • (iv) briefly describe the figures in the drawings, if any;
    • (v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the national law of the designated State does not require the description of the best mode but is satisfied with the description of any mode (whether it is the best contemplated or not), failure to describe the best mode contemplated shall have no effect in that State;
    • (vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used; the term “industry” is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property.
  • (b) The manner and order specified in paragraph (a) shall be followed except when, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economic presentation.
  • (c) Subject to the provisions of paragraph (b), each of the parts referred to in paragraph (a) shall preferably be preceded by an appropriate heading as suggested in the Administrative Instructions.

PCT Administrative Instruction Section 204

Headings of the Parts of the Description

The headings of the parts of the description should be as follows:

  • (i) for matter referred to in Rule 5.1 (a)(i), “Technical Field”;
  • (ii) for matter referred to in Rule 5.1 (a)(ii), “Background Art”;
  • (iii) for matter referred to in Rule 5.1 (a)(iii), “Disclosure of Invention”;
  • (iv) for matter referred to in Rule 5.1 (a)(iv), “Brief Description of Drawings”;
  • (v) for matter referred to in Rule 5.1 (a)(v), “Best Mode for Carrying Out the Invention,” or, where appropriate, “Mode(s) for Carrying Out the Invention”;
  • (vi) for matter referred to in Rule 5.1 (a)(vi), “Industrial Applicability”;
  • (vii) for matter referred to in Rule 5.2 (a), “Sequence Listing”;
  • (viii) for matter referred to in Rule 5.2 (b), “Sequence Listing Free Text.”

PCT Administrative Instruction Section 209

Indications as to Deposited Biological Material on a Separate Sheet

  • (a) To the extent that any indication with respect to deposited biological material is not contained in the description, it may be given on a separate sheet. Where any such indication is so given, it shall preferably be on Form PCT/RO/134 and, if furnished at the time of filing, the said Form shall, subject to paragraph (b), preferably be attached to the request and referred to in the check list referred to in Rule 3.3 (a)(ii).
  • (b) For the purposes of designated Offices, which have so notified the International Bureau under Rule 13 bis .7 (a), paragraph (a) applies only if the said Form or sheet is included as one of the sheets of the description of the international application at the time of filing.

37 C.F.R. 1.435  The description.

  • (a) The application must meet the requirements as to the content and form of the description set forth in PCT Rules 5 , 9 , 10 , and 11 and sections 204 and 208 of the Administrative Instructions .
  • (b) In international applications designating the United States the description must contain upon filing an indication of the best mode contemplated by the inventor for carrying out the claimed invention.

The description must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. It must start with the title of the invention as appearing in Box No. I of the request. PCT Rule 5 contains detailed requirements as to the manner and order of the description, which, generally, should be in six parts. Those parts should have the following headings: “Technical Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” “Best Mode for Carrying Out the Invention” or, where appropriate, “Mode(s) for Carrying Out the Invention,” “Industrial Applicability,” “Sequence Listing,” and “Sequence Listing Free Text,” where applicable.

The details required for the disclosure of the invention so that it can be carried out by a person skilled in the art depend on the practice of the national Offices. It is therefore recommended that due account be taken of national practice in the United States of America when the description is drafted.

The need to amend the description during the national phase may thus be avoided.

This applies likewise to the need to indicate the “best mode for carrying out the invention.” If at least one of the designated Offices requires the indication of the best mode (for instance, the United States Patent and Trademark Office), that best mode must be indicated in the description.

A description drafted with due regard to what is said in these provisions will be accepted by all the designated Offices. It might require more care than the drafting of a national patent application, but certainly much less effort than the drafting of multiple applications, which is necessary where the PCT route is not used for filing in several countries.

1823.01   Reference to Deposited Biological Material [R-08.2012]

PCT Rule  13 bis

Inventions Relating to Biological Material

13 bis .1.  Definition

For the purposes of this Rule, “reference to deposited biological material” means particulars given in an international application with respect to the deposit of a biological material with a depositary institution or to the biological material so deposited.

13 bis .2.  References (General)

Any reference to deposited biological material shall be made in accordance with this Rule and, if so made, shall be considered as satisfying the requirements of the national law of each designated State.

13 bis .3.  References: Contents; Failure to Include Reference or Indication

  • (a) A reference to deposited biological material shall indicate:
    • (i) the name and address of the depositary institution with which the deposit was made;
    • (ii) the date of deposit of the biological material with that institution;
    • (iii) the accession number given to the deposit by that institution; and
    • (iv) any additional matter of which the International Bureau has been notified pursuant to Rule 13 bis .7 (a)(i), provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13 bis .7 (c) at least two months before the filing of the international application.
    • (b) Failure to include a reference to deposited biological material or failure to include, in a reference to deposited biological material, an indication in accordance with paragraph (a), shall have no consequence in any designated State whose national law does not require such reference or such indication in a national application.

13 bis .4.  References: Time Limit for Furnishing Indications

  • (a) Subject to paragraphs (b) and (c), if any of the indications referred to in Rule 13 bis .3 (a) is not included in a reference to deposited biological material in the international application as filed but is furnished to the International Bureau:
    • (i) within 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished in time;
    • (ii) after the expiration of 16 months from the priority date, the indication shall be considered by any designated Office to have been furnished on the last day of that time limit if it reaches the International Bureau before the technical preparations for international publication have been completed.
  • (b) If the national law applicable by a designated Office so requires in respect of national applications, that Office may require that any of the indications referred to in Rule 13 bis .3 (a) be furnished earlier than 16 months from the priority date, provided that the International Bureau has been notified of such requirement pursuant to Rule 13 bis .7 (a)(ii) and has published such requirement in the Gazette in accordance with Rule 13 bis .7 (c) at least two months before the filing of the international application.
  • (c) Where the applicant makes a request for early publication under Article 21 (2)(b), any designated Office may consider any indication not furnished before the technical preparations for international publication have been completed as not having been furnished in time.
  • (d) The International Bureau shall notify the applicant of the date on which it received any indication furnished under paragraph (a), and:
    • (i) if the indication was received before the technical preparations for international publication have been completed, publish the indication furnished under paragraph (a), and an indication of the date of receipt, together with the international application;
    • (ii) if the indication was received after the technical preparations for international publication have been completed, notify that date and the relevant data from the indication to the designated Offices.

13 bis .5.  References and Indications for the Purposes of One or More Designated States; Different Deposits for Different Designated States; Deposits with Depositary Institutions Other Than Those Notified

  • (a) A reference to deposited biological material shall be considered to be made for the purposes of all designated States, unless it is expressly made for the purposes of certain of the designated States only; the same applies to the indications included in the reference.
  • (b) References to different deposits of the biological material may be made for different designated States.
  • (c) Any designated Office may disregard a deposit made with a depositary institution other than one notified by it under Rule 13 bis .7(b).

13 bis .6.  Furnishing of Samples

Pursuant to Articles 23 and 40 , no furnishing of samples of the deposited biological material to which a reference is made in an international application shall, except with the authorization of the applicant, take place before the expiration of the applicable time limits after which national processing may start under the said Articles. However, where the applicant performs the acts referred to in Articles 22 or 39 after international publication but before the expiration of the said time limits, the furnishing of samples of the deposited biological material may take place, once the said acts have been performed. Notwithstanding the previous provision, the furnishing of samples of the deposited biological material may take place under the national law applicable by any designated Office as soon as, under that law, the international publication has the effects of the compulsory national publication of an unexamined national application.

13 bis .7.  National Requirements: Notification and Publication

  • (a) Any national Office may notify the International Bureau of any requirement of the national law:
    • (i) that any matter specified in the notification, in addition to those referred to in Rule 13 bis .3 (a)(i), (ii) and (iii), is required to be included in a reference to deposited biological material in a national application;
    • (ii) that one or more of the indications referred to in Rule 13 bis .3 (a) are required to be included in a national application as filed or are required to be furnished at a time specified in the notification which is earlier than 16 months after the priority date.
  • (b) Each national Office shall notify the International Bureau of the depositary institutions with which the national law permits deposits of biological materials to be made for the purposes of patent procedure before that Office or, if the national law does not provide for or permit such deposits, of that fact.
  • (c) The International Bureau shall promptly publish in the Gazette requirements notified to it under paragraph (a) and information notified to it under paragraph (b).

PCT Administrative Instruction Section 209

Indications as to Deposited Biological Material on a Separate Sheet

  • (a) To the extent that any indication with respect to deposited biological material is not contained in the description, it may be given on a separate sheet. Where any such indication is so given, it shall preferably be on Form PCT/RO/134 and, if furnished at the time of filing, the said Form shall, subject to paragraph (b), preferably be attached to the request and referred to in the check list referred to in Rule 3.3 (a)(ii).
  • (b) For the purposes of designated Offices, which have so notified the International Bureau under Rule 13 bis .7 (a), paragraph (a) applies only if the said Form or sheet is included as one of the sheets of the description of the international application at the time of filing.

  REFERENCES TO DEPOSITED BIOLOGICAL MATERIAL IN THE CASE OF MICROBIOLOGICAL INVENTIONS

The PCT does not require the inclusion of a reference to a biological material and/or to its deposit with a depositary institution in an international application; it merely prescribes the contents of any “reference to deposited biological material” (defined as “particulars given... with respect to the deposit of biological material... or to the biological material so deposited”) which is included in an international application, and when such a reference must be furnished. It follows that the applicant may see a need to make such a reference only when it is required for the purpose of disclosing the invention claimed in the international application in a manner sufficient for the invention to be carried out by a person skilled in the art that is, when the law of at least one of the designated States provides for the making, for this purpose, of a reference to a deposited biological material if the invention involves the use of a biological material that is not available to the public. Any reference to a deposited biological material furnished separately from the description will be included in the publication of the international application.

A reference to a deposited biological material made in accordance with the requirements of the PCT must be regarded by each of the designated Offices as satisfying the requirements of the national law applicable in that Office with regard to the contents of such references and the time for furnishing them.

A reference may be made for the purposes of all designated States or for one or only some of the designated States. A reference is considered to be made for the purpose of all designated States unless it is expressly made for certain designated States only. References to different deposits may be made for the purposes of different designated States.

There are two kinds of indication which may have to be given with regard to the deposit of the biological material, namely:

  • (A) indications specified in the PCT Regulations themselves; and
  • (B) additional indications by the national (or regional) Office of (or acting for) a State designated in the international application and which have been published in the PCT Gazette ; these additional indications may relate not only to the deposit of the biological material but also to the biological material itself.

The indications in the first category are:

(1) the name and address of the depositary institution with which the deposit was made;

(2) the date of the deposit with that institution; and

(3) the accession number given to the deposit by that institution.

U.S. requirements include the name and address of the depository institution at the time of filing, the date of the deposit or a statement that the deposit was made on or before the priority date of the international application and, to the extent possible, a taxonomic description of the biological material. See Annex L of the PCT Applicant’s Guide.

The national laws of some of the national (or regional) Offices require that, besides indications concerning the deposit of a biological material, an indication be given concerning the biological material itself, such as, for example, a short description of its characteristics, at least to the extent that this information is available to the applicant. These requirements must be met in the case of international applications for which any such Office is a designated Office, provided that the requirements have been published in the PCT Gazette . Annex L of the PCT Applicant’s Guide indicates, for each of the national (or regional) Offices, the requirements (if any) of this kind which have been published.

If any indication is not included in a reference to a deposited biological material contained in the international application as filed, it may be furnished to the International Bureau within 16 months after the priority date unless the International Bureau has been notified (and, at least 2 months prior to the filing of the international application, it has published in the PCT Gazette ) that the national law requires the indication to be furnished earlier. However, if the applicant makes a request for early publication, all indications should be furnished by the time the request is made, since any designated Office may regard any indication not furnished when the request is made as not having been furnished in time.

No check is made in the international phase to determine whether a reference has been furnished within the prescribed time limit. However, the International Bureau notifies the designated Offices of the date(s) on which indications, not included in the international application as filed, were furnished to it. Those dates are also mentioned in the publication of the international application. Failure to include a reference to a deposited biological material (or any indication required in such a reference) in the international application as filed, or failure to furnish it (or the indication) within the prescribed time limit, has no consequence if the national law does not require the reference (or indication) to be furnished in a national application. Where there is a consequence, it is the same as that which applies under the national law.

To the extent that indications relating to the deposit of a biological material are not given in the description, because they are furnished later, they may be given in the “optional sheet” provided for that purpose. If the sheet is submitted when the international application is filed, a reference to it should be made in the check list contained on the last sheet of the request form. Should certain States be designated, e.g., Israel, Japan, Korea, Mexico, or Turkey , such a sheet must, if used, be included as one of the sheets of the description at the time of filing; otherwise the indications given in it will not be taken into account by the respective patent offices of those designated States in the national phase. Requirements of the various Offices are set forth in Annex L of the PCT Applicant’s Guide, available online at http://www.wipo.int/pct/guide/en/. If the sheet is furnished to the International Bureau later, it must be enclosed with a letter.

Each national (or regional) Office whose national law provides for deposits of biological material for the purposes of patent procedure notifies the International Bureau of the depositary institutions with which the national law permits such deposits to be made. Information on the institutions notified by each of those Offices is published by the International Bureau in the PCT Gazette .

A reference to a deposit cannot be disregarded by a designated Office for reasons pertaining to the institution with which the biological material was deposited if the deposit referred to is one made with a depositary institution notified by that Office. Thus, by consulting the PCT Gazette or Annex L of the PCT Applicant’s Guide, the applicant can be sure that he has deposited the biological material with an institution which will be accepted by the designated Office.

International Searching Authorities and International Preliminary Examining Authorities are not expected to request access to deposited biological material. However, in order to retain the possibility of access to a deposited biological material referred to in an international application which is being searched or examined by such an Authority, the PCT provides that the Authorities may, if they fulfill certain conditions, ask for samples. Thus, an Authority may only ask for samples if it has notified the International Bureau (in a general notification) that it may require samples and the International Bureau has published the notification in the PCT Gazette . The only Authority which has made such a notification (and thus the only Authority which may request samples) is the Japan Patent Office. If a sample is asked for, the request is directed to the applicant, who then becomes responsible for making the necessary arrangements for the sample to be provided.

The furnishing of samples of a deposit of a biological material to third persons is governed by the national laws applicable in the designated Offices. PCT Rule 13 bis .6(b), however, provides for the delaying of any furnishing of samples under the national law applicable in each of the designated (or elected) Offices until the start of the national phase, subject to the ending of this “delaying effect” brought about by the occurrence of either of the following two events:

  • (A) the applicant has, after international publication of the international application, taken the steps necessary to enter the national phase before the designated Office.
  • (B) international publication of the international application has been effected, and that publication has the same effects, under the national law applicable in the designated Office, as the compulsory national publication of an unexamined national application (in other words, the international application has qualified for the grant of “provisional protection”).

1823.02   Nucleotide and/or Amino Acid Sequence Listings, and Tables Related to Sequence Listings [R-08.2012]

PCT Rule 5

The Description

*****

5.2. Nucleotide and/or Amino Acid Sequence Disclosure

  • (a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the description shall contain a sequence listing complying with the standard prescribed by the Administrative Instructions and presented as a separate part of the description in accordance with that standard.
  • (b) Where the sequence listing part of the description contains any free text as defined in the standard provided for in the Administrative Instructions, that free text shall also appear in the main part of the description in the language thereof.

PCT Rule  13 ter

Nucleotide and/or Amino Acid Sequence Listings

13 ter .1.  Procedure Before the International Searching Authority

  • (a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the International Searching Authority may invite the applicant to furnish to it, for the purposes of the international search, a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, unless such listing in electronic form is already available to it in a form and manner acceptable to it, and to pay to it, where applicable, the late furnishing fee referred to paragraph (c), within a time limit fixed in the invitation:
  • (b) Where at least part of the international application is filed on paper and the International Searching Authority finds that the description does not comply with Rule 5.2 (a), it may invite the applicant to furnish, for the purposes of the international search, a sequence listing in paper form complying with the standard provided for in the Administrative Instructions, unless such listing in paper form is already available to it in a form and manner acceptable to it, whether or not the furnishing of a sequence listing in electronic form is invited under paragraph (a), and to pay, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.
  • (c) The furnishing of a sequence listing in response to an invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets, provided that a late furnishing fee may be required under either paragraph (a) or (b) but not both.
  • (d) If the applicant does not, within the time limit fixed in the invitation under paragraph (a) or (b), furnish the required sequence listing and pay any required late furnishing fee, the International Searching Authority shall only be required to search the international application to the extent that a meaningful search can be carried out without the sequence listing.
  • (e) Any sequence listing not contained in the international application as filed, whether furnished in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the international application, but this paragraph shall not prevent the applicant from amending the description in relation to a sequence listing pursuant to Article 34 (2)(b).
  • (f) Where the International Searching Authority finds that the description does not comply with Rule 5.2 (b), it shall invite the applicant to submit the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau.

13 ter .2.  Procedure Before the International Preliminary Examining Authority

Rule 13 ter .1 shall apply mutatis mutandis to the procedure before the International Preliminary Examining Authority.

13 ter .3.  Sequence Listing for Designated Office

No designated Office shall require the applicant to furnish to it a sequence listing other than a sequence listing complying with the standard provided for in the Administrative Instructions.

PCT Administrative Instruction Section 208

Sequence Listings

Any nucleotide and/or amino acid sequence listing (“sequence listing”), whether on paper or in electronic form, filed as part of the international application, or furnished together with the international application or subsequently, shall comply with Annex C.

I.   REQUIREMENTS FOR SEQUENCE LISTINGS

Where an international application discloses one or more nucleotide and/or amino acid sequences, the description must contain a sequence listing complying with the standard specified in the Administrative Instructions. The standard is set forth in detail in Annex C - Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications Under the PCT. The standard allows the applicant to draw up a single sequence listing which is acceptable to all receiving Offices, International Searching and Preliminary Examining Authorities for the purposes of the international phase, and to all designated and elected Offices for the purposes of the national phase. The International Searching Authority and the International Preliminary Examining Authority may, in some cases, invite the applicant to furnish a listing complying with that standard. The applicant may also be invited to furnish a listing in an electronic form provided for in the PCT Administrative Instructions. It is advisable for the applicant to submit a listing of the sequence in electronic form, if such a listing is required by the competent International Searching Authority or International Preliminary Examining Authority, together with the international application rather than to wait for an invitation by the International Searching Authority or International Preliminary Examining Authority.

The electronic form is not mandatory in international applications to be searched by the United States International Searching Authority or examined by the United States International Preliminary Examining Authority. However, if an electronic form of a sequence listing is not provided, a search or examination will be performed only to the extent possible in the absence of the electronic form. The U.S. sequence rules ( 37 CFR 1.821 - 1.825 ) and the PCT sequence requirements are substantively consistent. In this regard, full compliance with the requirements of the U.S. rules will ensure compliance with the applicable PCT requirements. For a detailed discussion of the U.S. sequence rules, see MPEP § 2420 - § 2421.04 .

II.   QUALIFYING FOR POTENTIALLY REDUCED BASIC FEE BY FILING SEQUENCE LISTING AND/OR TABLES ON COMPACT DISC RATHER THAN ON PAPER

PCT Administrative Instruction Section 801

Filing of International Applications Containing Sequence Listings and/or Tables

  • (a)  Pursuant to Rules 89 bis and 89 ter , where an international application contains disclosure of one or more nucleotide and/or amino acid sequence listings (“sequence listings”), the receiving Office may, if it is prepared to do so, accept that the sequence listing part of the description, as referred to in Rule  5.2 (a) and/or any table related to the sequence listing(s) (“sequence listings and/or tables”), be filed, at the option of the applicant:

     

    • (i) only on an electronic medium in electronic form in accordance with Section 802 ; or
    • (ii) both on an electronic medium in electronic form and on paper in accordance with Section 802 ;

    provided that the other elements of the international application are filed as otherwise provided for under the Regulations and these Instructions.

  • (b)  Any receiving Office which is prepared to accept the filing in electronic form of the sequence listings and/or tables under paragraph (a) shall notify the International Bureau accordingly. The notification shall specify the electronic media on which the receiving Office will accept such filings. The International Bureau shall promptly publish any such information in the Gazette.
  • (c)  A receiving Office which has not made a notification under paragraph (b) may nevertheless decide in a particular case to accept an international application the sequence listings and/or tables of which are filed with it under paragraph (a).
  • (d)  Where the sequence listings and/or tables are filed in electronic form under paragraph (a) but not on an electronic medium specified by the receiving Office under paragraph (b), that Office shall, under Article 14 (1)(a)(v), invite the applicant to furnish to it replacement sequence listings and/or tables on an electronic medium specified under paragraph (b).
  • (e) Where an international application containing sequence listings and/or tables in electronic form is filed under paragraph (a) with a receiving Office which is not prepared, under paragraph (b) or (c), to accept such filings, Section 333 (b) and (c) shall apply.

Part 8 of the Administrative Instructions became effective January 11, 2001. Under Administrative Instructions Section 801(a) , applicants may file the nucleotide and/or amino acid sequence listing part of the description of an international application on an electronic medium in electronic form with certain receiving Offices. As of September 6, 2002, Part 8 of the Administrative Instructions was expanded to include tables related to sequence listings. At the present time, the United States Receiving Office (RO/US) has not notified the International Bureau (IB) under Administrative Instructions Section 801(b) that it will be generally accepting the filing of international applications under Administrative Instructions Section 801(a) . The RO/US will, however, accept such applications in a particular case pursuant to Administrative Instructions Section 801(c) , provided that applicant follows the Guidelines set forth below in subsection II. A.

PCT Administrative Instruction Section 803

Calculation of International Filing Fee for International Applications Containing Sequence Listings and/or Tables

Where sequence listings and/or tables are filed in electronic form under Section  801 (a), the international filing fee payable in respect of that application shall include the following two components:

  • (i) a basic component calculated as provided in the Schedule of Fees in respect of all pages filed on paper (that is, all pages of the request, description (excluding sequence listings and/or tables if also filed on paper), claims, abstract and drawings), and
  • (ii) an additional component, in respect of sequence listings and/or tables, equal to 400 times the fee per sheet as referred to in item 1 of the Schedule of Fees, regardless of the actual length of the sequence listings and/or tables filed in electronic form and regardless of the fact that sequence listings and/or tables may have been filed both on paper and in electronic form.

Applicants will usually achieve a significant fee savings by filing international applications under Administrative Instructions Section 801 (a) in situations where the sequence listings and/or tables consume over four hundred (400) combined pages. The potentially reduced international filing fee described in Administrative Instructions Section 803 is available to applications filed pursuant to the Guidelines below. Applicants who do not wish to file under Administrative Instructions Section 801(a) may submit the sequence listing part and any related tables under conventional filing procedures but will not be eligible for the potentially reduced international filing fee described in Administrative Instructions Section 803 .

When filing an international application under Administrative Instructions Section 801(a) in the RO/US, applicant should not submit a paper copy of the Sequence Listing part and/or tables. If both a sequence listing part and a tables part are filed under Administrative Instructions Section 801 (a), the sequence listing part and the tables part must not be filed on the same electronic medium. With specific regard to tables, only tables which are related to sequence listings, as referred to in PCT Rule 5.2 (a), are covered under Part 8 of the Administrative Instructions. Currently, other types of table data may not be filed on electronic media.

A.    Guidelines on Qualifying for Potentially Reduced International Filing Fee Under PCT Administrative Instructions Section 803

1.   What To Submit

The applicant is required to submit a complete copy of the international application, wherein the sequence listing part and/or tables part of the application is submitted on electronic media rather than on paper. The application is to be accompanied by a transmittal letter entitled “Compact Disc Transmittal Sheet For Submission Of Sequence Listing and/or Tables To the United States Receiving Office Under PCT Administrative Instructions - Part 8.”

(a)   Complete International Application With Sequence Listing Part and/or Tables Part on Electronic Media

Applicant shall submit a paper copy of the complete international application, with the exception that the sequence listing part and/or tables part is provided on electronic media rather than on paper. Four (4) copies of the sequence listing part and/or three (3) copies of the tables part are to be included with the application, each copy on an electronic medium or set of electronic media if additional capacity is needed. One copy of the sequence listing part, called the “computer readable form” (CRF) copy required by the Administrative Instructions (see Annex C of the Administrative Instructions, paragraphs 39-46), may be submitted on any acceptable medium under 37 CFR 1.824(c) , although compact disc (CD) media is preferred. All other copies must be submitted only on CD media as specified below:

(1) CD-R

Type: 120mm Compact Disc Recordable

Specification: ISO 9660, 650MB; or

(2) CD-ROM

Type: ISO/IEC 10149:1995, 120mm Compact Disc Read Only Memory

Specification: ISO 9660, 650MB

Each electronic medium shall be enclosed in a hard protective case within a padded envelope. If a sequence listing file is included, the four (4) sequence listing part copies shall be labeled as follows:

  • (1) “COPY 1 – SEQUENCE LISTING PART”
  • (2) “COPY 2 – SEQUENCE LISTING PART”
  • (3) “COPY 3 – SEQUENCE LISTING PART”
  • (4) “CRF”

    If tables file(s) are included, the three (3) tables part copies shall be labeled as follows:

    (1) “COPY 1 – TABLES PART”

    (2) “COPY 2 – TABLES PART”

    (3) “COPY 3 – TABLES PART”

    Additionally, the labeling shall contain the following information:

  • (1) Name of Applicant
  • (2) Title of Invention
  • (3) Applicant’s or Agent’s File Reference Number
  • (4) Date of Recording
  • (5) Computer Operating System Used
  • (6) Name of the Competent Authority (i.e. the RO/US)
  • (7) Indication that the sequence listing part and/or tables part is being filed under Administrative Instructions Section 801(a)
  • (8) If the sequence listing file and/or tables file(s) consumes more than one CD, an indication such as “DISK 1/3”, “DISK 2/3”, and “DISK 3/3”
  • (9) For a CD containing tables, an indication such as "TABLES 1 to 450"

Examples of properly labeled electronic media appear below.

Example of properly labeled electronic medium Example of properly labeled electronic medium (Figure 1)
Example of properly labeled electronic medium (Figure 2)

Important Notes :

The electronic medium itself must be neatly labeled with the required information. Labeling of the protective case is recommended, but not required. Sequence listings or tables submitted for correction, rectification, or amendment must satisfy the additional labeling requirements of Administrative Instructions Section 802(d) .

Each CD shall contain either: (1) only a sequence listing part or (2) only a tables part. A sequence listing part and a tables part must not reside together on the same CD. Furthermore, each file in the tables part must have a file name which indicates the name of the table contained therein, e.g., “table-1.txt”, “table-2.txt”, etc. In addition, no programs or any explanatory files shall appear on any CD.

The sequence listing file and/or tables file(s) must be in compliance with the American Standard Code for Information Interchange (ASCII) and formatted in accordance with Administrative Instructions Annex C, paragraph 41 and Administrative Instructions Annex C- bis . No copy protection or encryption techniques are permitted. File compression is acceptable for the sequence listing part, so long as the compressed file is in a self-extracting format and uses the compression method described in Administrative Instructions Part 7, Annex F, Section 4.1.1. File Compression is not permitted for the tables part.

(b)   Compact Disc Transmittal Sheet for Submission of Sequence Listing and/or Tables to the United States Receiving Office Under PCT Administrative Instructions - Part 8.

If applicant desires for an application to be accepted pursuant to Administrative Instructions Section 801(c) , the application must be submitted with a document entitled “Compact Disc Transmittal Sheet For Submission Of Sequence Listing and/or Tables To The United States Receiving Office Under PCT Administrative Instructions - Part 8.” This document is available as a PDF sheet that may be downloaded from http: //www.uspto.gov/web/offices/pac/dapps/pct/part8translett.pdf. The PDF sheet includes the following information:

  • (1) Name of Applicant
  • (2) Applicant’s or Agent’s File Reference Number
  • (3) Title of Invention
  • (4) Name of Sequence Listing File and/or Tables File(s) (as per CD directory)
  • (5) Size of Sequence Listing File and/or Tables Files(s) (in bytes or kilobytes as per CD directory)
  • (6) Date of Sequence Listing File and/or Tables File(s) (as per CD directory)
  • (7) Statement that the four (4) submitted copies of the Sequence Listing Part and/or three (3) submitted copies of the Tables Part are identical
  • (8) Contact information
    • (a) Name of Contact
    • (b) Telephone Number
    • (c) Facsimile Number
  • (9) Signature of Applicant, Agent, or Common Representative

Important Note: The “Compact Disc Transmittal Sheet For Submission Of Sequence Listing and/or Tables To The United States Receiving Office Under PCT Administrative Instructions - Part 8” is separate and apart from any other transmittal letter. The Transmittal Sheet requirement cannot be satisfied by incorporating the above information into any other document. A sample copy of a “Compact Disc Transmittal Sheet for Submission of Sequence Listing To the United States Receiving Office Under PCT Administrative Instructions - Part 8” is reproduced on the following page.

Compact Disc Transmittal Sheet for Submission of Sequence Listing And/Or Tables to the United States Receiving Office Under PCT Administrative Instructions - Part 8

2.   Where To Submit

(a)   United States Postal Service (Express Mail, Priority Mail, First Class Mail, etc.)

If deposited with the United States Postal Service, the entire international application, including all applicable items set forth in MPEP § 1823.02 paragraph II.A.1. above, should be addressed to:

Mail Stop PCT

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

(b)   Hand-Carried or by Private Delivery Service

If hand-carried or deposited with a private delivery service, the entire international application, including all applicable items set forth in MPEP § 1823.02 paragraph II.A.1. above, should be delivered to:

U.S. Patent and Trademark Office

Customer Service Window, Mail Stop PCT

Randolph Building

401 Dulany Street

Alexandria, VA 22314

1824    The Claims [R-08.2012]

PCT Article 6

The Claims

The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.

PCT Rule 6

The Claims

6.1. Number and Numbering of Claims

  • (a) The number of the claims shall be reasonable in consideration of the nature of the invention claimed.
  • (b) If there are several claims, they shall be numbered consecutively in Arabic numerals.
  • (c) The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions.

6.2. References to Other Parts of the International Application

  • (a) Claims shall not, except where absolutely necessary, rely, in respect of the technical features of the invention, on references to the description or drawings. In particular, they shall not rely on such references as: “as described in part ... of the description,” or “as illustrated in figure ... of the drawings.”
  • (b) Where the international application contains drawings, the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When used, the reference signs shall preferably be placed between parentheses. If inclusion of reference signs does not particularly facilitate quicker understanding of a claim, it should not be made. Reference signs may be removed by a designated Office for the purposes of publication by such Office.

6.3. Manner of Claiming

  • (a) The definition of the matter for which protection is sought shall be in terms of the technical features of the invention.
  • (b) Whenever appropriate, claims shall contain:
    • (i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,
    • (ii) a characterizing portion - preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect - stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.
  • (c) Where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State.

6.4. Dependent Claims

  • (a) Any claim which includes all the features of one or more other claims (claim in dependent form, hereinafter referred to as “dependent claim”) shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such claims in the alternative only. Multiple dependent claims shall not serve as a basis for any other multiple dependent claim. Where the national law of the national Office acting as International Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17 (2)(b) in the international search report. Failure to use the said manner of claiming shall have no effect in a designated State if the manner of claiming actually used satisfies the national law of that State.
  • (b) Any dependent claim shall be construed as including all the limitations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particular claim in relation to which it is considered.
  • (c) All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.

6.5. Utility Models

Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.

PCT Administrative Instruction Section 205

Numbering and Identification of Claims Upon Amendment

  • (a) Amendments to the claims under Article 19 or Article 34 (2)(b) may be made either by cancelling one or more entire claims, by adding one or more new claims or by amending the text of one or more of the claims as filed. All the claims appearing on a replacement sheet shall be numbered in Arabic numerals. Where a claim is cancelled, no renumbering of the other claims shall be required. In all cases where claims are renumbered, they shall be renumbered consecutively.
  • (b) The applicant shall, in the letter referred to in the second and third sentences of Rule 46.5 (a) or in the second and fourth sentences of Rule 66.8 (a), indicate the differences between the claims as filed and the claims as amended. He shall, in particular, indicate in the said letter, in connection with each claim appearing in the international application (it being understood that identical indications concerning several claims may be grouped), whether:
    • (i) the claim is unchanged;
    • (ii) the claim is cancelled;
    • (iii) the claim is new;
    • (iv) the claim replaces one or more claims as filed;
    • (v) the claim is the result of the division of a claim as filed.

37 C.F.R. 1.436  The claims.

The requirements as to the content and format of claims are set forth in PCT Art. 6 and PCT Rules 6 , 9 , 10 and 11 and shall be adhered to. The number of the claims shall be reasonable, considering the nature of the invention claimed.

The claim or claims must “define the matter for which protection is sought.” Claims must be clear and concise. They must be fully supported by the description. PCT Rule 6 contains detailed requirements as to the number and numbering of claims, the extent to which any claim may refer to other parts of the international application, the manner of claiming, and dependent claims. As to the manner of claiming, the claims must, whenever appropriate, be in two distinct parts; namely, the statement of the prior art and the statement of the features for which protection is sought (“the characterizing portion”).

The physical requirements for the claims are the same as those for the description. Note that the claims must commence on a new sheet.

The procedure for rectification of obvious mistakes is explained in MPEP § 1836 . The omission of an entire sheet of the claims cannot be rectified without affecting the international filing date , except in applications filed on or after April 1, 2007, where, if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the original international filing date may be retained if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6 . It is recommended that a request for rectification of obvious mistakes in the claims be made only if the mistake is liable to affect the international search; otherwise, the rectification should be made by amending the claims.

The claims can be amended during the international phase under PCT Article 19 on receipt of the international search report, during international preliminary examination if the applicant has filed a Demand, and during the national phase.

Multiple dependent claims are permitted in international applications before the United States Patent and Trademark Office as an International Searching and International Preliminary Examining Authority or as a Designated or Elected Office, if they are in the alternative only and do not serve as a basis for any other multiple dependent claim ( PCT Rule 6.4(a) , 35 U.S.C. 112). The claims, being an element of the application, should start on a new page ( PCT Rule 11.4 ). Page numbers must not be placed in the margins (PCT Rule 11.7 (b)). Line numbers should appear in the right half of the left margin (PCT Rule 11.8 (b)). Paragraph numbers (e.g., paragraph numbers complying with 37 CFR 1.52 (b)(6)) are acceptable provided they are not placed in the margins. See PCT Rule 11.6 (e).

The number of claims shall be reasonable, considering the nature of the invention claimed ( 37 CFR 1.436 ).

1825    The Drawings [R-08.2012]

PCT Article 7

The Drawings

  • (1) Subject to the provisions of paragraph (2)(ii), drawings shall be required when they are necessary for the understanding of the invention.
  • (2) Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings:
    • (i) the applicant may include such drawings in the international application when filed.
    • (ii) any designated Office may require that the applicant file such drawings with it within the prescribed time limit.

PCT Rule 7

The Drawings

7.1. Flow Sheets and Diagrams

Flow sheets and diagrams are considered drawings.

7.2. Time Limit

The time limit referred to in Article 7 (2)(ii) shall be reasonable under the circumstances of the case and shall, in no case, be shorter than two months from the date of the written invitation requiring the filing of drawings or additional drawings under the said provision.

PCT Rule 11

Physical Requirements of the International Application

*****

11.5. Size of Sheets

The size of the sheets shall be A4 (29.7 cm x 21 cm). However, any receiving Office may accept international applications on sheets of other sizes provided that the record copy, as transmitted to the International Bureau, and, if the competent International Searching Authority so desires, the search copy, shall be of A4 size.

11.6. Margins

*****

  • (c) On sheets containing drawings, the surface usable shall not exceed 26.2 cm x 17.0 cm. The sheets shall not contain frames around the usable or used surface. The minimum margins shall be as follows:
  • "" - top: 2.5 cm
  • "" - left side: 2.5 cm
  • "" - right side: 1.5 cm
  • "" - bottom: 1.0 cm

*****

11.11. Words in Drawings

(a) The drawings shall not contain text matter, except a single word or words, when absolutely indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB,” and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords indispensable for understanding.

(b) Any words used shall be so placed that, if translated, they may be pasted over without interfering with any lines of the drawings.

*****

11.13. Special Requirements for Drawings

  • (a) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings.
  • (b) Cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines.
  • (c) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty.
  • (d) When, in exceptional cases, the scale is given on a drawing, it shall be represented graphically.
  • (e) All numbers, letters and reference lines, appearing on the drawings, shall be simple and clear. Brackets, circles or inverted commas shall not be used in association with numbers and letters.
  • (f) All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments.
  • (g) Each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure.
  • (h) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used.
  • (i) The same sheet of drawings may contain several figures. Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets shall be so arranged that the complete figure can be assembled without concealing any part of any of the figures appearing on the various sheets.
  • (j) The different figures shall be arranged on a sheet or sheets without wasting space, preferably in an upright position, clearly separated from one another. Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet.
  • (k) The different figures shall be numbered in Arabic numerals consecutively and independently of the numbering of the sheets.
  • (l) Reference signs not mentioned in the description shall not appear in the drawings, and vice versa.
  • (m) The same features, when denoted by reference signs, shall, throughout the international application, be denoted by the same signs.
  • (n) If the drawings contain a large number of reference signs, it is strongly recommended to attach a separate sheet listing all reference signs and the features denoted by them.

*****

37 C.F.R. 1.437  The drawings.

  • (a) Drawings are required when they are necessary for the understanding of the invention (PCT Art. 7 ).
  • (b) The physical requirements for drawings are set forth in PCT Rule 11 and shall be adhered to.

The international application must contain drawings when they are necessary for the understanding of the invention. Moreover where, without drawings being actually necessary for the understanding of the invention, its nature admits of illustration by drawings, the applicant may include such drawings and any designated Office may require the applicant to file such drawings during the national phase. Flow sheets and diagrams are considered drawings.

Drawings must be presented on one or more separate sheets. They may not be included in the description, the claims or the abstract. They may not contain text matter, except a single word or words when absolutely indispensable. Note that if the drawings contain text matter not in English but in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office, the international application will be transmitted to the International Bureau for processing in its capacity as a Receiving Office. See 37 CFR 1.412(c)(6)(ii) . If the drawings contain text matter not in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office, the application will be denied an international filing date.

All lines in the drawings must, ordinarily, be drawn with the aid of a drafting instrument and must be executed in black, uniformly thick and well-defined lines. Color drawings are not acceptable. PCT Rules 11.10 to 11.13 contain detailed requirements as to further physical requirements of drawings. Drawings newly executed according to national standards may not be required during the national phase if the drawings filed with the international application comply with PCT Rule 11 . The examiner may require new drawings where the drawings which were accepted during the international phase did not comply with PCT Rule 11 . A file reference may be indicated in the upper left corner on each sheet of the drawings as for the description.

All of the figures constituting the drawings must be grouped together on a sheet or sheets without waste of space, preferably in an upright position and clearly separated from each other. Where the drawings or tables cannot be presented satisfactorily in an upright position, they may be placed sideways, with the tops of the drawings or tables on the left-hand side of the sheet.

The usable surface of sheets (which must be of A4 size) must not exceed 26.2 cm x 17.0 cm. The sheets must not contain frames around the usable surface. The minimum margins which must be observed are: top and left side: 2.5 cm; right side: 1.5 cm; bottom: 1.0 cm.

All sheets of drawings must be numbered in the center of either the top or the bottom of each sheet but not in the margin in numbers larger than those used as reference signs in order to avoid confusion with the latter. For drawings, a separate series of page numbers is to be used. The number of each sheet of the drawings must consist of two Arabic numerals separated by an oblique stroke, the first being the sheet number and the second being the total number of sheets of drawings. For example, “2/5” would be used for the second sheet of drawings where there are five in all.

Different figures on the sheets of drawings must be numbered in Arabic numerals consecutively and independently of the numbering of the sheets and, if possible, in the order in which they appear. This numbering should be preceded by the expression “Fig.”

The PCT makes no provision for photographs. Nevertheless, they are allowed by the International Bureau where it is impossible to present in a drawing what is to be shown (for instance, crystalline structures). Where, exceptionally, photographs are submitted, they must be on sheets of A4 size, they must be black and white, and they must respect the minimum margins and admit of direct reproduction. Color photographs are not accepted.

The procedure for rectification of obvious mistakes in the drawings is explained in MPEP § 1836 . The omission of an entire sheet of drawings cannot be rectified without affecting the international filing date , except in applications filed on or after April 1, 2007, where, if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the original international filing date may be retained if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6 . Changes other than the rectification of obvious mistakes are considered amendments.

The drawings can be amended during the international phase only if the applicant files a Demand for international preliminary examination. The drawings can also be amended during the national phase.

If drawings are referred to in an international application and are not found in the search copy file, the examiner should refer the application to a Special Program Examiner in his or her Technology Center. See Administrative Instructions Section 310 .

1826    The Abstract [R-08.2012]

PCT Rule 8

The Abstract

8.1. Contents and Form of the Abstract

  • (a) The abstract shall consist of the following:
    • (i) a summary of the disclosure as contained in the description, the claims, and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention;
    • (ii) where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention.
  • (b) The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).
  • (c) The abstract shall not contain statements on the alleged merits or value of the claimed invention or on its speculative application.
  • (d) Each main technical feature mentioned in the abstract and illustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.

8.2. Figure

  • (a) If the applicant fails to make the indication referred to in Rule 3.3 (a)(iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accompany the abstract when the latter is published by the International Bureau. In such case, the abstract shall be accompanied by the figure or figures so indicated by the International Searching Authority. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant.
  • (b) If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule 3.3 (a)(iii).

8.3. Guiding Principles in Drafting

The abstract shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer or researcher in formulating an opinion on whether there is a need for consulting the international application itself.

37 C.F.R. 1.438  The abstract.

  • (a) Requirements as to the content and form of the abstract are set forth in PCT Rule 8 , and shall be adhered to.
  • (b) Lack of an abstract upon filing of an international application will not affect the granting of a filing date. However, failure to furnish an abstract within one month from the date of the notification by the Receiving Office will result in the international application being declared withdrawn.

The abstract must consist of a summary of the disclosure as contained in the description, the claims and any drawings. Where applicable, it must also contain the most characteristic chemical formula. The abstract must be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English). National practice (see MPEP § 608.01(b) ) also provides a maximum of 150 words for the abstract. See 37 CFR 1.72 (b). The PCT range of 50 - 150 words is not absolute but publication problems could result when the PCT limit is increased beyond the 150 word limit. Maintaining the PCT upper limit is encouraged. As a rule of thumb, it can be said that the volume of the text of the abstract, including one of the figures from the drawings (if any), should not exceed what can be accommodated on an A4 sheet of typewritten matter, 1 1/2 spaced. The abstract of the international application as filed must begin on a new sheet following the claims ( Administrative Instructions Section 207 ). The other physical requirements must correspond to those for the description. The abstract must be so drafted that it can efficiently serve as a scanning tool for the purposes of searching in the particular art. These and other requirements concerning the abstract are spelled out in detail in PCT Rule 8 . Useful guidance can be obtained from the “Guidelines for the Preparation of Abstracts Under the Patent Cooperation Treaty,” published in the PCT Gazette (No. 5/1978). Those Guidelines may be obtained, in English and French, from the International Bureau.

The abstract should be primarily related to what is new in the art to which the invention pertains. Phrases should not be used which are implicit, (for instance, “the invention relates to...”), and statements on the alleged merits or value of the invention are not allowed.

Where the receiving Office finds that the abstract is missing, it invites the applicant to furnish it within a time limit fixed in the invitation. The international application is considered withdrawn if no abstract is furnished to the receiving Office within the time limit fixed. Where the receiving Office has not invited the applicant to furnish an abstract, the International Searching Authority establishes one. The same applies where the abstract does not comply with the requirements outlined in the preceding paragraphs. Where the abstract is established by the International Searching Authority, the applicant may propose modifications of, or comment on, the new abstract until the expiration of 1 month from the date of mailing of the international search report (PCT Rule 38.3 ).

  SUMMARY OF ABSTRACT REQUIREMENTS

Preferably 50-150 words. Should contain:

  • (A) Indication of field of invention.
  • (B) Clear indication of the technical problem.
  • (C) Gist of invention’s solution of the problem.
  • (D) Principal use or uses of the invention.
  • (E) Reference numbers of the main technical features placed between parentheses.
  • (F) Where applicable, chemical formula which best characterizes the invention.

Should not contain:

  • (A) Superfluous language.
  • (B) Legal phraseology such as “said” and “means.”
  • (C) Statements of alleged merit or speculative application.
  • (D) Prohibited items as defined in PCT Rule 9 .

1827    Fees [R-08.2012]

A complete list of Patent Cooperation Treaty fee amounts which are to be paid to the United States Patent and Trademark Office, for both the national and international stages, can be found at the beginning of each weekly issue of the Official Gazette of the United States Patent and Trademark Office and on the Office of PCT Legal Administration page of the USPTO web site (see MPEP § 1730 ). Applicants are urged to refer to this list before submitting any fees to the USPTO.

Pursuant to PCT Rules 14.1(c) , 15.4 , and 16.1(f) , the international filing , transmittal, and search fee payable is the international filing , transmittal, and search fee in effect on the receipt date of the international application. See 37 CFR 1.431(c) .

1827.01   Refund of International Application Fees [R-08.2012]

37 C.F.R. 1.446  Refund of international application filing and processing fees.

  • (a) Money paid for international application fees, where paid by actual mistake or in excess, such as a payment not required by law or treaty and its regulations, may be refunded. A mere change of purpose after the payment of a fee will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested and will not notify the payor of such amounts. If the payor or party requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer, the Office may use the banking information provided on the payment instrument to make any refund by electronic funds transfer.
  • (b) Any request for refund under paragraph (a) of this section must be filed within two years from the date the fee was paid. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization under § 1.25 (b), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
  • (c) Refund of the supplemental search fees will be made if such refund is determined to be warranted by the Director or the Director’s designee acting under PCT Rule 40.2 (c).
  • (d) The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau ( PCT Rules 15.6 and 16.2 ). The search fee will be refunded if the application is withdrawn before transmittal of the search copy to the International Searching Authority. The transmittal fee will not be refunded.
  • (e) The handling fee ( § 1.482 (b)) will be refunded ( PCT Rule 57.6 ) only if:
    • (1) The Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau, or
    • (2) The Demand is considered not to have been submitted ( PCT Rule 54.4 (a)).

Although 37 CFR 1.446(a) indicates that a “mere change of purpose after the payment of a fee will not entitle a party to a refund of such fee,” 37 CFR 1.446(d) and (e) contain exceptions to this general statement.

According to 37 CFR 1.446(d) , the search fee will be refunded if no international filing date is accorded or if the application is withdrawn before the search copy is transmitted to the International Searching Authority. The transmittal fee will not be refunded.

According to 37 CFR 1.446(e) , the handling fee will be refunded if the Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau.

Refund of the supplemental search fee will be made if the applicant is successful in a protest (filed pursuant to 37 CFR 1.477 ) to a holding of lack of unity of invention. The supplemental search fee must be paid and be accompanied by (1) a protest and (2) a request for refund of the supplemental search fee.

Any request for refund of the search fee made after the search copy has been transmitted to the International Searching Authority must be directed to the International Searching Authority andnot to the Receiving Office. This is clearly necessary where applicant has chosen the European Patent Office or the Korean Intellectual Property Office as the International Searching Authority.

1828    Priority Claim and Document [R-08.2012]

An applicant who claims the priority of one or more earlier national, regional or international applications for the same invention must indicate on the Request, at the time of filing, the country in or for which it was filed, the date of filing, and the application number. See PCT Article 8 and PCT Rule 4.10 for priority claim particulars and PCT Rule 90 bis .3 for withdrawal of priority claims. Note that under PCT Rule 4.10 , an applicant may claim the priority of an application filed in or for a State which is a Member of the World Trade Organization (WTO), even if that State is not party to the Paris Convention for the Protection of Industrial Property (Paris Convention). However, a PCT Contracting State that is not a Member of the WTO would not be obliged to recognize the effects of such a priority claim.

Effective July 1, 1998, applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the International Bureau (IB) within 16 months from the priority date, or where the priority date is changed, within 16 months from the priority date so changed, whichever period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of 4 months from the international filing date. PCT Rule 26 bis .1 and 37 CFR 1.451 and 1.465 .

Under the PCT procedure, the applicant may file the certified copy of the earlier filed national application together with the international application in the receiving Office for transmittal with the record copy, or alternatively the certified copy may be submitted by the applicant to the IB or the receiving Office not later than 16 months from the priority date or, if the applicant has requested early processing in any designated Office, not later than the time such processing or examination is requested. The IB will normally furnish copies of the certified copy to the various designated Offices so that the applicant will not normally be required to submit certified copies to each designated Office. If the earlier filed application was filed with the U.S. Patent and Trademark Office, applicant may request the U.S. Receiving Office (RO/US) to prepare, and transmit to the IB, a certified copy of the earlier application. In international applications filed in the RO/US on or after August 31, 2007, the RO/US will electronically transmit the certified copy of the earlier application if the applicant has made a request in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b). Further, in such international applications filed on or after August 31, 2007, the USPTO has waived the fee set out in 37 CFR 1.19 (b)(1)(iii)(A) for electronically providing a copy of the patent application as filed.

For use of the priority document in a U.S. national application which entered the national stage from an international application after compliance with 35 U.S.C. 371 , see MPEP § 1893.03 (c).

1828.01   Restoration of the Right of Priority [R-08.2012]

On April 1, 2007, the regulations to the PCT were amended to allow applicants with applications which were filed on or after that date and which were also filed after the expiration of the 12 month priority period but within two months of the expiration of the priority period, to request that the right of priority be restored, provided that the failure to file the application within the priority period was in spite of due care or unintentional. See PCT Rule 26 bis .3 . Grantable requests for restoration of the right of priority must be filed within two months from the date of expiration of the priority period as defined by new PCT Rule 2.4 , and must be accompanied by: (i) the requisite fee; (ii) a notice under PCT Rule 26 bis .1 (a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application; and (iii) a statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. If the applicant makes a request for early publication under PCT Article 21 (2)(b), any of requirements (i), (ii), or (iii) above which are filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time.

The International Bureau has indicated that it intends to decide these matters under both the in spite of due care and unintentional standards. Therefore, in view of the fact that the USPTO only decides these matters under the unintentional standard, applicants may wish to consider filing directly with the International Bureau as receiving Office instead of the United States Receiving Office in the situation where applicant desires to request restoration of the right of priority under the in spite of due care standard. Applicants may also request that an application be forwarded to the International Bureau for processing in its capacity as a receiving Office in accordance with PCT Rule 19.4 (a)(iii) in situations where applicants, after the international application has been filed, realize that the application was filed after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. Applications filed with, or forwarded to, the International Bureau must have a foreign filing license.

It must be noted that restoration of a right of priority to a prior application by the United States Receiving Office, or by any other receiving Office, under the provisions of PCT Rule 26 bis .3 , will not entitle applicants to a right of priority to such prior application in any application which enters the national stage under 35 U.S.C. 371 , or in any application filed under 35 U.S.C. 111 (a) which claims benefit under 35 U.S.C. 120 and 365 (c) to an international application in which the right to priority has been restored. See 35 U.S.C. 119 . It must also be noted that even though restoration of such a right will not entitle applicant to the right of priority in a subsequent United States application, the priority date will still govern all PCT time limits, including the thirty-month period for filing national stage papers and fees under 37 CFR 1.495 . PCT Article 2 (ix), which defines “priority date” for purposes of computing time limits, contains no limitation that the priority claim be valid. Thus, for example, in an international application containing an earliest priority claim to a German application filed thirteen months prior to the filing date of the international application, the filing date of the German application will be used as the basis for computing time limits under the PCT, including the thirty-month time period set forth in 37 CFR 1.495 to submit the basic national fee (37 CFR 1.492 (a)) to avoid abandonment, even though applicant would not be entitled to priority to the German application in the United States national phase since the German application was filed more than twelve months from the international filing date. See 35 U.S.C. 119 (a) and 365 (b).

1830    International Application Transmittal Letter [R-08.2012]

A PCT international application transmittal letter, Form PTO-1382, is available for applicants to use when filing PCT international applications and related documents with the United States Receiving Office. The form , which is intended to simplify the filing of PCT international applications and related documents with the United States Receiving Office, may be obtained online at http://www.uspto.gov/web/offices/pac/dapps/pct/chapter1.htm.

1832    License Request for Foreign Filing Under the PCT [R-08.2012]

A license for foreign filing is not required to file an international application in the United States Receiving Office but may be required before the applicant or the U.S. Receiving Office can forward a copy of the international application to a foreign patent office, the International Bureau or other foreign authority ( 35 U.S.C. 368 , 37 CFR 5.1 and 5.11 ). A foreign filing license to permit transmittal to a foreign office or international authority is not required if the international application does not disclose subject matter in addition to that disclosed in a prior U.S. national application filed more than 6 months prior to the filing of the international application ( 37 CFR 5.11(a) ). In all other instances (direct foreign filings outside the PCT or filings in a foreign receiving Office), the applicant should petition for a license for foreign filing ( 37 CFR 5.12 ) and if appropriate, identify any additional subject matter in the international application which was not in the earlier U.S. national application ( 37 CFR 5.14 (c)). This request and disclosure information may be supplied on the PCT international application transmittal letter, Form PTO-1382.

If no petition or request for a foreign filing license is included in the international application, and it is clear that a license is required because of the designation of foreign countries and the time at which the Record Copy must be transmitted, it is current Office practice to construe the filing of such an international application to include a request for a foreign filing license. If the license can be granted, it will be issued without further correspondence. If no license can be issued, or further information is required, applicant will be contacted. The automatic request for a foreign filing license does not apply to the filing of a foreign application outside the PCT.

  EFFECT OF SECRECY ORDER

If a secrecy order is applied to an international application, the application will not be forwarded to the International Bureau as long as the secrecy order remains in effect ( PCT Article 27(8) and35 U.S.C. 368 ). If the secrecy order remains in effect, the international application will be declared withdrawn (abandoned) because the Record Copy of the international application was not received in time by the International Bureau ( 37 CFR 5.3(d) , PCT Article 12(3) , and PCT Rule 22.3 ). It is, however, possible to prevent abandonment as to the United States of America if it has been designated, by fulfilling the requirements of 35 U.S.C. 371(c) .

1834    Correspondence [R-08.2012]

PCT Rule 92

Correspondence

92.1. Need for Letter and for Signature

(a) Any paper submitted by the applicant in the course of the international procedure provided for in the Treaty and these Regulations, other than the international application itself, shall, if not itself in the form of a letter, be accompanied by a letter identifying the international application to which it relates. The letter shall be signed by the applicant.

(b) If the requirements provided for in paragraph (a) are not complied with, the applicant shall be informed as to the non-compliance and invited to remedy the omission within a time limit fixed in the invitation. The time limit so fixed shall be reasonable in the circumstances; even where the time limit so fixed expires later than the time limit applying to the furnishing of the paper (or even if the latter time limit has already expired), it shall not be less than 10 days and not more than one month from the mailing of the invitation. If the omission is remedied within the time limit fixed in the invitation, the omission shall be disregarded; otherwise, the applicant shall be informed that the paper has been disregarded.

(c) Where non-compliance with the requirements provided for in paragraph (a) has been overlooked and the paper taken into account in the international procedure, the non-compliance shall be disregarded.

92.2. Languages

  • (a) Subject to Rules 55.1 and 66.9 and to paragraph (b) of this Rule, any letter or document submitted by the applicant to the International Searching Authority or the International Preliminary Examining Authority shall be in the same language as the international application to which it relates. However, where a translation of the international application has been transmitted under Rule 23.1 (b) or furnished under Rule 55.2 , the language of such translation shall be used.
  • (b) Any letter from the applicant to the International Searching Authority or the International Preliminary Examining Authority may be in a language other than that of the international application, provided the said Authority authorizes the use of such language.
  • (c) [Deleted]
  • (d) Any letter from the applicant to the International Bureau shall be in English or French.
  • (e) Any letter or notification from the International Bureau to the applicant or to any national Office shall be in English or French.

*****

PCT Administrative Instruction Section 105

Identification of International Application With Two or More Applicants

Where any international application indicates two or more applicants, it shall be sufficient, for the purpose of identifying that application, to indicate, in any Form or correspondence relating to such application, the name of the applicant first named in the request. The provisions of the first sentence of this Section do not apply to the demand.

I.    NOTIFICATION UNDER PCT RULE 92.1(b) OF DEFECTS WITH REGARD TO CORRESPONDENCE

If the Office finds that papers, other than the international application itself, are not accompanied by a letter identifying the international application to which they relate, or are accompanied by an unsigned letter, or are furnished in the form of an unsigned letter, it notifies the applicant and invites him or her to remedy the omission. The Office disregards the said papers or letter if the omission is not remedied within the time limit fixed in the invitation ( PCT Rule 92.1(b) ). If the omission has been overlooked and the paper taken into account, the omission is disregarded.

II.    CORRESPONDENCE ADDRESS

Where there is a sole applicant without an agent in an international application, correspondence will be sent to the applicant at his or her indicated address; or, if he or she has appointed one or more agents, to that agent or the first-mentioned of those agents; or, if he or she has not appointed an agent but has indicated a special address for notifications, at that special address.

Where there are two or more applicants who have appointed one or more common agents, correspondence will be addressed to that agent or the first-mentioned of those agents. Where no common agent has been appointed, correspondence will be addressed to the common representative (either the appointed common representative or the applicant who is considered to be the common representative ( PCT Rule 90.2 ) at the indicated address; or, if the common representative has appointed one or more agents, to that agent or the first-mentioned of those agents; or, if the common representative has not appointed an agent but has indicated a special address for notifications, at that address.

III.    FILING OF CORRESPONDENCE BY MAIL

The “Express Mail” procedure set forth at 37 CFR 1.10 applies to papers filed with the U.S. Patent and Trademark Office (USPTO) in international applications. Accordingly, papers filed with the USPTO in international applications will be accorded by the USPTO the date of deposit with the United States Postal Service as shown on the “date-in” on the “Express Mail” mailing label as the date of filing in the USPTO if the provisions of 37 CFR 1.10 are complied with. See MPEP § 513 .

If there is a question regarding the date of deposit, the Express Mail provisions of 37 CFR 1.10(c) -(e) require, in addition to using the “Express Mail Post Office to Addressee” service, an indication of the “Express Mail” mailing label number on each paper or fee. In situations wherein the correspondence includes several papers directed to the same application (for example, Request, description, claims, abstract, drawings, and other papers) the correspondence may be submitted with a cover or transmittal letter, which should itemize the papers. The cover or transmittal letter must have the “Express Mail” mailing label number thereon.

The certificate of mailing by first class mail procedure set forth at 37 CFR 1.8 differs from the 37 CFR 1.10 Express Mail procedure. See 37 CFR 1.8(a) (2)(i)(D) and (E) . It is important to understand that the 37 CFR 1.8 certificate of mailing procedure CANNOT be used for filing any papers during the international stage if the date of deposit is desired. If the 37 CFR 1.8 certificate of mailing procedure is used, the paper and/or fee will be accorded the date of receipt in the USPTO unless the receipt date falls on a Saturday, Sunday, or Federal holiday in which case the date of receipt will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday ( 37 CFR 1.6 (a)(1)). Accordingly, the certificate of mailing procedures of 37 CFR 1.8 are not available to have a submission during the international stage considered as timely filed if the submission is not physically received at the USPTO on or before the due date.

1834.01   Use of Telegraph, Teleprinter, Facsimile Machine [R-08.2012]

PCT Rule 92.4 provides that a national Office may receive documents by telegraph, teleprinter, or facsimile machine. However, the United States Patent and Trademark Office has not informed the International Bureau that it accepts such submissions other than facsimile transmissions. Accordingly, applicants may not currently file papers in international applications with the United States Patent and Trademark Office via telegraph or teleprinter.

Generally, any paper may be filed by facsimile transmission with certain exceptions which are identified in 37 CFR 1.6(d) . It should be noted that a facsimile transmission of a document is not permitted and, if submitted, will not be accorded a date of receipt if the document is:

  • (A) Required by statute to be certified;
  • (B) A color drawing submitted under 37 CFR 1.437 ;
  • (C) An international application for patent; or
  • (D) A copy of the international application and the basic national fee necessary to enter the national stage, as specified in 37 CFR 1.495(b) .

Facsimile transmission may be used to submit substitute sheets (other than color drawings), extensions of time, power of attorney, fee authorizations (other than the basic national fee), demands , response to written opinions, oaths or declarations, petitions, and translations in international applications.

A Certificate of Transmission may be used as provided in 37 CFR 1.8(a) (1) except in the instances specifically excluded in 37 CFR 1.8(a) (2). Note particularly that the Certificate of Transmission cannot be used for the filing of an international application for patent or correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority. Guidelines for facsimile transmission are clearly set forth in 37 CFR 1.6(d) and should be read before transmitting by facsimile machine.

A signature on a document received via facsimile in a permitted situation is acceptable as a proper signature. See PCT Rule 92.4(b) and 37 CFR 1.4(d) (1)(ii).

The receipt date of a document transmitted via facsimile is the date in the USPTO on which the transmission is completed, unless the receipt date is a Saturday, Sunday, or Federal holiday in which case the date of receipt will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday (37 CFR 1.6(a)(3)). See37 CFR 1.6(d). Where a document is illegible or part of the document is not received, the document will be treated as not received to the extent that it is illegible or the transmission failed. See PCT Rule 92.4(c).

1834.02   Irregularities in the Mail Service [R-08.2012]

PCT Rule 82

Irregularities in the Mail Service

82.1. Delay or Loss in Mail

  • (a) Any interested party may offer evidence that he has mailed the document or letter five days prior to the expiration of the time limit. Except in cases where surface mail normally arrives at its destination within two days of mailing, or where no airmail service is available, such evidence may be offered only if the mailing was by airmail. In any case, evidence may be offered only if the mailing was by mail registered by the postal authorities.
  • (b) If the mailing, in accordance with paragraph (a), of a document or letter is proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, or, if the document or letter is lost in the mail, substitution for it of a new copy shall be permitted, provided that the interested party proves to the satisfaction of the said Office or organization that the document or letter offered in substitution is identical with the document or letter lost.
  • (c) In the cases provided for in paragraph (b), evidence of mailing within the prescribed time limit, and, where the document or letter was lost, the substitute document or letter as well as the evidence concerning its identity with the document or letter lost shall be submitted within one month after the date on which the interested party noticed or with due diligence should have noticed the delay or the loss, and in no case later than six months after the expiration of the time limit applicable in the given case.
  • (d) Any national Office or intergovernmental organization which has notified the International Bureau that it will do so shall, where a delivery service other than the postal authorities is used to mail a document or letter, apply the provisions of paragraphs (a) to (c) as if the delivery service was a postal authority. In such a case, the last sentence of paragraph (a) shall not apply but evidence may be offered only if details of the mailing were recorded by the delivery service at the time of mailing. The notification may contain an indication that it applies only to mailings using specified delivery services or delivery services which satisfy specified criteria. The International Bureau shall publish the information so notified in the Gazette.
  • (e) Any national Office or intergovernmental organization may proceed under paragraph (d):
    • (i) even if, where applicable, the delivery service used was not one of those specified, or did not satisfy the criteria specified, in the relevant notification under paragraph (d), or
    • (ii) even if that Office or organization has not sent to the International Bureau a notification under paragraph (d).

82.2. Interruption in the Mail Service

  • (a) Any interested party may offer evidence that on any of the 10 days preceding the day of expiration of the time limit the postal service was interrupted on account of war, revolution, civil disorder, strike, natural calamity, or other like reason, in the locality where the interested party resides or has his place of business or is staying.
  • (b) If such circumstances are proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, provided that the interested party proves to the satisfaction of the said Office or organization that he effected the mailing within five days after the mail service was resumed. The provisions of Rule 82.1 (c) shall apply mutatis mutandis .

  DELAY OR LOSS IN MAIL

Delay or loss in the mail shall be excused when it is proven to the satisfaction of the receiving Office that the concerned letter or document was mailed at least five days before the expiration of the time limit. The mailing must have been by registered air mail or, where surface mail would normally arrive at the destination concerned within two days of mailing, by registered surface mail ( PCT Rule 82.1(a) to (c)). PCT Rule 82 contains detailed provisions governing the situation where a letter arrives late or gets lost due to irregularities in the mail service, for example, because the mail service was interrupted due to a strike. The provisions operate to excuse failure to meet a time limit for filing a document for up to six months after the expiration of the time limit concerned, provided that the document was mailed at least five days before the expiration of the time limit. In order to take advantage of these provisions, the mailing must have been by registered airmail or, where surface mail would normally arrive at the destination concerned within two days of mailing, by registered surface mail. Evidence is required to satisfy the Office, and a substitute document must be filed promptly—see PCT Rule 82.1(b) and ( c ) for details.

  INTERRUPTION IN MAIL SERVICE

The provisions of PCT Rule 82.1(c) apply mutatis mutandis for interruptions in the mail service caused by war, revolution, civil disorder, strike, natural calamity or other like reasons ( PCT Rule 82.2 ).

Special provisions also apply to mail interruptions caused by war, revolution, civil disorder, strike, natural calamity or other like reasons—see PCT Rule 82.2 for details.

See PCT Rule 80.5 for guidance on periods which expire on a non-working day.

1836    Rectification of Obvious Mistakes [R-08.2012]

PCT Rule 91

Rectification or Obvious Mistakes in the International Application and Other Documents

91.1 Rectification of Obvious Mistakes

  • (a) An obvious mistake in the international application or another document submitted by the applicant may be rectified in accordance with this Rule if the applicant so requests.
  • (b) The rectification of a mistake shall be subject to authorization by the “competent authority”, that is to say:
    • (i) in the case of a mistake in the request part of the international application or in a correction thereof—by the receiving Office;
    • (ii) in the case of a mistake in the description, claims or drawings or in a correction thereof, unless the International Preliminary Examining Authority is competent under item (iii)—by the International Searching Authority;
    • (iii) in the case of a mistake in the description, claims or drawings or in a correction thereof, or in an amendment under Article  19 or 34 , where a demand for international preliminary examination has been made and has not been withdrawn and the date on which international preliminary examination shall start in accordance with Rule  69.1 has passed—by the International Preliminary Examining Authority;
    • (iv) in the case of a mistake in a document not referred to in items (i) to (iii) submitted to the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau, other than a mistake in the abstract or in an amendment under Article  19 —by that Office, Authority or Bureau, as the case may be.
  • (c)  The competent authority shall authorize the rectification under this Rule of a mistake if, and only if, it is obvious to the competent authority that, as at the applicable date under paragraph (f), something else was intended than what appears in the document concerned and that nothing else could have been intended than the proposed rectification.
  • (d) In the case of a mistake in the description, claims or drawings or in a correction or amendment thereof, the competent authority shall, for the purposes of paragraph (c), only take into account the contents of the description, claims and drawings and, where applicable, the correction or amendment concerned.
  • (e) In the case of a mistake in the request part of the international application or a correction thereof, or in a document referred to in paragraph (b)(iv), the competent authority shall, for the purposes of paragraph (c), only take into account the contents of the international application itself and, where applicable, the correction concerned, or the document referred to in paragraph (b)(iv), together with any other document submitted with the request, correction or document, as the case may be, any priority document in respect of the international application that is available to the authority in accordance with the Administrative Instructions, and any other document contained in the authority’s international application file at the applicable date under paragraph (f).
  • (f) The applicable date for the purposes of paragraphs (c) and (e) shall be:
    • (i) in the case of a mistake in a part of the international application as filed—the international filing date;
    • (ii) in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application—the date on which the document was submitted.
  • (g)  A mistake shall not be rectifiable under this Rule if:
    • (i) the mistake lies in the omission of one or more entire elements of the international application referred to in Article 3 (2) or one or more entire sheets of the international application;
    • (ii) the mistake is in the abstract;
    • (iii) the mistake is in an amendment under Article 19, unless the International Preliminary Examining Authority is competent to authorize the rectification of such mistake under paragraph (b)(iii); or
    • (iv) the mistake is in a priority claim or in a notice correcting or adding a priority claim under Rule  26 bis. 1 (a), where the rectification of the mistake would cause a change in the priority date;

      provided that this paragraph shall not affect the operation of Rules  20.4 , 20.5 , 26 bis and 38.3 .

  • (h) Where the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau discovers what appears to be a rectifiable obvious mistake in the international application or another document, it may invite the applicant to request rectification under this Rule.

91.2 Requests for Rectification

A request for rectification under Rule  91.1 shall be submitted to the competent authority within 26 months from the priority date. It shall specify the mistake to be rectified and the proposed rectification, and may, at the option of the applicant, contain a brief explanation. Rule 26.4 shall apply mutatis mutandis as to the manner in which the proposed rectification shall be indicated.

91.3 Authorization and Effect of Rectifications

  • (a) The competent authority shall promptly decide whether to authorize or refuse to authorize a rectification under Rule  91.1 and shall promptly notify the applicant and the International Bureau of the authorization or refusal and, in the case of refusal, of the reasons therefor. The International Bureau shall proceed as provided for in the Administrative Instructions, including, as required, notifying the receiving Office, the International Searching Authority, the International Preliminary Examining Authority and the designated and elected Offices of the authorization or refusal.
  • (b) Where the rectification of an obvious mistake has been authorized under Rule  91.1 , the document concerned shall be rectified in accordance with the Administrative Instructions.
  • (c) Where the rectification of an obvious mistake has been authorized, it shall be effective:
    • (i) in the case of a mistake in the international application as filed, from the international filing date;
    • (ii) in the case of a mistake in a document other than the international application as filed, including a mistake in a correction or an amendment of the international application, from the date on which that document was submitted.
  • (d) Where the competent authority refuses to authorize a rectification under Rule  91.1 , the International Bureau shall, upon request submitted to it by the applicant within two months from the date of the refusal, and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish the request for rectification, the reasons for refusal by the authority and any further brief comments that may be submitted by the applicant, if possible together with the international application. A copy of the request, reasons and comments (if any) shall if possible be included in the communication under Article 20where the international application is not published by virtue of Article  64 (3).
  • (e) The rectification of an obvious mistake need not be taken into account by any designated Office in which the processing or examination of the international application has already started prior to the date on which that Office is notified under Rule  91.3 (a) of the authorization of the rectification by the competent authority.
  • (f) A designated Office may disregard a rectification that was authorized under Rule 91.1 only if it finds that it would not have authorized the rectification under Rule91.1 if it had been the competent authority, provided that no designated Office shall disregard any rectification that was authorized under Rule 91.1 without giving the applicant the opportunity to make observations, within a time limit which shall be reasonable under the circumstances, on the Office’s intention to disregard the rectification.

Obvious mistakes in the international application or other papers submitted by the applicant may generally be rectified under PCT Rule 91 , if the rectification is authorized, as required, within the applicable time limit. Any such rectification is free of charge. The omission of entire sheets of the international application cannot be rectified under PCT Rule 91 . Correction of such mistakes may only be made in accordance with PCT Rule 20.6 . Mistakes in the abstract, in amendments under PCT Article 19 (unless the International Preliminary Examining Authority is competent to authorize the rectification under PCT Rule 91.1 (b)(iii)), or in a priority claim or in a notice correcting or adding a priority claim where the rectification would cause a change in the priority, also cannot be rectified under PCT Rule 91 .

Applicants often attempt to rely upon the priority application to establish a basis for obvious mistake. The priority document (application) cannot be used to support obvious mistake corrections to the description, claims, or drawings or in a correction or amendment thereof. The rectification is obvious only in the sense that the competent authority (i.e., the receiving Office, the International Searching Authority, the International Preliminary Examining Authority, or the International Bureau), as appropriate, would immediately realize that something else was intended other than what appears in the document and that nothing else could have been intended than what is offered as rectification. Examples of obvious mistakes that are rectifiable include linguistic errors, spelling errors and grammatical errors so long as the meaning of the disclosure does not change upon entry of the rectification. Changes to chemical or mathematical formulas would not generally be rectifiable unless they would be common knowledge to anyone. A missing chemical formula or missing line of text would not be considered to be an obvious mistake subject to rectification.

Rectifications must be authorized:

  • (A) by the Receiving Office if the mistake is in the request;
  • (B) by the International Searching Authority if the mistake is in the description, claims, or drawings or in a correction thereof or in any paper submitted to that Authority, unless the International Preliminary Examining Authority is competent;
  • (C) by the International Preliminary Examining Authority if the mistake is in the description, claims, or drawings or in a correction thereof, or in an amendment under Article 19 or 34 , or in any paper submitted to that Authority, where a demand for Chapter II examination has been filed and has not been withdrawn and the date on which international preliminary examination shall start in accordance with PCT Rule 69.1 has passed;
  • (D) by the International Bureau if the mistake is in any paper submitted to it other than the international application or amendments or corrections to the application.

The request for rectification must be addressed to the authority competent to authorize the rectification. It must be filed within 26 months from the priority date.

The International Searching Authority informs the applicant of the decision by use of Form PCT/ISA/217, while the International Preliminary Examining Authority informs the applicant of the decision regarding the authorization or refusal to authorize the rectification of obvious mistakes by use of Form PCT/IPEA/412.

1840    The International Searching Authority [R-08.2012]

35 U.S.C. 362  International Searching Authority and International Preliminary Examining Authority.

  • (a) The Patent and Trademark Office may act as an International Searching Authority and International Preliminary Examining Authority with respect to international applications in accordance with the terms and conditions of an agreement which may be concluded with the International Bureau, and may discharge all duties required of such Authorities, including the collection of handling fees and their transmittal to the International Bureau.
  • (b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall be paid within such time as may be fixed by the Director.

37 C.F.R. 1.413  The United States International Searching Authority.

  • (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with the agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16 (3)(b)).
  • (b) The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title “United States International Searching Authority” or by the abbreviation “ISA/US.”
  • (c) The major functions of the International Searching Authority include:
    • (1) Approving or establishing the title and abstract;
    • (2) Considering the matter of unity of invention;
    • (3) Conducting international and international-type searches and preparing international and international-type search reports (PCT Art. 15 , 17 and 18 , and PCT Rules 25 , 33 to 45 and 47 ), and issuing declarations that no international search report will be established (PCT Article 17 (2)(a));
    • (4) Preparing written opinions of the International Searching Authority in accordance with PCT Rule 43 bis (when necessary); and
    • (5) Transmitting the international search report and the written opinion of the International Searching Authority to the applicant and the International Bureau.

The United States Patent and Trademark Office (USPTO) agreed to and was appointed by the PCT Assembly, to act as an International Searching Authority. As such an Authority, the primary functions are to establish (1) international search reports and (2) for international applications having an international filing date on or after January 1, 2004, written opinions. See PCT Article 16and PCT Rule 43 bis .

Pursuant to an agreement concluded with the International Bureau, the USPTO, as an International Searching Authority, agreed to conduct international searches and prepare international search reports and written opinions of the International Searching Authority, for, in addition to the United States of America, Barbados, Brazil, Egypt, India, Israel, Mexico, New Zealand, the Philippines, Saint Lucia, South Africa, and Trinidad and Tobago. The agreement stipulated the English language and specified that the subject matter to be searched is that which is searched or examined in United States national applications.

I.   TRANSMITTAL OF THE SEARCH COPY TO THE INTERNATIONAL SEARCHING AUTHORITY

The “search copy” is transmitted by the Receiving Office to the International Searching Authority ( PCT Article 12(1) ), the details of the transmittal are provided in PCT Rule 23 .

II.   THE MAIN PROCEDURAL STEPS IN THE INTERNATIONAL SEARCHING AUTHORITY

The main procedural steps that any international application goes through in the International Searching Authority are (1) the making of the international search ( PCT Article 15 ), (2) the preparing of the international search report ( PCT Article 18 and PCT Rule 43 ) and (3) for international applications having an international filing date on or after January 1, 2004, the preparing of a written opinion of the International Searching Authority (PCT Rule 43 bis ).

III.   COMPETENT INTERNATIONAL SEARCHING AUTHORITY

In respect of international applications filed with the U.S. Receiving Office, the United States International Searching Authority, which is the Examining Corps of the USPTO, is competent to carry out the international search ( PCT Article 16 , PCT Rules 35 and 36 , 35 U.S.C. 362 and 37 CFR 1.413 ).

The European Patent Office (EPO) or the Korean Intellectual Property Office (KIPO) may also be competent to carry out the international search (PCT Article 16 , PCT Rules 35 and 36 ) for international applications filed with the U.S. Receiving Office. See MPEP §§ 1840.01 - 1840.02 for further information regarding the competency of the EPO and the KIPO as an International Searching Authority for applications filed by U.S. nationals or residents in the USPTO or in the International Bureau (IB) as receiving Office.

1840.01   The European Patent Office as an International Searching Authority [R-08.2012]

Since October 1, 1982, the European Patent Office (EPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. The choice of International Searching Authority, either the EPO ,the Korean Intellectual Property Office (KIPO) or the USPTO, must be made by the applicant on filing the international application. The EPO has expressed the following limitations concerning its competency to act as an International Searching Authority. For updates or possible changes to these limitations, applicants should consult the PCT Newsletter which is available in electronic form from the web site of the World Intellectual Property Organization (www.wipo.int/pct/en/newslett/) .

I.   SUBJECT MATTER THAT WILL NOT BE SEARCHED BY THE EPO

A.   Field of Biotechnology

The EPO is not a competent authority within the meaning of PCT Article 16 (3)(b), and will not carry out an international search in respect of any international application filed on or after March 1, 2002 and before January 1, 2004 if the application: (A) was filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) was filed with the IB as receiving Office by a national or resident of the U.S. (provided the application did not also identify as an applicant at its time of filing a national or resident of a European Patent Convention (EPC) Contracting State),where such application contains one or more claims relating to the field of biotechnology as defined by the following units of the International Patent Classification:

 
C12M Apparatus for enzymology or microbiology
C12N Micro-organisms or enzymes; compositions thereof
C12P Fermentation or enzyme-using processes to synthesise a desired chemical compound or composition or to separate optical isomers from a racemic mixture
C12Q Measuring or testing processes involving enzymes or micro-organisms; compositions or test papers therefor; processes of preparing such compositions; condition-responsive control in microbiological or enzymological processes
C07K Peptides
G01N 33/50 (including subdivisions) Chemical analysis of biological material, e.g. blood, urine; testing involving biospecific ligand binding methods; immunological testing
A61K 39 Medicinal preparations containing antigens or antibodies
A61K 48 Medicinal preparations containing genetic material which is inserted into cells of the living body to treat genetic diseases; Gene therapy
A01H New plants or processes for obtaining them; plant reproduction by tissue culture techniques

For information, U.S. classes covering the corresponding subject matter are listed below:

 
  424 Drug, bio-affecting and body treating compositions
  435 Chemistry: molecular biology and microbiology
  436 Chemistry: analytical and immunological testing
  514 Drug, bio-affecting and body treating compositions
  530 Chemistry: natural resins or derivatives; peptides or proteins; lignins or reaction products thereof
  536 Organic compounds–part of the class 532-570 series
  800 Multicellular living organisms and unmodified parts thereof
  930 Peptide or protein sequence

B.   Field of Business Methods

The EPO is not a competent authority within the meaning of PCT Article 16 (3)(b) and will not carry out an international search in respect of any international application filed on or after March 1, 2002 if the application: (A) is filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) is filed with the IB as receiving Office by a national or resident of the U.S. (provided the application does not also identify as an applicant at its time of filing a national or resident of an EPC Contracting State), where such application contains one or more claims relating to the field of business methods as defined by the following units of the International Patent Classification:

 
G06Q Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes; systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not otherwise provided for
G06Q 10/00 Administration, e.g., office automation or reservations; Management, e.g., resource or project management
G06Q 30/00 Commerce, e.g., marketing, shopping, billing, auctions or e-commerce
G06Q 40/00 Finance, e.g., banking, investment or tax processing; Insurance, e.g., risk analysis or pensions
G06Q 50/00 Systems or methods specially adapted for a specific business sector, e.g., health care, utilities, tourism or legal services
G06Q 90/00 Systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not involving significant data processing
G06Q 99/00 Subject matter not provided for in other groups of this subclass

For information, the U.S. class covering the corresponding subject matter is listed below:

 
705 Data processing: financial, business practice, management, or cost/price determination

The U.S. Receiving Office will forward all international applications to the EPO as ISA if so indicated by the applicant and the EPO will perform a competence check on the search copy. Where the EPO finds that it was indicated as the ISA but the application falls under the limitations indicated above, the EPO will ex officio change the ISA from EPO to the USPTO and will inform the applicant, the International Bureau and the USPTO accordingly. The EPO will transfer moneys received as the search fee as well as the search copy to the USPTO.

C.    Declaration Under PCT Article 17(2)(a)(i)

It should be noted that even when the European Patent Office is a competent International Searching Authority (for example, if one or more applicants is a resident or national of an EPC contracting state and the application was filed with the International Bureau as receiving Office), the EPO nonetheless will not search, by virtue of PCT Article 17(2)(a)(i) , any international application to the extent that it considers that the international application relates to subject matter set forth in PCT Rule 39.1 .

II.   FEES FOR SERVICES OF THE ISA/EP

The international search fee for the European Patent Office must be paid to the USPTO as a Receiving Office within one month from the time of filing the international application. The search fee for the European Patent Office is announced weekly in the Official Gazette in United States dollars. The search fee will change as costs and exchange rates require. If exchange rates fluctuate significantly, the fee may change frequently. Notice of changes will be published in the Official Gazette shortly before the effective date of any change.

If the European Patent Office as the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13 , the European Patent Office will invite applicants to timely pay directly to it an additional search fee in Euros for each additional invention.

1840.02   The Korean Intellectual Property Office as an International Searching Authority [R-08.2012]

Since January 1, 2006, the Korean Intellectual Property Office (KIPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. The choice of International Searching Authority, either the KIPO, the European Patent Office (EPO) or the USPTO, must be made by the applicant on filing the international application.

The international search fee for the KIPO must be paid to the USPTO as a receiving Office within one month from the time of filing the international application. The search fee for the KIPO is announced weekly in the Official Gazette in United States dollars. The search fee will change as costs and exchange rates require. If exchange rates fluctuate significantly, the fee may change frequently. Notice of changes will be published in the Official Gazette shortly before the effective date of any change.

If the KIPO as the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13 , the KIPO may invite applicants to timely pay directly to it an additional search fee in Korean won for each additional invention.

1842    Basic Flow Under the PCT [R-08.2012]

Figure 1842_1.Reformed PCT System 
Reformed PCT System

I.   MEASURING TIME LIMITS UNDER THE PCT

Time limits under the PCT are measured from the “priority date” of the application. The priority date for the purposes of computing time limits is defined in PCT Article 2 (xi). Where an international application does not contain any priority claim under PCT Article 8 , the international filing date is considered to be the priority date.

II.   INTERNATIONAL FILING DATE

An international application under the Patent Cooperation Treaty is generally filed within 12 months after the filing of the first application directed to the same subject matter, so that priority may be claimed under PCT Article 8 and Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property. PCT Article 11 specifies the elements required for an international application to be accorded an international filing date.

III.    ESTABLISHMENT OF THE INTERNATIONAL SEARCH REPORT AND WRITTEN OPINION OF THE INTERNATIONAL SEARCHING AUTHORITY

As provided in PCT Rule 42 and PCT Rule 43 bis , the time limit for establishing the international search report (or a declaration that no international search report will be established) and, for international applications having an international filing date on or after January 1, 2004, the written opinion, is three months from the receipt of the search copy by the International Searching Authority, or nine months from the priority date, whichever time limit expires later.

IV.   INTERNATIONAL PUBLICATION

Under PCT Article 21 , the international publication of the international application by the International Bureau shall be effected promptly after the expiration of 18 months from the priority date of that application.

V.   DEADLINE FOR FILING THE DEMAND

A.   International Applications Having a Filing Date On or After January 1, 2004

International preliminary examination is optional, but if a demand for international preliminary examination is filed in an international application having an international filing date on or after January 1, 2004, it must be filed prior to the expiration of whichever of the following periods expires later: (A) three months from the date of transmittal to the applicant of the international search report and the written opinion; or (B) 22 months from the priority date. Otherwise the demand shall be considered as if it had not been submitted and the International Preliminary Examining Authority shall so declare. See PCT Rule 54 . In order to take advantage of a national phase entry time limit of at least 30 months from the priority date in relation to all States designated in the international application, it may be necessary to file a demand before the expiration of 19 months from the priority date. See subsection VI.A., below.

B.    International Applications Having a Filing Date Before January 1, 2004

International Preliminary Examination is optional, and a Demand for International Preliminary Examination may be filed at any time. However, in order to take advantage of a national phase entry time limit of at least 30 months from the priority date in relation to all States designated in the international application, it may be necessary to file a demand before the expiration of 19 months from the priority date. See subsection VI.A., below.

VI.   DEADLINE FOR FILING COPY, TRANSLATION, AND FEE IN NATIONAL STAGE OFFICES

A listing of all national and regional offices, and the corresponding time limits for entering the national stage following PCT Chapter I and PCT Chapter II, may be found on WIPO’s web site at: http://www.wipo.int/pct/en/index.html.

A.   National Stage Entry Following PCT Chapter I

PCT Article 22 (1) was amended, effective April 1, 2002, to specify that the national stage requirements are due not later than at the expiration of 30 months from the priority date if no demand has been filed. Prior to April 1, 2002, PCT Article 22 (1) specified that these requirements were due not later than at the expiration of 20 months from the priority date. See http://www.wipo.int/pct/en/index.html for a list of the Contracting States that have not yet changed their national laws to adopt the 30 month period now set forth in PCT Article 22 (1).

B.   National Stage Entry Following PCT Chapter II

If the election of a Contracting State has been effected by filing a demand prior to the expiration of the 19th month from the priority date, the provisions of Article 39 apply rather than the provisions of Article 22 . The deadline for filing the national stage requirements under PCT Article 39 (a) is 30 months from the priority date, but any national law may fix time limits which expire later than the time limit provided in PCT Article 39 (a). See PCT Article 39 (b) and the list of time limits found on WIPO’s web site at http://www.wipo.int/pct/en/index.html.

1843    The International Search [R-08.2012]

PCT Article 17

Procedure Before the International Searching Authority

  • (1) Procedure before the International Searching Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority.
  • (2)
    • (a) If the International Searching Authority considers:
      • (i) that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or
      • (ii) that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out, the said Authority shall so declare and shall notify the applicant and the International Bureau that no international search report will be established.
    • (b) If any of the situations referred to in subparagraph (a) is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established as provided in Article 18.
  • (3)
    • (a) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International Searching Authority shall establish the international search report on those parts of the international application which relate to the invention first mentioned in the claims ( "main invention" ) and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to inventions in respect of which the said fees were paid.
    • (b) The national law of any designated State may provide that, where the national Office of the State finds the invitation, referred to in subparagraph (a), of the International Searching Authority justified and where the applicant has not paid all additional fees, those parts of the international application which consequently have not been searched shall, as far as effects in the State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.

PCT Rule  43 bis

Written Opinion of the International Searching Authority

43 bis .1.  Written Opinion

  • (a) Subject to Rule 69.1(b- bis ) , the International Searching Authority shall, at the same time as it establishes the international search report or the declaration referred to in Article 17 (2)(a), establish a written opinion as to:
    • (i) whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable;
    • (ii) whether the international application complies with the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority.

      The written opinion shall also be accompanied by such other observations as these Regulations provide for.

  • (b) For the purposes of establishing the written opinion, Articles  33 (2) to (6) and 35 (2) and (3) and Rules 43.4 , 43.6 bis 64 , 65 , 66.1 (e), 66.7 , 67 , 70.2(b) and (d), 70.3 , 70.4 (ii), 70.5 (a), 70.6 to 70.10 , 70.12 , 70.14 and 70.15 (a) shall apply mutatis mutandis .
  • (c) The written opinion shall contain a notification informing the applicant that, if a demand for international preliminary examination is made, the written opinion shall, under Rule 66.1 bis (a) but subject to Rule 66.1 bis (b) , be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a) , in which case the applicant is invited to submit to that Authority, before the expiration of the time limit under Rule 54 bis .1(a) , a written reply together, where appropriate, with amendments.

The international search is a thorough, high quality search of the most relevant resources. Upon completion of the international search an international search report is established. The report provides information on the relevant prior art to the applicant, the public, the designated Offices, and the International Preliminary Examining Authority.

PCT Article 15 describes the objective of the international search, i.e., to uncover relevant prior art, and also describes the international-type search. It should be noted generally that an international-type search is performed on all U.S. national applications filed after June 1, 1978.

Some major amendments to the PCT Rules became effective January 1, 2004. One of the consequences of these amendments is that for all international applications having an international filing date on or after January 1, 2004, and subject to PCT Rule 69.1 (b- bis ), the International Searching Authority establishes a written opinion of the International Searching Authority at the same time it establishes either the international search report or the declaration of non-establishment of the international search report under PCT Article 17 (2)(a). (For applications having an international filing date prior to January 1, 2004, the International Searching Authority establishes an international search report but does not establish a written opinion.) The written opinion indicates whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. The written opinion also indicates any defects in the form or content of the international application under the PCT Articles or Regulations. In addition, the written opinion includes any observations that the International Searching Authority wishes to make on the clarity of the claims, the description, and the drawings, or on the question of whether the claims are fully supported by the description.

1843.01   Prior Art for Chapter I Processing [R-08.2012]

PCT Rule 33

Relevant Prior Art for the International Search

33.1. Relevant Prior Art for the International Search

  • (a) For the purposes of Article 15 (2), relevant prior art shall consist of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date.
  • (b) When any written disclosure refers to an oral disclosure, use, exhibition, or other means whereby the contents of the written disclosure were made available to the public, and such making available to the public occurred on a date prior to the international filing date, the international search report shall separately mention that fact and the date on which it occurred if the making available to the public of the written disclosure occurred on a date which is the same as, or later than, the international filing date.
  • (c) Any published application or any patent whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application searched, and which would constitute relevant prior art for the purposes of Article 15 (2) had it been published prior to the international filing date, shall be specially mentioned in the international search report.

33.2. Fields to Be Covered by the International Search

  • (a) The international search shall cover all those technical fields, and shall be carried out on the basis of all those search files, which may contain material pertinent to the invention.
  • (b) Consequently, not only shall the art in which the invention is classifiable be searched but also analogous arts regardless of where classified.
  • (c) The question what arts are, in any given case, to be regarded as analogous shall be considered in the light of what appears to be the necessary essential function or use of the invention and not only the specific functions expressly indicated in the international application.
  • (d) The international search shall embrace all subject matter that is generally recognized as equivalent to the subject matter of the claimed invention for all or certain of its features, even though, in its specifics, the invention as described in the international application is different.

33.3. Orientation of the International Search

  • (a) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed.
  • (b) In so far as possible and reasonable, the international search shall cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.

PCT Rule 64

Prior Art for International Preliminary Examination

64.1. Prior Art

  • (a) For the purposes of Article 33 (2) and (3), everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) shall be considered prior art provided that such making available occurred prior to the relevant date.
  • (b) For the purposes of paragraph (a), the relevant date shall be:
    • (i) subject to items (ii) and (iii), the international filing date of the international application under international preliminary examination;
    • (ii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is within the priority period, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid;
    • (iii) where the international application under international preliminary examination claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the filing date of such earlier application, unless the International Preliminary Examining Authority considers that the priority claim is not valid for reasons other than the fact that the international application has an international filing date which is later than the date on which the priority period expired.

64.2. Non-Written Disclosures

In cases where the making available to the public occurred by means of an oral disclosure, use, exhibition or other non-written means (“non-written disclosure”) before the relevant date as defined in Rule 64.1 (b) and the date of such non-written disclosure is indicated in a written disclosure which has been made available to the public on a date which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered part of the prior art for the purposes ofArticle 33 (2) and (3). Nevertheless, the international preliminary examination report shall call attention to such non-written disclosure in the manner provided for inRule 70.9 .

64.3. Certain Published Documents

In cases where any application or any patent which would constitute prior art for the purposes of Article 33 (2) and (3) had it been published prior to the relevant date referred to in Rule 64.1 was published on a date which is the same as, or later than, the relevant date but was filed earlier than the relevant date or claimed the priority of an earlier application which had been filed prior to the relevant date, such published application or patent shall not be considered part of the prior art for the purposes of Article 33 (2) and (3). Nevertheless, the international preliminary examination report shall call attention to such application or patent in the manner provided for in Rule 70.10 .

The objective of the international search is to discover relevant prior art ( PCT Article 15(2) ). “Prior art” consists of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations); it is relevant in respect of the international application if it is capable of being of assistance in determining that the claimed invention is or is not new and that the claimed invention does or does not involve an inventive step (i.e., that it is or is not obvious), and if the making available to the public occurred prior to the international filing date for the purposes of the international search report and prior to the earliest validly claimed priority date for the purposes of the written opinion of the International Searching Authority. For further details, see PCT Rules 33 , 43 bis .1 (b) and 64 .

A written disclosure, that is, a document, is regarded as made available to the public if, at the relevant date, it was possible for members of the public to gain access to the content of the document and to acquire possession of the content of the document, and there was no bar of confidentiality restricting the use or dissemination of knowledge gained thereby. Where the document only provides the month or the year, but not the specific date, which the document was made available to the public, the content of the document is presumed to have been made available to the public on the last day of that month or that year, respectively, unless evidence is provided to prove otherwise.

Prior art disclosure on the Internet or on an on-line database is considered in the same manner as other forms of written disclosure. Information disclosed on the Internet or an on-line database is considered to be publicly available as of the date the disclosure was publicly posted. Where the examiner obtains an electronic document that establishes the publication date for the Internet disclosure, he/she should make a printout of this document, which must mention both the URL of the relevant Internet disclosure and the date of publication of that relevant Internet disclosure. The examiner must then cite this printout in the international search report as an “L” document and cite the relevant Internet disclosure according to the relevance of its content (“X”, “Y”, “A”) and according to the date as established (“X”, “Y”, “A”, “P,X”, “P,Y”, “P,A”, “E”, etc.). See MPEP § 1844.01 , subsection VII. Where the examiner is unable to establish the publication date of the relevant Internet disclosure and it is relevant to the inventive step and/or novelty of the claimed invention, he/she should cite it in the international search report as a category “L” document for those claims which it would have affected if it were published in time, giving the date the document was printed out as its publication date.

Examiners are also encouraged to cite prior art that might be of assistance in determining whether other requirements are fulfilled, such as sufficient support of the claims by the description and industrial applicability. The examiner should also note any documents that may be of importance for other reasons, such as documents putting doubt upon the validity of any priority claimed, documents contributing to a better or more correct understanding of the claimed invention, and documents illustrating the technological background, but the examiner should not spend time in searching for these documents, nor the consideration of such matters unless there is a special reason for doing so in a particular case. Documents which do not qualify as prior art because they post-date the claimed invention may nevertheless be cited to show a universal fact, such as characteristics or properties of a material, or a specific scientific fact, or to show the level of ordinary skill in the art. Furthermore, examiners must recognize that different designated Offices may have different definitions of what is the effective date of prior art. Accordingly, when performing the search, examiners should be mindful to pick out and select for citation, where appropriate, prior art which may be relevant in offices other than the one in which they are situated. However, the examiner need not expand the search beyond the standard search parameters to discover such art. Where the search has been performed and such potentially relevant prior art has been identified, examiners are encouraged to, for example, cite all relevant art published prior to the international filing date even if that art and the international application under consideration have common applicants and/or inventors. As such, if the examiner is basing the international search on a prior search performed in a prior related U.S. national application, it may be necessary for the examiner to review the prior art published within the time period of the one year preceding the filing date of the prior U.S. application for any written disclosures based on the applicant’s own work that may have been published within that time period. Any such documents are considered prior art in an international application and are cited on the international search report even though they do not meet the definition of prior art in the prior U.S. national application. A further objective of the international search is to avoid, or at least minimize, additional searching at the national stage.

The international search is made on the basis of the claims, with due regard to the description and the drawings (if any) contained in the international application (PCT Article 15(3) ) and should cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended (PCT Rule 33.3 (b)).

The relevant date for the purpose of considering prior art for the purposes of establishment of the written opinion of the International Searching Authority is defined in PCT Rule 64.1 (b) as the international filing date or, where the international application contains a * claim for priority, the date provided in PCT Rule 64.1 (b)(ii)-(iii). See MPEP § 1878.01(a) .

In establishment of the written opinion, when determining whether there is inventive step, account should be taken of what the applicant acknowledges in his/her description as known. Such admissions should be regarded as correct and used when considering whether the claimed invention lacks novelty and/or inventive step where appropriate.

A nonwritten disclosure such as an oral disclosure, use, exhibition or other means of disclosure is not relevant prior art for the purposes of the international search unless it is substantiated by a written disclosure made available to the public prior to the international filing date and it is the written disclosure which constitutes the prior art. However, if the date on which the written disclosure was made available to the public was on or after the filing date of the international application under consideration, the search report should separately mention that fact and the date on which the written disclosure was available, even though such a written disclosure does not meet the definition of relevant prior art in the international phase, so long as the non-written disclosure was made available to the public on a date prior to the international filing date since such a non-written disclosure may be considered to be prior art under national law in the national phase. See PCT Rules 33.1 (b), 64.2 and 70.9 .

  DOCUMENTS AND DATABASES SEARCHED BY THE INTERNATIONAL SEARCHING AUTHORITY

The International Searching Authority must endeavor to discover as much of the relevant prior art as its facilities permit ( PCT Article 15(4) ), and, in any case, must consult the so-called “minimum documentation” ( PCT Rule 34 ).

Even though completeness should be the ultimate goal of the international search, this goal may at times be difficult to obtain, because of such factors as text search limitations and the inevitable imperfections of any classification system and its implementation. The examiner therefore consults the appropriate minimum documentation and the most relevant search resources for the technology, including databases listed in the U.S. Search Guidance index (available through the USPTO Intranet web site), and organizes the search effort and utilizes the search time in such a manner as to reduce to a minimum the possibility of failing to discover existing highly relevant prior art, such as art that fully anticipates any claims.

When conducting the search, it may be necessary to make use of the Internet as a search tool. Where the international application has not yet been published at the time of the search, there exists the danger that search terms used in the search on non-secure Internet search engines or in databases available on the Internet may be observed by third parties. Accordingly, all web sites must be treated as non-secure unless the Office has a commercial arrangement with a service provider in order to maintain confidentiality and a secure connection to that web site. Consequently, extreme caution must be exercised when using the Internet as a search tool where (as in most cases) the international application has not yet been published. Where a relevant database is accessible via the Internet, but an alternative secure connection to the same database is accessible, the secure connection must be used. Where no secure connection to a database on the Internet is available, the search may be conducted on the Internet using generalized search terms representing combinations of features that relate to the claimed invention, which have already been shown to exist in the state of the art.

1843.02    Certain Subject Matter Need Not Be Searched [R-08.2012]

PCT Rule 39

Subject Matter under Article 17(2)(a)(i)

39.1. Definition

No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following:

  • (i) scientific and mathematical theories,
  • (ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
  • (iii) schemes, rules or methods of doing business, performing purely mental acts or playing games,
  • (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
  • (v) mere presentations of information,
  • (vi) computer programs to the extent that the International Searching Authority is not equipped to search prior art concerning such programs.

PCT Rule 66

Procedure Before the International Preliminary Examining Authority

66.1. Basis of the International Preliminary Examination

*****

  • (e) Claims relating to inventions in respect of which no international search report has been established need not be the subject of international preliminary examination.

PCT Rule 67

Subject Matter Under Article 34 (4)(a)(i)

67.1. Definition

No International Preliminary Examining Authority shall be required to carry out an international preliminary examination on an international application if, and to the extent to which, its subject matter is any of the following:

  • (i) scientific and mathematical theories,
  • (ii) plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes,
  • (iii) schemes, rules, or methods of doing business, performing purely mental acts, or playing games,
  • (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods,
  • (v) mere presentations of information,
  • (vi) computer programs to the extent that the International Preliminary Examining Authority is not equipped to carry out an international preliminary examination concerning such programs.

The USPTO has declared that it will search and examine, in international applications, all subject matter searched and examined in U.S. national applications. However under PCT Rules 39 ,43 bis .1 (b), 66.1 (e) and 67.1 , no International Searching Authority is required to perform an international search or to establish a written opinion concerning novelty, inventive step and industrial applicability where the international application relates to any of the following subject matters:

  • (A) Scientific and mathematical theories;
  • (B) Plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbiological processes and the products of such processes;
  • (C) Schemes, rules or methods of doing business, performing purely mental acts or playing games;
  • (D) Methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods;
  • (E) Mere presentation of information; and
  • (F) Computer programs to the extent the said Authority is not equipped to search prior art concerning such programs .

    See PCT Rule 39 . In addition, the examiner is not required to search the international application, to the extent that a meaningful search cannot be carried out, in certain cases where a nucleotide and/or amino acid sequence listing is not furnished in accordance with the prescribed standard or in a computer readable form. See Administrative Instructions Section 513 (c). However, the U.S. Patent and Trademark Office has declared that it will search and examine all subject matter searched and examined in U.S. national applications.

    The applicant considering the filing of an international application may be well advised not to file one if the subject matter of the application falls into one of the above mentioned areas. If he or she still does file, the International Searching Authority may declare that it will not establish an international search report. Accordingly, applicant should take into consideration which International Searching Authority (e.g., European Patent Office) he or she selects to conduct the international search. It is to be noted, nevertheless, that the lack of the international search report in such case will not have, in itself, any influence on the validity of the international application and the latter’s processing will continue, including its communication to the designated Offices.

1843.03   No Search Required if Claims Are Unclear [R-08.2012]

If the International Searching Authority considers that the description, the claims, or the drawings fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out, it may declare that it will not establish a search report ( PCT Article 17(2)(a)(ii) ). Further, for applications having an international filing date on or after January 1, 2004, if the International Searching Authority considers that the description, claims, or drawings are so unclear, or the claims are so inadequately supported by the description that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability of the claimed invention, the Authority shall not go into these issues in its written opinion with regard to the claims so affected (PCT Rules 43 bis .1 (b) and 66.1 (e) ). For example, the examiner may determine that a meaningful search cannot be carried out or that no meaningful opinion can be formed in certain cases where a nucleotide and/or amino acid sequence listing is not furnished in accordance with the prescribed standard or in a computer readable form. See Administrative Instructions Section 513 (c) and MPEP § 1848 . Further, the examiner may determine that a meaningful search cannot be carried out or that no meaningful opinion can be formed for improper multiple dependent claims (see PCT Rule 6.4 (a)).

1843.04   Procedure for Claims Not Required To Be Searched and for Claims That Are Unclear [R-08.2012]

The International Searching Authority (ISA) may declare that a meaningful search cannot be carried out with respect to some of the claims only and/or that only certain claims relate to subject matter which the ISA is not required to and has decided not to search. Where only some of the claims will not be searched, the ISA searches the remaining claims of the international application. Any unsearched claims and the reasons why those claims have not been searched are indicated in Box No. II of the international search report (Form PCT/ISA/210).

If the examiner determines that none of the claims will be searched, the examiner declares that no search report will be established using Form PCT/ISA/203. The lack of the international search report will not, in itself, have any influence on the validity of the international application and the latter’s processing will continue, including its communication to the designated Offices.

If the international application cites a document that is not published or otherwise not accessible to the ISA and the document appears essential to a correct understanding of the invention to the extent that a meaningful international search would not be possible without knowledge of the content of that document, the ISA may postpone the search and request that the applicant first provide first a copy of the document, if possible to do so within the time limits for the preparation of the international search report of the ISA under the PCT. If no copy of the document is received, the ISA should first attempt to carry out the international search and then, if necessary, indicate that no meaningful search could be carried out in total or that the search needed to be restricted.

For international applications having an international filing date on or after January 1, 2004, and subject to PCT Rule 69.1 (b- bis ), the ISA establishes the written opinion of the International Searching Authority (Form PCT/ISA/237) at the same time it establishes either the international search report (Form PCT/ISA/210) or the declaration of non-establishment of the international search report (Form PCT/ISA/203). However, if the ISA determines that for any or all claims (A) the international application relates to subject matter for which it is not required to establish a written opinion concerning novelty, inventive step and industrial applicability, (B) the description, claims, or drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step, or industrial applicability, of the claimed invention, or (C) the subject matter of the claims relates to inventions for which no international search report will be established, the ISA indicates, in Box No. III of the written opinion of the International Searching Authority (Form PCT/ISA/237), that no opinion with regard to novelty, inventive step or industrial applicability will be established with regard to those claims. In most instances it will be sufficient for the examiner to (A) indicate that no international search report has been established for the relevant claims as the reason for not establishing an opinion on novelty, inventive step, and industrial applicability and (B) refer to the international search report or declaration of non-establishment of the international search report for further details.

1843.05   Time Limit for Establishing the International Search Report and the Written Opinion of the International Searching Authority [R-08.2012]

Publication of the international application occurs at 18 months from the earliest priority date or, where there is no priority date, 18 months from the international filing date. The international search report is subject to international publication. The written opinion is not published but is made available to the public after the expiration of 30 months from the priority date. See PCT Rule44 ter . The Office goal is to have the search report and, if the application has an international filing date on or after January 1, 2004, the written opinion, mailed in sufficient time to reach the International Bureau by the end of 16 months from the priority date or 9 months from the filing date if no priority claim is made. This is necessary since the technical preparations for publication are completed by 17.5 months from the earliest priority date. In view of the treaty mandated publication and the time needed for technical preparation, the Office sets time periods for completion of the search report and the written opinion which will ensure sufficient time to complete internal processing and review and achieve receipt of the search report and the written opinion at the International Bureau by the 16th month from the priority date. See PCT Rule 42.1 and 43 bis .1 (a).

Thus, as a matter of practice, each Technology Center tends to set its internal time period for completion of the search report and the written opinion to meet the time limits set by the International Application Processing Division. The International Application Processing Division sets its time for completion to ensure adequate time for review, corrections (where necessary) and mailing.

The Patent Cooperation Treaty is extremely date sensitive and for that reason, examiners are encouraged to complete the international search and prepare the search report, and in applications having an international filing date filed on or after January 1, 2004, the written opinion, promptly after receipt. Monitoring and tracking procedures have been devised to minimize the risk of late search reports and written opinions and/or date of transmission thereof.

1844    The International Search Report [R-08.2012]

PCT Article 18

The International Search Report

  • (1) The international search report shall be established within the prescribed time limit and in the prescribed form.
  • (2) The international search report shall, as soon as it has been established, be transmitted by the International Searching Authority to the applicant and the International Bureau.
  • (3) The international search report or the declaration referred to in Article 17 (2)(a) shall be translated as provided in the Regulations. The translations shall be prepared by or under the responsibility of the International Bureau.

The results of the international search are recorded in the international search report (Form PCT/ISA/210), which, together with the written opinion of the International Searching Authority (Form PCT/ISA/237) for applications having an international filing date on or after January 1, 2004, is transmitted with Form PCT/ISA/220. The search report will be published by the International Bureau and, together with the written opinion of the International Searching Authority, will serve as a basis for examination of the international application by the designated Offices and the International Preliminary Examining Authority.

The search report is only for the purpose of identifying prior art and should not contain any expressions of opinion, reasoning, argument or explanation as to any cited prior art. However, in applications having an international filing date on or after January 1, 2004, such comments should be included in the written opinion of the International Searching Authority.

The printed international search report form (Form PCT/ISA/210) to be transmitted to the applicant and to the International Bureau contains two main sheets (“first sheet” and “second sheet”) to be used for all searches. These two main sheets are intended for recording the important features of the search such as the fields searched and for citing documents revealed by the search. The printed international search report form also contains five optional continuation sheets for use where necessary. They are the: “continuation of first sheet (1),” “continuation of first sheet (2),” “continuation of first sheet (3),” “continuation of second sheet” and “patent family annex,” respectively. The patent family annex sheet is not currently used by the United States International Searching Authority since patent family information is not readily available to the examiner. The “continuation of first sheet (1)” is to be used only when the international application includes a nucleotide and/or amino acid sequence and indicates the basis on which the international search was carried out, since the relevant listings or related tables may be filed or furnished at different times and in different forms. The “continuation of first sheet (2)” is used where an indication is made on the first sheet that claims were found unsearchable (item 2) and/or unity of invention is lacking (item 3). The relevant indications must then be made on that continuation sheet. The “continuation of first sheet (3)” is to contain the text of the abstract where an abstract or an amended abstract has been established by the International Searching Authority (item 5) and an indication to that effect is made on the first sheet. The “continuation of second sheet” is to be used where the space on the second sheet is insufficient for the citation of documents. The form also includes an “extra sheet” which may be used whenever additional space is required to complete information from the other sheets.

It is to be noted that only the “second sheet”, the “continuation of second sheet” (if any), the “continuation of first sheet (2)” (if any), and the “extra sheet” (if any), as well as any separate sheet with information on members of patent families, will be the subject of international publication, as the “first sheet,” “continuation of first sheet (1)” (if any), and the “continuation of first sheet (3)” (if any) contain only information which will already appear on the front page of the publication of the international application (PCT Rule 48.2 (b) ).

  CONTENTS OF THE INTERNATIONAL SEARCH REPORT

The international search report ( PCT Rule 43 ) contains, among other things, the citations of the documents considered to be relevant ( PCT Rule 43.5 and Administrative Instructions Section 503 ), the classification of the subject matter of the invention ( PCT Rule 43.3 and Administrative Instructions Section 504 ) and an indication of the fields searched ( PCT Rule 43.6). Citations of particular relevance must be specially indicated ( Administrative Instructions Section 505 ); citations of certain special categories of documents are also indicated (Administrative Instructions Section 507 ); citations which are not relevant to all the claims must be cited in relation to the claim or claims to which they are relevant ( Administrative Instructions Section 508 ); if only certain passages of the cited document are particularly relevant, they must be identified, for example, by indicating the page, the column or the lines, where the passage appears (PCT Rule 43.5 (e) .

1844.01   Preparing the International Search Report (Form PCT/ISA/210) [R-08.2012]

The first sheet of the international search report indicates the total number of sheets in the report. The correct number is entered, not including sheets that have not been filled-in (blank sheets). The number of sheets only includes the number of sheets from Form PCT/ISA/210.

I.   BASIS OF THE REPORT

A.   Box 1a – Language

In most circumstances, the first box under box 1a is checked indicating that the search is carried out on the basis of the international application in the language in which it was filed. Alternatively, the second box under box 1a is checked and an indication of English made when the search is on the basis of a translation of the international application into English.

B.   Box 1b – Rectification of an Obvious Mistake

Where the application includes the rectification of an obvious mistake authorized by or notified to the International Searching Authority under PCT Rule 91 , box 1b of the first sheet is checked. The authorization or notification will generally be indicated on a Notification of Decision Concerning Request for Rectification (Form PCT/RO/109 or PCT/ISA/217) (see MPEP § 1836 ).

C.   Box 1c And Box No. I – Nucleotide and/or Amino Acid Sequence Listings and Related Tables

Where the application discloses any nucleotide and/or amino acid sequence, box 1c of the first sheet is checked and Box No. I (appearing on “continuation of first sheet (1)”) indicates the format (that is, whether in paper copy or electronic form) and status (that is whether filed with the international application or later, for purposes of search) of the sequence listing, and any related tables.

II.    BOX 2 AND BOX NO. II – LIMITATION OF THE SUBJECT OF THE INTERNATIONAL SEARCH

The report indicates whether any claims are unsearchable for any of the reasons indicated below. If any such limitations of the subject of the search are applied, the claims in respect of which a search has not been carried out are identified and the reasons for this are indicated. The three categories where such limitations may arise are:

  • (A) claims drawn to subject matter not required to be searched by the International Searching Authority (see MPEP § 1843.02 );
  • (B) claims in respect of which a meaningful search cannot be carried out (see MPEP § 1843.03 ); and
  • (C) multiple dependent claims which do not comply with PCT Rule 6.4 (a) (see MPEP § 1843.03 ) .

Where claims are not searched for any of the reasons identified in (A)-(C) above, box 2 of the first sheet of the international search report is checked. In addition, Box No. II of the international search report (on “continuation of first sheet (2)”) is completed, giving the details.

III.   BOX 3 AND BOX NO. III – LACK OF UNITY OF THE CLAIMED INVENTION

The report indicates whether the search is limited due to a lack of unity of invention. If unity is lacking, the claims in respect of which a search has not been carried out are identified and the reasons for this are indicated.

Where lack of unity has been found (see MPEP §  1850 ), box 3 of the first sheet of the international search report is checked. In addition, Box No. III of the international search report (on “continuation of first sheet (2)”) is completed, irrespective of whether an invitation to pay additional search fees has issued. The search report indicates the separate inventions claimed in the application, whether additional search fees were requested and paid, and which claims were searched. It also indicates whether any additional search fees were accompanied by a protest.

An explanation of the separate inventions is entered in the appropriate area in Box No. III (see MPEP § 1850 ).

If applicant paid all the required additional search fees for additional inventions, the examiner should check item 1 under Box No. III indicating that the international search report covers all searchable claims.

If the examiner did not invite payment of additional search fees, item 2 should be checked under Box. No. III and the international search report will cover all searchable claims.

If, in response to a lack of unity of invention, applicant paid only some of the required additional search fees for additional inventions, the examiner should check item 3 under Box No. III and indicate the claims for which fees were paid and therefore, covered by the international search.

If the international search report is based on the invention first mentioned in the claims, the examiner should check item 4 under Box No. III and indicate the claims limited to the first mentioned invention that are covered by the international search report.

Regarding the three boxes indicating a Remark on Protest, the first box would be checked if the payment of any additional search fees is accompanied by a protest. The second box would not be checked since the ISA/US does not require a protest fee. The third box would be checked if the payment of any additional search fees is not accompanied by a protest. See MPEP § 1850 , subsection X., for a discussion of protest procedure.

IV.   TITLE, ABSTRACT, AND FIGURE FOR PUBLICATION

The international application must contain an abstract and a title. The examiner considers the abstract (together with the title of the invention and the figure of the drawings to be published with the abstract) in relation to the requirements of the Regulations under the PCT. The examiner indicates approval or amendment of the title of the invention, the text of the abstract, and the selection of the figure that is to accompany the abstract in items 4 to 6 of the first sheet of the international search report.

A.    Box 4 - Title

PCT Rule 4

The Request (Contents)

*****

4.3. Title of the Invention

The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.

*****

PCT Rule 37

Missing or Defective Title

37.1. Lack of Title

If the international application does not contain a title and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.

37.2. Establishment of Title

If the international application does not contain a title and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish a title, or if the said Authority finds that the title does not comply with Rule 4.3 , it shall itself establish a title. Such title shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation.

The title must be short and precise (preferably from two to seven words in English or when translated into English). Furthermore, the title should clearly and concisely state the technical designation of the invention. In this regard the following should be taken into account:

  • (A) personal names or trade names or similar terms of non-technical nature which do not serve to identify the invention should not be used;
  • (B) the abbreviation “etc.,” being vague, should not be used and should be replaced by an indication of what it is intended to cover;
  • (C) titles such as “Method,” “Apparatus,” “Chemical Compounds” alone or similar vague titles do not clearly state the technical designation of the invention and should not be used.

In general, the examiner is required to draft a new title if the applicant failed to provide a title or if the title is deficient because it does not comply with the requirements of PCT Rule 4.3 . The examiner is not required to gain the applicant’s approval of the new title established by the examiner.

On the first sheet of the international search report, the examiner indicates the title text is approved (the first box under Box 4) or has been established (the second box under Box 4).

B.    Box 5 and Box 6 - Abstract and Figure for Publication

PCT Rule 8

The Abstract

8.1. Contents and Form of the Abstract

  • (a) The abstract shall consist of the following:
    • (i) a summary of the disclosure as contained in the description, the claims, and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention;
    • (ii) where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention.
  • (b) The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).
  • (c) The abstract shall not contain statements on the alleged merits or value of the claimed invention or on its speculative application.
  • (d) Each main technical feature mentioned in the abstract and illustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.

8.2. Figure

  • (a) If the applicant fails to make the indication referred to in Rule 3.3 (a)(iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accompany the abstract when the latter is published by the International Bureau. In such case, the abstract shall be accompanied by the figure or figures so indicated by the International Searching Authority. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant.
  • (b) If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly. In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule 3.3 (a)(iii).

PCT Rule 38

Missing or Defective Abstract

38.1. Lack of Abstract

If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.

38.2. Establishment of Abstract

If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8 , it shall itself establish an abstract. Such abstract shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1 (b) and the International Searching Authority so wishes, in the language of that translation.

38.3. Modification of Abstract

The applicant may, until the expiration of one month from the date of mailing of the international search report, submit to the International Searching Authority:

  • (i) proposed modifications of the abstract; or
  • (ii) where the abstract has been established by the Authority, proposed modifications of, or comments on, that abstract, or both modifications and comments;

    and the Authority shall decide whether to modify the abstract accordingly. Where the Authority modifies the abstract, it shall notify the modification to the International Bureau.

In general, the examiner will have to establish a new abstract if the applicant did not provide an abstract or if the abstract does not comply with PCT Rule 8 . In determining the definitive contents of the abstract, or establishing the text of the abstract anew where it is missing, the examiner should take into consideration the fact that the abstract is merely for use as technical information and, in particular, must not be used for the purpose of interpreting the scope of the protection sought. The abstract constitutes an efficient instrument for the purpose of assisting the scientist, engineer, or researcher in searching in the particular technical field and should in particular make it possible to assess whether there is need for consulting the international application itself. WIPO guidelines for the preparation of abstracts are found in WIPO Standard ST.12/A, which is available from WIPO’s web site (www.wipo.int/scit/en/standards/standards.htm).

In considering the adequacy of the applicant’s abstract and figure, because of practical difficulties experienced by the International Bureau with publication, examiners should have particular regard to the following:

  • (A) It is important that the abstract be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English). Within this constraint the abstract must provide a summary of the technical information about the disclosure as contained in the description, claims, and drawings. It should be drafted so as to serve as an efficient scanning tool for searching purposes in the art.
  • (B) Phrases should not be used which can be implied, such as “This disclosure concerns,” “The invention defined by this disclosure,” and “This invention relates to.”
  • (C) Only one figure should normally be selected unless this would lead to inadequate disclosure. The inclusion of more than two figures should not be considered except in extreme circumstances where necessary information cannot be otherwise conveyed. Where none of the figures is considered useful for the understanding of the invention (even where the applicant has suggested a figure), no figure should be selected.
  • (D) Abstracts may be incomprehensible if the numerals of the selected figure(s) do not correspond with those in the abstract. Thus, this should be avoided.
  • (E) An absence of reference numbers on the figures must be accepted as the examiner has no mechanism to initiate their addition.
  • (F) Each main technical feature mentioned in the abstract and illustrated by a drawing should be followed by a reference sign, placed between parentheses.

In box 5 of the first sheet of the international search report, the examiner indicates approval of the text of the abstract by checking the first box. When the text of the abstract is missing or defective the second box is checked and the new abstract is established by entering the text of the new abstract. The defect or reason for establishing the new abstract should be indicated, e.g., too long or missing.

The applicant may submit modifications of the abstract until the expiration of one month from the date of mailing of the search report. If the examiner establishes a new abstract, the applicant may propose modifications of, and/or comment on, the new abstract after it has been established in the international search report. The applicant is allowed one month from the date of mailing of the international search report to respond to the examiner’s abstract in the report. If the applicant does comment, the examiner takes the applicant’s comments into consideration. It is not necessary for the examiner to reply to the applicant’s comments even if adverse. If the examiner decides to amend the abstract established in the international search report based on the proposed modifications and/or comment, the International Bureau and the applicant are notified using Form PCT/ISA/205. See PCT Rule *> 38.3 and Administrative Instructions Section 515 .

When indicating the figure to be published, the applicant’s suggestion is found in Box No. IX of the request (Form PCT/RO/101) . Where none of the figures is considered useful for the understanding of the abstract, this is indicated at the appropriate box ( >box 6b of the first sheet of Form PCT/ISA/210). When no drawings accompany the application, none of the boxes are checked. Otherwise, box 6a is checked and the reason for selecting the figure to be published is indicated, i.e., as suggested by the applicant, as selected by the examiner because either the applicant failed to suggest a figure in Box No. IX of Form PCT/RO/101 or the figure better characterizes the invention. It is not recommended to select more than one figure; however, if it is necessary to do so then the wording of the form should be changed to reflect the change from single case to plural case. For example, “figure” is changed to “figures”, “is” to “are” and “ No. ” to “Nos.” .

V.    BOX A - CLASSIFICATION OF SUBJECT MATTER

The International Searching Authority assigns obligatory International Patent Classification (IPC) symbols in accordance with the rules as set forth in the Guide to the IPC and in the IPC itself (using the edition of the IPC in force at the time), whereby the technical subject of the invention of the application is identified. The International Searching Authority then records the International Patent Classification and U.S. Classification in Box A of the second sheet of the international search report. The IPC Guide can be accessed via the Patent Examiner’s Toolkit under Classification Tools or via WIPO’s web site (www.wipo.int).

VI.    BOX B - RECORDING THE SEARCH

The examiner records the search history in Box B of the second sheet of the international search report. In recording the search history of the international search, the examiner lists the classification identification of the fields searched. Examiners are also encouraged to record the search history in sufficient detail to allow examiners of national stage applications to fully interpret and rely upon the international search. This includes recording the details of any patent and non-patent literature searches as well as searches conducted on the Internet.

Where the international search report is entirely or partly based on a previous search made for an application relating to a similar subject, the previous application number and the relevant search history consulted for this previous search is, where appropriate, identified as having been consulted for the international application in question, except in those instances where the details of an earlier search cannot be ascertained, or whenever it is impractical to record the full details of the earlier search. In the later case, a summary of the earlier search should be included. Where the previous application has been published, this information is recorded in the international search report.

VII.    BOX C - DOCUMENTS CONSIDERED TO BE RELEVANT

The completion of Box C of the second sheet of the international search report can be considered as having three components. These are: (A) the citation category; (B) the citation of the document together with identification of the relevant passages where appropriate; and (C) the identification of relevant claim numbers. The citation of multiple documents showing the same inventive elements should be kept to a minimum. Further, when citing a document, the examiner should clearly indicate which portions of the document are most relevant.

A.   Citation Category

Documents which are cited are given a category indication by way of an alphabetic character, details of which are given in Administrative Instructions Sections 505 and 507 and below. The categories for citations are also explained under the “documents considered to be relevant” section of the report. A category should always be indicated for each document cited. Where needed, combinations of different categories are possible.

1.   Particularly Relevant Documents

Where a document cited in the international search report is particularly relevant, it is indicated by the letters “X” or “Y”. Category “X” is applicable where a document is such that when taken alone, a claimed invention cannot be considered novel or where a document is such that when considered in light of common general knowledge, a claimed invention cannot be considered to involve an inventive step. Category “Y” is applicable where a document is such that a claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other documents of the same category, such combination being obvious to a person skilled in the art.

2.   Documents Defining the State of the Art and Not Prejudicing Novelty or Inventive Step

Where a document cited in the international search report represents state of the art and is not prejudicial to the novelty or inventive step of the claimed invention, it is indicated by the letter “A”.

3.   Documents Which Refer to a Non-Written Disclosure

Where a document cited in the international search report refers to a non-written disclosure referred to in PCT Rule 33.1 (b), the letter “O” is entered. Examples of such disclosures include conference proceedings. The document category “O” is always accompanied by a symbol indicating the relevance of the document, for example: “O,X”, “O,Y”, or “O,A”.

4.   Intermediate Documents

Documents published on dates falling between the date of filing of the application being searched and the date of priority claimed, or the earliest priority if there is more than one (see PCT Article 2 (xi)(b)), are denoted by the letter “P”. The letter “P” is also given to a document published on the very day of the earliest date of priority of the patent application under consideration. The document category “P” is always accompanied by a symbol indicating the relevance of the document, for example: “P,X”, “P,Y”, or “P,A”.

5.   Documents Relating to the Theory or Principle Underlying the Invention

Where any document cited in the search report is a document that may be useful for a better understanding of the principle or theory underlying the invention, or is cited to show that the reasoning or the facts underlying the invention are incorrect, it is indicated by the letter “T”.

6.   Potentially Conflicting Patent Documents

Any patent document bearing a filing or priority date earlier than the filing date of the application searched (not the priority date) but published on or later than that date and the content of which would constitute prior art relevant to novelty (PCT Article 33 (2)) is indicated by the letter “E” (see Administrative Instructions Section 507 (b) and PCT Rule 33.1 (c)).

7.   Documents Cited in the Application

When the search report cites documents already mentioned in the description of the patent application for which the search is carried out, such documents may be identified on the search report by the wording “cited in the application” under the cited document.

8.   Documents Cited for Other Reasons

Where in the search report any document is cited for reasons other than those referred to in the foregoing paragraphs (in particular as evidence), for example:

  • (A) a document which may throw doubt on a priority claim (Article 4(C)(4) of the Paris Convention), or
  • (B) a document cited to establish the publication date of another citation,

the document is indicated by the letter “L”. Brief reasons for citing the document should be given. Documents of this type need not be indicated as relevant to any particular claims. However, where the evidence that they provide relates only to certain claims (for example the “L” document cited in the search report may invalidate the priority in respect of certain claims and not others), then the citation of the document should refer to those claims.

B.    Citation of the Documents

Identification of any document should be made according to WIPO Standard ST.14 (see Administrative Instructions Section 503 ). For “A” citations it is not necessary to indicate the relevant claims unless there is good reason to do so; for example where there is a clear lack of unity a priori (see MPEP § 1850 ) and the citation is relevant only to a particular claim or group of claims or when the claims meet the criteria of novelty, inventive step, and industrial applicability under PCT Article 33 (2) to (4) and the “A” category citations represent the most relevant prior art. The box on the second sheet of Form PCT/ISA/210 entitled “Further documents listed are in the continuation of Box C” is checked if a continuation sheet is used to list additional documents that will not fit in the space provided in Box C.

C.   Relationship Between Documents and Claims

Each citation should include a reference to the claims to which it relates (see Administrative Instructions Section 508 ). If necessary, various relevant parts of the document cited should each be related to the claims in like manner (with the exception of “L” documents and “A” documents). It is also possible for the same document to represent a different category with respect to different claims. For example:

WO1990/001867 A (WIDEGREN LARS (SE)) 8 March 1990 (08-03-1990), figures 1 and 2

X 1

Y 2-5

A 6-10

The above example means that Figures 1 and 2 of the cited document disclose subject matter which prejudices the novelty or inventive step of claim 1, which prejudices the inventive step of claims 2-5 when combined with another document cited in the search report, and which represents non-prejudicial state of the art for the subject matter of claims 6-10.

VIII.   FINALIZATION OF THE SEARCH REPORT

The identification of the International Searching Authority which established the international search report and the date of actual completion, that is, the date on which the report was drawn up are indicated at the bottom of the second sheet of the international search report. This information is generated automatically by the OACS software when preparing the international search report. The international search report will be accompanied by a transmittal letter (Form PCT/ISA/220) indicating the date the search report was mailed to the applicant. See MPEP § 1845.02 .

Pursuant to PCT Rule 43.8 , the international search report must indicate the name of the officer of the International Searching Authority responsible for the report, i.e., the “authorized officer.” An “authorized officer” is the person who actually performed the search work and prepared the search report, or another person who was responsible for supervising the search. See Administrative Instructions Section 514 . Thus, an examiner need not have signatory authority in order to be named as an authorized officer on the search report. However, the “file copy” of the search report must be signed by an examiner having at least partial signatory authority.

The international search report should be mailed within 3 months of receipt of the search copy or within 9 months from the priority date, whichever is later.

Patent Cooperation Treaty (PCT) International Search Report (PCT Article 18 and Rules 43 and 44) (Figure 1)
Patent Cooperation Treaty (PCT) International Search Report (PCT Article 18 and Rules 43 and 44) (Figure 2)
Patent Cooperation Treaty (PCT) International Search Report (PCT Article 18 and Rules 43 and 44) (Figure 3)
Patent Cooperation Treaty (PCT) International Search Report (PCT Article 18 and Rules 43 and 44) (Figure 4)
 

1845    Written Opinion of the International Searching Authority [R-08.2012]

PCT Rule  43 bis

Written Opinion of the International Searching Authority

43 bis .1.  Written Opinion

  • (a) Subject to Rule 69.1(b -bis ) , the International Searching Authority shall, at the same time as it establishes the international search report or the declaration referred to in Article 17 (2)(a), establish a written opinion as to:
    • (i) whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable;
    • (ii) whether the international application complies with the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority.
      • "" The written opinion shall also be accompanied by such other observations as these Regulations provide for.
  • (b) For the purposes of establishing the written opinion, Articles  33 (2) to (6) and 35 (2) and (3) and Rules 43.4 , 43.6 bis 64 , 65 , 66.1 (e), 66.7 , 67 , 70.2(b) and (d), 70.3 , 70.4 (ii), 70.5 (a), 70.6 to 70.10 , 70.12 , 70.14 and 70.15 (a) shall apply mutatis mutandis .
  • (c) The written opinion shall contain a notification informing the applicant that, if a demand for international preliminary examination is made, the written opinion shall, under Rule 66.1 bis (a) but subject to Rule 66.1 bis (b) , be considered to be a written opinion of the International Preliminary Examining Authority for the purposes of Rule 66.2(a) , in which case the applicant is invited to submit to that Authority, before the expiration of the time limit under Rule 54 bis .1(a) , a written reply together, where appropriate, with amendments.

For international applications having an international filing date on or after January 1, 2004, the examiner is required, in most instances, to establish a written opinion on novelty, inventive step, and industrial applicability of the claimed invention at the same time he/she establishes the international search report. The international search report and written opinion together serve to inform the International Preliminary Examining Authority of the documents and arguments necessary to complete the relevant assessments if international preliminary examination is demanded, and to inform the designated Offices of information that may be relevant to examination in the national phase. (The written opinion is transmitted to the designated offices in the form of an international preliminary report on patentability if no international preliminary examination report is established under Chapter II of the PCT). A written opinion of the International Searching Authority is not required in the limited instance where a demand for international preliminary examination and required fees (PCT Rule 69.1 (a)) have been filed with the United States International Preliminary Examining Authority and the examiner considers all the conditions of PCT Article 34 (2)(c)(i) to (iii) to be fulfilled. In this limited instance, a positive international preliminary examination report may be issued. See PCT Rule 69.1 (b- bis )).

The applicant must be notified in the written opinion of the defects found in the application. The examiner is further required to fully state the reasons for his/her opinion (PCT Rules 66.1 bisand 66.2 (b)) and invite a written reply, with amendments where appropriate (PCT Rule 66.2 (c)).

1845.01   Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237) [R-08.2012]

The International Patent Classification and U.S Classification in the header on the cover sheet of Form PCT/ISA/237 is to be consistent with the indication of classification of subject matter in Box A on the second sheet of the International Search Report (Form PCT/ISA/210).

The Boxes marked on the cover sheet represent a summary of the indications detailed on the subsequent relevant sheets of Form PCT/ISA/237.

I.   BOX NO. I. — BASIS OF OPINION

When completing Box No. I, item 1, of Form PCT/ISA/237, the examiner must indicate whether or not the opinion has been established on the basis of the international application in the language in which it was filed. If a translation was furnished for the purpose of the search, this must be indicated.

Box No. I, item 2 of Form PCT/ISA/237 is to be marked when the opinion is established taking into account the rectification of an obvious mistake under PCT Rule 91 .

With respect to Box No. I, item 3 of Form PCT/ISA/237, if the opinion has been based on a nucleotide and/or amino acid sequence disclosed and necessary to the claimed invention, the examiner must indicate the type of material (i.e., a sequence listing and/or tables related thereto), the format of the material (i.e., on paper or in electronic form) and the time of filing/furnishing (i.e., contained in the international application as filed, filed together with the international application in electronic form and/or furnished subsequently to the ISA for the purposes of the search). If more than one version or copy of the sequence listing and/or tables relating thereto is filed, the examiner must indicate whether the applicant has provided the required statement indicating that the information in the subsequent or additional copies are identical to that in the application as filed or does not go beyond the application as filed, as appropriate.

II.   BOX NO. II. — PRIORITY

Box No. II of Form PCT/ISA/237 is to inform applicant of the status of a request for priority. Where one or more citations of the international search report were published after the earliest priority date, the validity of that earliest priority date requires checking. Where the priority document is one which is in the records of the ISA, it should be obtained from those records. If a copy of the priority document is not available before preparation of the written opinion of the ISA because it has not yet been provided by the applicant, and if that earlier application was not filed with that Authority in its capacity as a national Office or the priority document is not available to that Authority from a digital library in accordance with the Administrative Instructions, the written opinion of the ISA may be established as if the priority had been validly claimed.

If the examiner needs a copy of a foreign priority document, the copy will be supplied on request to the International Bureau (IB) unless the IB has not yet received the priority document, in which case the examiner may invite the applicant to furnish such a copy. See PCT Rule 66.7 (a). The examiner may consult with the Technology Center Special Program Examiner regarding requesting a copy of the priority document from the IB. If the priority document is not in English, the examiner may invite the applicant to furnish a translation of the priority document within two months of the invitation. See PCT Rule 66.7 (b). Box No. II, item 3, “Additional Observations” may be used to invite applicant to supply a copy of the priority document and/or translation. Preparation of the written opinion by the International Searching Authority should not be delayed to await a response to the invitation. The written opinion of the ISA will ordinarily be established as if the priority claim had been validly claimed even though the copy and/or translation has not been furnished. However, failure to timely furnish a copy of the priority document and/or translation may result in any further written opinion or international preliminary examination report of the International Preliminary Examining Authority being established as if the priority had not been claimed.

If applicant fails to furnish a copy or translation of the earlier application, whose priority has been claimed, check item 1 and then check the first box of the subsection if applicant failed to furnish a copy of the earlier application whose priority has been claimed, and check the second box of the subsection if applicant failed to furnish a translation of the earlier application whose priority has been claimed.

When the claim for priority has been found invalid (e.g., the notification under PCT Rule 26 bis .2 (b) has been provided or all claims are directed to inventions which were not described and enabled by the earlier application), check item 2 in Box II and indicate why the claim for priority has been found invalid following item 3 “Additional observations”.

III.   BOX NO. III. — NON-ESTABLISHMENT OF OPINION ON NOVELTY, INVENTIVE STEP AND INDUSTRIAL APPLICABILITY

Box No. III of Form PCT/ISA/237 is intended to cover situations where some or all claims of an application are so unclear or inadequately supported by the description that the question of novelty, inventive step (nonobviousness), and industrial applicability cannot be considered, or where the international application or claims thereof relate to subject matter for which it is not required to establish a written opinion concerning novelty, inventive step and industrial applicability, or where no international search report has been established for the claims.

If some or all of the claims of an application relate to subject matter for which it is not required to establish a written opinion concerning novelty, inventive step and industrial applicability, check the appropriate box, indicate which claims relate to that subject matter and specify the reasons e.g., improper multiple dependent claims that fail to comply with PCT Rule 6.4 .

If some or all of the claims of an application are so unclear that no meaningful opinion could be formed, check the appropriate box, indicate which claims are unclear and specify the reasons.

If some or all of the claims are so inadequately supported by the description that no meaningful opinion could be formed, check the appropriate box.

If no international search report has been established for certain claims, check the appropriate box and indicate the claim numbers.

If the nucleotide and/or amino acid sequence listing does not comply with Annex C of the Administrative Instructions, the examiner must indicate whether the written form and/or the electronic form is not in compliance and the reason for the non-compliance. Further, if tables related to the sequence listing are included as part of the international application, and these tables fail to comply with the technical requirements of Annex C of the Administrative Instructions, the examiner must indicate this in Box No. III.

IV.   BOX NO. IV. — LACK OF UNITY OF INVENTION

Box No. IV of Form PCT/ISA/237 should be used by the examiner to notify applicant that lack of unity has been found by checking item 1, and one of the four boxes under item 1.

If applicant paid additional fees for additional inventions, the examiner should check the first box under item 1.

If the additional fees were paid under protest, the examiner should check the second box under item 1.

Regarding the third box, since the ISA/US does not require a protest fee, this box would not be checked.

If the search report is based on the first mentioned invention (no additional search fees were paid), the examiner should check the fourth box under item 1.

Item 2 of Box No. IV is to be completed if the examiner determines that unity of invention is lacking but chooses not to invite the applicant to agree to a search limited to the first mentioned invention or pay additional fees.

If a lack of unity exists, the examiner would mark the second box under item 3. However, since the reasons for the lack of unity have already been set forth on the simultaneously issued international search report, the examiner can simply state that the reason the requirement of unity of invention is not complied with is set forth in the international search report. The first box under item 3 would never be marked.

Item 4 is used by the examiner to indicate which parts of the application form the basis of the opinion after the lack of unity of invention has been explained. The first box should be checked when the opinion is established for all parts. Otherwise, the second box is checked and the relevant claims identified.

V.   BOX NO. V. — REASONED STATEMENT WITH REGARD TO NOVELTY, INVENTIVE STEP, AND INDUSTRIAL APPLICABILITY OF CLAIMS

In Box No. V of Form PCT/ISA/237, the examiner must list in summary form all claims with regard to the criteria of novelty (N), inventive step (IS), and industrial applicability (IA). For definitions of novelty, inventive step, and industrial applicability see MPEP §§ 1878.01(a)(1) , 1878.01(a)(2) , and 1878.01(a)(3) , respectively.

Box No. V is the main purpose of the written opinion. All claims without fatal defects are treated on the merits in Box No. V as to novelty, inventive step (nonobviousness) and industrial applicability.

The treatment of claims in Box No. V is similar in format to an Office action in a U.S. national patent application except that the words “rejection,” “patentability,” and “allowable are never used in a written opinion. On the international level, all written opinions are nonbinding and a patent does not issue; what does issue is an international preliminary report on patentability (IPRP), which is nonbinding on the elected States.

Examiner statements in Box No. V can be positive or negative. If the claims define over the prior art and meet the test of novelty, inventive step (nonobviousness) and industrial applicability, a positive statement equivalent to detailed reasons for allowance in a corresponding U.S. national application should be provided, indicating how the claims meet the tests of novelty, inventive step and industrial applicability. Form paragraphs 18.04 and 18.04.01 may be used for this purpose.

¶ 18.04    Meets Novelty and Inventive Step

Claim [1] the criteria set out in PCT Article 33(2)-(3), because the prior art does not teach or fairly suggest [2].

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and insert the verb --meet-- or --meets--, as appropriate.

2. In bracket 2, insert the details of the claimed subject matter that render it unobvious over the prior art.

3. If the claims also meet the industrial applicability criteria set out in PCT Article 33(4), this form paragraph should be followed by form paragraph 18.04.01.

4. If the claims do not meet the industrial applicability criteria set out in PCT Article 33(4), this form paragraph should be followed by form paragraph 18.03.

¶ 18.04.01    Meets Industrial Applicability

Claim [1] the criteria set out in PCT Article 33(4), and thus [2] industrial applicability because the subject matter claimed can be made or used in industry.

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --meet-- or -- meets--, as appropriate.

2. In bracket 2, insert --have-- or --has--, as appropriate.

3. If the claims meet all of the requirements of PCT Article 33(2)-(4), use form paragraph 18.04 before this form paragraph to provide positive statements for novelty and inventive step under PCT Article 33(2)-(3).

4. If the claims have industrial applicability but lack novelty and inventive step, use this form paragraph and additionally use form paragraph 18.01.

5. If the claims have industrial applicability and novelty but lack inventive step, use this form paragraph and additionally use one or more of form paragraphs 18.0218.02.01 and18.02.02, as appropriate.

6. If the claims do not have industrial applicability, use form paragraph 18.03 instead of this form paragraph.

If, on the other hand, it is the opinion of the examiner that some or all claims lack novelty, inventive step, or industrial applicability, specific reasons must be given similar to those used in U.S. national applications.

Form paragraphs 18.01 , 18.02 , 18.02.01 , 18.02.02 , and 18.03 may be used, as appropriate, to explain the negative statements listed in Box No. V.

¶ 18.01    Lacks Novelty

Claim [1] novelty under PCT Article 33(2) as being anticipated by [2].

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

2. In bracket 2, insert name of prior art relied upon.

¶ 18.02    Lacks Inventive Step - One Reference

Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2][3]

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

2. In bracket 2, insert name of prior art relied upon.

3. In bracket 3, add reasoning.

¶ 18.02.01    Lacks Inventive Step - Two References

Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2] in view of [3][4]

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

2. In bracket 2, insert name of PRIMARY prior art relied upon.

3. In bracket 3, insert name of SECONDARY prior art relied upon.

4. In bracket 4, add reasoning.

¶ 18.02.02    Lacks Inventive Step - Additional Reference

Claim [1] an inventive step under PCT Article 33(3) as being obvious over the prior art as applied in the immediately preceding paragraph and further in view of [2][3]

Examiner Note:

1. This form paragraph may follow either 18.02 or 18.02.01.

2. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

3. In bracket 2, insert name of additional prior art relied upon.

4. In bracket 3, add reasoning.

¶ 18.03    Lacks Industrial Applicability

Claim [1] industrial applicability as defined by PCT Article 33(4)[2]

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.

2. In bracket 2, add reasoning.

 

Examiners are encouraged to indicate any amendments which applicant could present which would avoid a negative statement in the international preliminary examination report in the event that applicant chooses to file a demand.

VI.   BOX NO. VI. — CERTAIN DOCUMENTS CITED

Since all documents cited at the time of establishment of the written opinion will be listed on the simultaneously established search report, there is no need to also list them on the written opinion, and as such this box should be left blank.

VII.   BOX NO. VII. — CERTAIN DEFECTS IN THE INTERNATIONAL APPLICATION

In Box No. VII of Form PCT/ISA/237, defects in the form and content of the international application are identified.

Defects that would be listed in Box No. VII include informalities such as misplaced and/or omitted drawing numerals, misspelled words, and grammatical errors.

The following form paragraphs are used in Box No. VII of PCT/ISA/237, “Certain defects in the international application,” for noting technical defects.

¶ 18.08    Drawing - Defect in Form or Contents Thereof

The drawings contain the following defect(s) in the form or content thereof: [1]

Examiner Note:

In bracket 1, insert identification of defects in drawings.

¶ 18.08.01    Drawing Is Required

The subject matter of this application admits of illustration by drawing to facilitate understanding of the invention. Applicant is required under PCT Article 7(1) to furnish a drawing.

¶ 18.09    Description - Defect in Form or Contents Thereof

The description contains the following defect(s) in the form or contents thereof: [1]

Examiner Note:

In bracket 1, insert the technical problem, e.g., misspelled word.

¶ 18.10    Claims - Defect in Form or Contents Thereof

Claim [1] contain(s) the following defect(s) in the form or contents thereof: [2]

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, and insert claim no.(s).

2. In bracket 2, identify the technical deficiency.

VIII.   BOX NO. VIII. — CERTAIN OBSERVATIONS ON THE INTERNATIONAL APPLICATION

In Box No. VIII, the examiner notifies the applicant of observations made as to the clarity of the claims, the description, the drawings, or on the question whether the claims are fully supported by the description.

If the claims, the description, or the drawings are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the question of novelty, inventive step (nonobviousness) or industrial applicability, the applicant is so informed in Box No. III. See PCT Article 34 (4)(a)(ii). Reasons for the examiner’s opinion that the claims, description and drawings, etc., lack clarity must also be provided.

If the above situation is found to exist in certain claims only, the provisions of PCT Article 34 (4)(a)(ii) shall apply to those claims only.

If the lack of clarity of the claims, the description, or the drawings is of such a nature that it is possible to form a meaningful opinion on the claimed subject matter, then it is required that the examiner consider the claims and render a written opinion on novelty, inventive step, and industrial applicability in Box No. V.

Since the claims of an international application are not subject to a rejection on either art or indefiniteness consistent with U.S. practice, observations by the examiner with regard to clarity of the claims, the description and the drawings will be treated in the form of an objection in the written opinion in Box No. VIII.

The following form paragraphs may be used in Box No. VIII, “Certain observations on the international application,” of Form PCT/ISA/237 for noting objections which are substantive rather than merely technical in nature.

¶ 18.11    Drawing Objections - Lack Clarity

The drawings are objected to under PCT Article 7 as lacking clarity under PCT Article 7 because: [1]

Examiner Note:

In bracket 1, insert reasons why the drawings lack clarity, e.g., inaccurate showing.

¶ 18.12.01    Claims Objectionable - Inadequate Written Description

Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The application, as originally filed, did not describe: [3]

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --is-- or --are--, as appropriate.

2. In bracket 2, pluralize “claim” if needed, and insert the verb --is-- or --are--.

3. In bracket 3, identify subject matter not described in the application as filed.

¶ 18.13.01    Claims Objectionable - Non-Enabling Disclosure

Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The description does not disclose the claimed invention in a manner sufficiently clear and complete for the claimed invention to be carried out by a person skilled in the art as required by PCT Article 5 because: [3]

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.

2. In bracket 2, pluralize “claim” if needed, insert the verb --is-- or --are--.

3. In bracket 3, identify the claimed subject matter that is not enabled and explain why it is not enabled.

¶ 18.14.01    Claims Objectionable - Lack of Best Mode

Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The description fails to set forth the best mode contemplated by the applicant for carrying out the claimed invention as required by PCT Rule 5.1(a)(v) because: [3].

Examiner Note:

1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.

2. In bracket 2, pluralize “claim” if needed, and insert the appropriate verb --is-- or --are--.

3. In bracket 3, insert the objection and reasons.

¶ 18.15    Claims Objectionable - Indefiniteness

Claim [1] objected to under PCT Article 6 as lacking clarity because claim [2] indefinite for the following reason(s): [3]

Examiner Note:

1. In brackets 1 and 2, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.

2. In bracket 3, insert reasons.

IX.   AUTHORIZED OFFICER

Pursuant to PCT Rules 43 bis .1 and 70.14 , the written opinion of the International Searching Authority must indicate the name of the officer of the International Searching Authority responsible for the written opinion, i.e., the “authorized officer.” An “authorized officer” is the person who actually performed the search work and prepared the search report and the written opinion, or another person who was responsible for supervising the search and the establishment of the written opinion. See Administrative Instructions Section 514 . Thus, an examiner need not have signatory authority in order to be named as an authorized officer on the written opinion. However, the “file copy” of the written opinion must be signed by an examiner having at least partial signatory authority.

X.   TIME TO REPLY

If, in response to the written opinion of the International Searching Authority (Form PCT/ISA/237), applicant wishes to file a demand and amendments and/or arguments, the time period for response is 3 months from the mailing of the international search report and the written opinion or before the expiration of 22 months from the priority date, whichever expires later.

Patent Cooperation Treaty (PCT) Written Opinion of the International Searching Authority (PCT Rule 43bis.1)
Written Opinion of the International Searching Authority (Figure 2)
Written Opinion of the International Searching Authority (Figure 3)
Written Opinion of the International Searching Authority (Figure 4)
Written Opinion of the International Searching Authority (Figure 5)
Written Opinion of the International Searching Authority (Figure 6)

1845.02   Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration (Form PCT/ISA/220) [R-08.2012]

The examiner completes the Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration (Form PCT/ISA/220) upon completion of the International Search Report (Form PCT/ISA/210) or the Declaration of Non-Establishment of the International Search Report (Form PCT/ISA/203) and, for applications filed on or after January 1, 2004, completion of the Written Opinion of the International Searching Authority (Form PCT/ISA/237).

The Form PCT/ISA/220 serves as a cover letter for the PCT/ISA/210 or PCT/ISA/203 and for the PCT/ISA/237.

The Form PCT/ISA/220 indicates the mailing date, which is important for the computation of the time limit for filing amendments to the claims under PCT Article 19 (see MPEP § 1853 ) and proposed modifications of, or comments on, the abstract. In applications filed on or after January 1, 2004, the mailing date on Form PCT/ISA/220 may also establish the time limit for making a demand under PCT Rule 54 bis .1 (see MPEP § 1842 , subsection V.A.) and for making Article 34 Amendments that will be ensured consideration by the examiner (see MPEP § 1871 ).

When processing an application having an international filing date filed prior to January 1, 2004, the examiner should make sure the Form PCT/ISA/220 being issued is the version of the form dated April 2002 and entitled “Notification of Transmittal of the International Search Report or the Declaration.”

I.   ADDRESS FOR CORRESPONDENCE

The address for correspondence is taken from the request (Form PCT/ISA/101). When an agent represents the applicant, the address for correspondence is listed in Box No. IV of the PCT request Form. For applicants processing their own applications, the address for correspondence may be listed in Box No. II of the request Form. However, where a Notification of the Recording of a Change (Form PCT/IB/306) shows any changes in the applicant or address for correspondence effected under PCT Rule 92 bis , the later address is used.

II.   APPLICANT

When there is more than one applicant in respect of the international application, only the first mentioned of these on the request Form is indicated in the international search report. Other applicants, if any, are indicated by the words “et al” following the first applicant’s name. The first mentioned applicant is indicated in Box No. II of the request Form, a second applicant is listed in Box No. III; further applicants are listed on the continuation sheet if there are more than two applicants. Company names are preferably written in capital letters; for personal names the family name is preferably given first in capital letters and the given names are in mixed case. This helps to identify the family name.

Notification of Transmittal of the International Search Report and The Written Opinion of the International Searching Authority, Or the Declaration (PCT Rule 44.1) (Figure 1)
Notes to Form PCT/INA/220 (Figure 2)
Notes to Form PCT/ISA/220 (continued) (Figure 3)

1846    Sections of the Articles, Regulations, and Administrative Instructions Under the PCT Relevant to the International Searching Authority [R-08.2012]

PCT Articles 15 - 20 (Appendix T);

PCT Rules 33 - 47 (Appendix T); and

Administrative Instructions Sections 501 - 518

(Appendix AI).

1848    Sequence Listings and Tables Related to Sequence Listings [R-08.2012]

PCT Rule  13 ter

Nucleotide and/or Amino Acid Sequence Listings

13 ter .1.  Procedure Before the International Searching Authority

  • (a) Where the international application contains disclosure of one or more nucleotide and/or amino acid sequences, the International Searching Authority may invite the applicant to furnish to it, for the purposes of the international search, a sequence listing in electronic form complying with the standard provided for in the Administrative Instructions, unless such listing in electronic form is already available to it in a form and manner acceptable to it, and to pay to it, where applicable, the late furnishing fee referred to paragraph (c), within a time limit fixed in the invitation.
  • (b) Where at least part of the international application is filed on paper and the International Searching Authority finds that the description does not comply with Rule 5.2 (a), it may invite the applicant to furnish, for the purposes of the international search, a sequence listing in paper form complying with the standard provided for in the Administrative Instructions, unless such listing in paper form is already available to it in a form and manner acceptable to it, whether or not the furnishing of a sequence listing in electronic form is invited under paragraph (a), and to pay, where applicable, the late furnishing fee referred to in paragraph (c), within a time limit fixed in the invitation.
  • (c) The furnishing of a sequence listing in response to an invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets, provided that a late furnishing fee may be required under either paragraph (a) or (b) but not both.
  • (d) If the applicant does not, within the time limit fixed in the invitation under paragraph (a) or (b), furnish the required sequence listing and pay any required late furnishing fee, the International Searching Authority shall only be required to search the international application to the extent that a meaningful search can be carried out without the sequence listing.
  • (e) Any sequence listing not contained in the international application as filed, whether furnished in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the international application, but this paragraph shall not prevent the applicant from amending the description in relation to a sequence listing pursuant to Article 34 (2)(b).
  • (f) Where the International Searching Authority finds that the description does not comply with Rule 5.2 (b), it shall invite the applicant to submit the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. The International Searching Authority shall transmit the correction to the receiving Office and to the International Bureau.

PCT Administrative Instruction Section 513

Sequence Listings

  • (a) Where the International Searching Authority receives a correction of a defect under Rule 13 ter .1 (f), it shall:
    • (i) indelibly mark, in the upper right-hand corner of each replacement sheet, the international application number and the date on which that sheet was received;
    • (ii) indelibly mark, in the middle of the bottom margin of each replacement sheet, the words “SUBSTITUTE SHEET ( Rule 13 ter .1 (f))” or their equivalent in the language of publication of the international application;
    • (iii) indelibly mark on the letter containing the correction, or accompanying any replacement sheet, the date on which that letter was received;
    • (iv) keep in its files a copy of the letter containing the correction or, when the correction is contained in a replacement sheet, the replaced sheet, a copy of the letter accompanying the replacement sheet, and a copy of the replacement sheet;
    • (v) promptly transmit any letter and any replacement sheet to the International Bureau, and a copy thereof to the receiving Office.
  • (b) Where the international search report and the written opinion of the International Searching Authority are based on a sequence listing that was not contained in the international application as filed but was furnished subsequently to the International Searching Authority, the international search report and the written opinion of the International Searching Authority shall so indicate.
  • (c) Where a meaningful international search cannot be carried out and a meaningful written opinion, as to whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable, cannot be established because a sequence listing is not available to the International Searching Authority in the required form, that Authority shall so state in the international search report or declaration referred to in Article 17 (2)(a), and in the written opinion.
  • (d) The International Searching Authority shall indelibly mark, in the upper right-hand corner of the first sheet of any sequence listing on paper which was not contained in the international application as filed but was furnished subsequently to that Authority, the words “SUBSEQUENTLY FURNISHED SEQUENCE LISTING” or their equivalent in the language of publication of the international application.
  • (e) The International Searching Authority shall keep in its files:

     

    • (i) any sequence listing on paper which was not contained in the international application as filed but was furnished subsequently to that Authority; and
    • (ii) any sequence listing in electronic form furnished for the purposes of the international search.

Where an international application contains disclosure of a nucleotide and/or amino acid sequence, the description must contain a listing of the sequence complying with the standard specified in Annex C of the Administrative Instructions. See MPEP § 1823.02 . If the International Searching Authority finds that an international application contains such a disclosure but that the description does not include such a listing or that the listing included does not comply with that standard, the International Searching Authority may invite the applicant to furnish a listing complying with that standard.

If the International Searching Authority finds that a sequence listing is not in an electronic form provided for in the Administrative Instructions, it may invite the applicant to furnish a listing to it in such a form.

An invitation from the International Searching Authority to furnish a sequence listing complying with the standard specified in the Administrative Instructions, will specify a time limit for complying with the invitation. Any sequence listing furnished by the applicant in response to the invitation must be accompanied by a statement to the effect that the listing does not include matter which goes beyond the disclosure in the international application as filed. If the applicant does not comply within that time limit, the search undertaken by the International Searching Authority may be limited .

If the applicant wishes to include such a listing in the text of the description itself, appropriate amendments may be made later under PCT Article 34 , provided that the applicant files a Demand for international preliminary examination.

The United States Receiving Office has not notified the International Bureau under Administrative Instructions Section 801(b) that it is prepared to accept the filing in electronic form of the sequence listing and/or any tables related to the sequence listing of international applications under Administrative Instructions Section 801(a) . However, Administrative Instructions Section 801(c) permits a receiving Office that has not notified the IB under Administrative Instructions Section 801(b) to decide in a particular case to accept such sequence listing filings. The RO/US will accept applications where the sequence listing and/or table is filed using CD-R or CD-ROM as the electronic medium, and where no paper copy of the sequence listing part is submitted. The application must be filed in accordance with the Guidelines set forth in MPEP § 1823.02 , subsection II. A in order to be accepted. There may be significant cost savings if such a submission is accepted. If accepted under the USPTO’s Guidelines, the electronic submission counts as 400 sheets in addition to the actual number of sheets of the Request, description excluding the sequence listing part thereof, claims, abstract and drawings. Four copies of the electronic submission of the sequence listing are required. One copy goes to the IB as part of the Record copy; the second copy becomes part of the Home copy; the third copy becomes part of the Search copy; and the fourth copy goes to the Scientific and Technical Information Center (STIC) as the electronic form (also known as the computer readable form (CRF). Three copies of the electronic submission of any table related to the sequence listing are required. One copy goes to the IB as part of the record copy; the second copy becomes part of the home copy; the third copy becomes part of the search copy. See MPEP §  1823.02.

1850    Unity of Invention Before the International Searching Authority [R-08.2012]

PCT Rule 13

Unity of Invention

13.1. Requirement

The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”).

13.2. Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled

Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

13.3. Determination of Unity of Invention Not Affected by Manner of Claiming

The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.

13.4. Dependent Claims

Subject to Rule 13.1 , it shall be permitted to include in the same international application a reasonable number of dependent claims, claiming specific forms of the invention claimed in an independent claim, even where the features of any dependent claim could be considered as constituting in themselves an invention.

13.5. Utility Models

Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 13.1 to 13.4 , apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the processing of the international application has started in that State, provided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.

PCT Rule 40

Lack of Unity of Invention (International Search)

40.1 Invitation to Pay Additional Fees; Time Limit

The invitation to pay additional fees provided for in Article 17 (3)(a) shall:

  • (i) specify the reasons for which the international application is not considered as complying with the requirement of unity of invention;
  • (ii) invite the applicant to pay the additional fees within one month from the date of the invitation, and indicate the amount of those fees to be paid; and
  • (iii) invite the applicant to pay, where applicable, the protest fee referred to in Rule 40.2 (e) within one month from the date of the invitation, and indicate the amount to be paid.

40.2. Additional Fees

  • (a) The amount of the additional fees due for searching under Article 17 (3)(a) shall be determined by the competent International Searching Authority.
  • (b) The additional fees due for searching under Article 17 (3)(a) shall be payable direct to the International Searching Authority.
  • (c) Any applicant may pay the additional fees under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required additional fees is excessive. Such protest shall be examined by a review body constituted in the framework of the International Searching Authority, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fees. On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the designated Offices together with the international search report. The applicant shall submit any translation thereof with the furnishing of the translation of the international application required under Article 22 .
  • (d) The membership of the review body referred to in paragraph (c) may include, but shall not be limited to, the person who made the decision which is the subject of the protest.
  • (e) The examination of a protest referred to in paragraph (c) may be subjected by the International Searching Authority to the payment to it, for its own benefit, of a protest fee. Where the applicant has not, within the time limit under Rule 40.1 (iii), paid any required protest fee, the protest shall be considered not to have been made and the International Searching Authority shall so declare. The protest fee shall be refunded to the applicant where the review body referred to in paragraph (c) finds that the protest was entirely justified.

37 C.F.R. 1.475  Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.

  • (a) An international and a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
  • (b) An international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
    • (1) A product and a process specially adapted for the manufacture of said product; or
    • (2) A product and a process of use of said product; or
    • (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
    • (4) A process and an apparatus or means specifically designed for carrying out the said process; or
    • (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
  • (c) If an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention might not be present.
  • (d) If multiple products, processes of manufacture or uses are claimed, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the main invention in the claims, see PCT Article 17(3)(a) and § 1.476(c).
  • (e) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.

I.   THE REQUIREMENT FOR “UNITY OF INVENTION”

Any international application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept ( PCT Article 3(4)(iii) and 17(3)(a) , PCT Rule13.1 , and 37 CFR 1.475 ). Observance of this requirement is checked by the International Searching Authority and may be relevant in the national (or regional) phase.

The decision in Caterpillar Tractor Co. v . Commissioner of Patents and Trademarks , 650 F. Supp. 218, 231 USPQ 590 (E.D. Va. 1986) held that the Patent and Trademark Office interpretation of 37 CFR 1.141(b) (2) as applied to unity of invention determinations in international applications was not in accordance with the Patent Cooperation Treaty and its implementing regulations. In the Caterpillar international application, the USPTO acting as an International Searching Authority, had held lack of unity of invention between a set of claims directed to a process for forming a sprocket and a set of claims drawn to an apparatus (die) for forging a sprocket. The court stated that it was an unreasonable interpretation to say that the expression “specifically designed” as found in former PCT Rule 13.2(ii) means that the process and apparatus have unity of invention if they can only be used with each other, as was set forth in MPEP §806.05(e) .

Therefore, when the Office considers international applications as an International Searching Authority, as an International Preliminary Examining Authority, and during the national stage as a Designated or Elected Office under 35 U.S.C. 371 , PCT Rule 13.1 and 13.2 will be followed when considering unity of invention of claims of different categories without regard to the practice in national applications filed under 35 U.S.C. 111 . No change was made in restriction practice in United States national applications filed under 35 U.S.C. 111 outside the PCT.

In applying PCT Rule 13.2 to international applications as an International Searching Authority, an International Preliminary Examining Authority and to national stage applications under 35 U.S.C. 371 , examiners should consider for unity of invention all the claims to different categories of invention in the application and permit retention in the same application for searching and/or preliminary examination, claims to the categories which meet the requirements of PCT Rule 13.2 .

PCT Rule 13.2 , as it was modified effective July 1, 1992, no longer specifies the combinations of categories of invention which are considered to have unity of invention. Those categories, which now appear as a part of Chapter 10 of the International Search and Preliminary Examination Guidelines, may be obtained from the Patent Examiner’s Toolkit link or from WIPO’s website (www.wipo.int/pct/en/texts/gdlines.htm). The categories of invention in former PCT Rule 13.2 have been replaced with a statement describing the method for determining whether the requirement of unity of invention is satisfied. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more special technical features. The term “special technical features” is defined as meaning those technical features that define a contribution which each of the inventions considered as a whole, makes over the prior art. The determination is made based on the contents of the claims as interpreted in light of the description and drawings. Chapter 10 of the International Search and Preliminary Examination Guidelines also contains examples concerning unity of invention.

II.   DETERMINATION OF “UNITY OF INVENTION”

An international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (PCT Rule 13.1 ). With respect to a group of inventions claimed in an international application, unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” is defined in PCT Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. The determination is made on the contents of the claims as interpreted in light of the description and drawings (if any).

Whether or not any particular technical feature makes a “contribution” over the prior art, and therefore constitutes a “special technical feature,” should be considered with respect to novelty and inventive step. For example, a document discovered in the international search shows that there is a presumption of lack of novelty or inventive step in a main claim, so that there may be no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept.

Lack of unity of invention may be directly evident “ a priori ,” that is, before considering the claims in relation to any prior art, or may only become apparent “ a posteriori ,” that is, after taking the prior art into consideration. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori , since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art.

Although lack of unity of invention should certainly be raised in clear cases, it should neither be raised nor maintained on the basis of a narrow, literal or academic approach. There should be a broad, practical consideration of the degree of interdependence of the alternatives presented, in relation to the state of the art as revealed by the international search or, in accordance with PCT Article 33 (6), by any additional document considered to be relevant. If the common matter of the independent claims is well known and the remaining subject matter of each claim differs from that of the others without there being any unifying novel inventive concept common to all, then clearly there is lack of unity of invention. If, on the other hand, there is a single general inventive concept that appears novel and involves inventive step, then there is unity of invention and an objection of lack of unity does not arise. For determining the action to be taken by the examiner between these two extremes, rigid rules cannot be given and each case should be considered on its merits, the benefit of any doubt being given to the applicant.

From the preceding paragraphs it is clear that the decision with respect to unity of invention rests with the International Searching Authority or the International Preliminary Examining Authority. However, the International Searching Authority or the International Preliminary Examining Authority should not raise objection of lack of unity of invention merely because the inventions claimed are classified in separate classification groups or merely for the purpose of restricting the international search to certain classification groups.

Unity of invention has to be considered in the first place only in relation to the independent claims in an international application and not the dependent claims. By “dependent” claim is meant a claim which contains all the features of one or more other claims and contains a reference, preferably at the beginning, to the other claim or claims and then states the additional features claimed (PCT Rule 6.4 ). The examiner should bear in mind that a claim may also contain a reference to another claim even if it is not a dependent claim as defined in PCT Rule 6.4 . One example of this is a claim referring to a claim of a different category (for example, “Apparatus for carrying out the process of Claim 1 ...,” or “Process for the manufacture of the product of Claim 1 ...”). Similarly, a claim to one part referring to another cooperating part, for example, “plug for cooperation with the socket of Claim 1 ...”) is not a dependent claim.

If the independent claims avoid the prior art and satisfy the requirement of unity of invention, no problem of lack of unity arises in respect of any claims that depend on the independent claims. In particular, it does not matter if a dependent claim itself contains a further invention. For example, suppose claim 1 claims a turbine rotor blade shaped in a specified manner such that it avoids the prior art, while claim 2 is for a “turbine rotor blade as claimed in claim 1” and produced from alloy Z. Then no objection under PCT Rule 13 arises either because alloy Z was new and its composition was not obvious and thus the alloy itself already contains the essential features of an independent possibly later patentable invention, or because, although alloy Z was not new, its application in respect of turbine rotor blades was not obvious, and thus represents an independent invention in conjunction with turbine rotor blades. As another example, suppose that the main claim defines a process avoiding the prior art for the preparation of a product A starting from a product B and the second claim reads: “Process according to claim 1 characterized by producing B by a reaction using the product C.” In this case, too, no objection arises under PCT Rule 13 , whether or not the process for preparation of B from C is novel and inventive, since claim 2 contains all the features of claim 1. Equally, no problem arises in the case of a genus/species situation where the genus claim avoids the prior art, provided the genus claim is directed only to alternatives of a similar nature and the species falls entirely within the genus. To determine if a genus claim is directed only to alternatives “of a similar nature,” see subsection III.B. below. Moreover, no problem arises in the case of a combination/subcombination situation where the subcombination claim avoids the prior art and the combination claim includes all the features of the subcombination.

If, however, an independent claim does not avoid the prior art, then the question whether there is still an inventive link between all the claims dependent on that claim needs to be carefully considered. If there is no link remaining, an objection of lack of unity a posteriori (that is, arising only after assessment of the prior art) may be raised. Similar considerations apply in the case of a genus/species or combination/subcombination situation.

This method for determining whether unity of invention exists is intended to be applied even before the commencement of the international search. Where a search of the prior art is made, an initial determination of unity of invention, based on the assumption that the claims avoid the prior art, may be reconsidered on the basis of the results of the search of the prior art.

Alternative forms of an invention may be claimed either in a plurality of independent claims, or in a single claim. In the latter case, the presence of the independent alternatives may not be immediately apparent. In either case, however, the same criteria should be applied in deciding whether there is unity of invention. Accordingly, lack of unity of invention may exist within a single claim. Where the claim contains distinct embodiments that are not linked by a single general inventive concept, the objection as to lack of unity of invention should be raised. PCT Rule 13.3does not prevent an Authority from objecting to alternatives being contained within a single claim on the basis of considerations such as clarity, the conciseness of claims or the claims fee system applicable in that Authority.

Objection of lack of unity of invention does not normally arise if the combination of a number of individual elements is claimed in a single claim (as opposed to distinct embodiments as discussed in the paragraph immediately above), even if these elements seem unrelated when considered individually.

III.   ILLUSTRATIONS OF PARTICULAR SITUATIONS

There are three particular situations for which the method for determining unity of invention contained in PCT Rule 13.2 is explained in greater detail:

  • (A) Combinations of different categories of claims;
  • (B) So-called “Markush practice”; and
  • (C) Intermediate and final products.

Principles for the interpretation of the method contained in PCT Rule 13.2 , in the context of each of those situations are set out below. It is understood that the principles set out below are, in all instances, interpretations of and not exceptions to the requirements of PCT Rule 13.2 .

Examples to assist in understanding the interpretation on the three areas of special concern referred to in the preceding paragraph are set out in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link or from WIPO’s web site (www.wipo.int/pct/en/texts/gdlines.htm).

A.   Combinations of Different Categories of Claims

The method for determining unity of invention under PCT Rule 13 shall be construed as permitting, in particular, the inclusion of any one of the following combinations of claims of different categories in the same international application:

  • (A) In addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for a use of the said product; or
  • (B) In addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the said process; or
  • (C) In addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product and an independent claim for an apparatus or means specifically designed for carrying out the said process.

A process is specially adapted for the manufacture of a product if it inherently results in the product and an apparatus or means is specifically designed for carrying out a process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.

Thus, a process shall be considered to be specially adapted for the manufacture of a product if the claimed process inherently results in the claimed product with the technical relationship being present between the claimed product and claimed process. The words “specially adapted” are not intended to imply that the product could not also be manufactured by a different process.

Also an apparatus or means shall be considered to be specifically designed for carrying out a claimed process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art. Consequently, it would not be sufficient that the apparatus or means is merely capable of being used in carrying out the claimed process. However, the expression “specifically designed” does not imply that the apparatus or means could not be used for carrying out another process, nor that the process could not be carried out using an alternative apparatus or means.

More extensive combinations than those set forth above should be looked at carefully to ensure that the requirements of both PCT Rule 13 (unity of invention) and PCT Article 6 (conciseness of claims) are satisfied. In particular, while a single set of independent claims according to one of (A), (B), or (C) above is always permissible, it does not require the International Authority to accept a plurality of such sets which could arise by combining the provisions of PCT Rule 13.3 (which provides that the determination of unity of invention be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim), with the provisions set out above (thus resulting in a set based on each of a number of independent claims in the same category under PCT Rule 13.3 ). The proliferation of claims arising from a combined effect of this kind should be accepted only exceptionally. For example, independent claims are permissible for two related articles such as a transmitter and receiver; however, it does not follow that an applicant may include also, in the one international application, four additional independent claims: two for a process for the manufacture of the transmitter and the receiver, respectively, and two for use of the transmitter and receiver, respectively.

A single general inventive concept must link the claims in the various categories and in this connection the wording above should be carefully noted. The link between product and process in (A) is that the process must be “specially adapted for the manufacture of” the product. Similarly, in (B), the apparatus or means claimed must be “specifically designed for” carrying out the process. Likewise, in (C), the process must be “specially adapted for the manufacture of” the product and the apparatus must be “specifically designed for” carrying out the process. In combinations (A) and (C), the emphasis is on, and the essence of the invention should primarily reside in, the product, whereas in combination (B) the emphasis is on, and the invention should primarily reside in, the process. (See Examples in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link or from WIPO’s web site (www.wipo.int/pct/en/texts/gdlines.htm.))

B.   “Markush Practice”

The situation involving the so-called Markush practice wherein a single claim defines alternatives (chemical or non-chemical) is also governed by PCT Rule 13.2 . In this special situation, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in PCT Rule 13.2 , shall be considered to be met when the alternatives are of a similar nature.

When the Markush grouping is for alternatives of chemical compounds, they shall be regarded as being of a similar nature where the following criteria are fulfilled:

  • (A) All alternatives have a common property or activity; and
  • (B)
    • (1) A common structure is present, i.e., a significant structural element is shared by all of the alternatives; or
  • (B)
    • (2) In cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.

In paragraph (B)(1), above, the words “significant structural element is shared by all of the alternatives” refer to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity. The structural element may be a single component or a combination of individual components linked together.

In paragraph (B)(2), above, the words “recognized class of chemical compounds” mean that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved.

The fact that the alternatives of a Markush grouping can be differently classified should not, taken alone, be considered to be justification for a finding of a lack of unity of invention.

When dealing with alternatives, if it can be shown that at least one Markush alternative is not novel over the prior art, the question of unity of invention should be reconsidered by the examiner. Reconsideration does not necessarily imply that an objection of lack of unity shall be raised. (See Examples in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link or from WIPO’s web site (www.wipo.int/pct/en/texts/gdlines.htm.))

C.   Intermediate and Final Products

The situation involving intermediate and final products is also governed by PCT Rule 13.2 .

The term “intermediate” is intended to mean intermediate or starting products. Such products have the ability to be used to produce final products through a physical or chemical change in which the intermediate loses its identity.

Unity of invention shall be considered to be present in the context of intermediate and final products where the following two conditions are fulfilled:

  • (A) The intermediate and final products have the same essential structural element, in that:
    • (1) The basic chemical structures of the intermediate and the final products are the same, or
    • (2) The chemical structures of the two products are technically closely interrelated, the intermediate incorporating an essential structural element into the final product; and
  • (B) The intermediate and final products are technically interrelated, this meaning that the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element.

Unity of invention may also be considered to be present between intermediate and final products of which the structures are not known, for example, as between an intermediate having a known structure and a final product the structure of which is not known, or as between an intermediate of unknown structure and a final product of unknown structure. In order to satisfy unity in such cases, there must be sufficient evidence to lead one to conclude that the intermediate and final products are technically closely interrelated as, for example, when the intermediate contains the same essential element as the final product or incorporates an essential element into the final product.

It is possible to accept in a single international application different intermediate products used in different processes for the preparation of the final product, provided that they have the same essential structural element.

The intermediate and final products shall not be separated, in the process leading from one to the other, by an intermediate which is not new.

If the same international application claims different intermediates for different structural parts of the final product, unity shall not be regarded as being present between the intermediates.

If the intermediate and final products are families of compounds, each intermediate compound shall correspond to a compound claimed in the family of the final products. However, some of the final products may have no corresponding compound in the family of the intermediate products so that the two families need not be absolutely congruent.

As long as unity of invention can be recognized applying the above interpretations, the fact that, besides the ability to be used to produce final products, the intermediates also exhibit other possible effects or activities shall not affect the decision on unity of invention. (See Examples in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link or from WIPO’s web site (www.wipo.int/pct/en/texts/gdlines.htm.))

IV.   SEARCH OF ADDITIONAL INVENTIONS WITHOUT PAYMENT OF FEES

If little or no additional search effort is required, reasons of economy may make it advisable for the examiner, while making the search for the main invention, to search at the same time, despite the nonpayment of additional fees, one or more additional inventions in the classification units consulted for the main invention. The international search for such additional inventions will then have to be completed in any further classification units which may be relevant, when the additional search fees have been paid. This situation may occur when the lack of unity of invention is found either “ a priori ” or “ a posteriori .”

When the examiner finds lack of unity of invention, normally, the applicant is invited to pay fees for the search of additional inventions. In exceptional circumstances, however, the examiner may be able to establish both an international search (and for international applications having a filing date on or after January 1, 2004, a written opinion) covering more than one invention with negligible additional work, in particular, when the inventions are conceptually very close. In those cases, the examiner may decide to complete the international search (and where applicable, the written opinion of the International Searching Authority) for the additional invention(s) together with that for the invention first mentioned. For international applications having a filing date on or after January 1, 2004, in considering the amount of work involved, the examiner should take into account the time needed to create the written opinion as well as that needed to perform the search, since even when the additional work with regard to the search is negligible, the opposite may be the case for the written opinion of the International Searching Authority and therefore justify requesting the additional fees. If it is considered that the total additional work does not justify requesting additional fees, all results are included in the international search report (and where applicable, the written opinion) without inviting the applicant to pay an additional search fee in respect of the additional inventions searched but stating the finding of lack of unity of invention.

V.   INVITATION TO PAY ADDITIONAL FEES

The search fee which the applicant is required to pay is intended to compensate the International Searching Authority for carrying out an international search (and for international applications having a filing date on or after January 1, 2004, for preparing a written opinion), but only where the international application meets the “requirement of unity of invention”. That means that the international application must relate to only one invention or must relate to a group of inventions which are so linked as to form a single general inventive concept ( PCT Articles 3(4)(iii) and17(3)(a) ).

If the International Searching Authority finds that the international application does not comply with the requirement of unity of invention, the applicant will be informed of the lack of unity of invention by a communication preceding the issuance of the international search report (and for international applications having a filing date on or after January 1, 2004, a written opinion of the International Searching Authority), which contains an invitation to pay additional search fees. (Form PCT/ISA/206 or USPTO/299 (telephone practice), see below). This invitation specifies the reasons the international application is not considered to comply with the requirement of unity of invention, identifies the separate inventions, and indicates the number of additional search fees and the amount to be paid (PCT Rules 40.1 , 40.2 (a) and (b)). The International Searching Authority cannot consider the application withdrawn for lack of unity of invention, nor invite the applicant to amend the claims, but informs the applicant that, if the international search report is to be drawn up in respect of those inventions present other than the first mentioned, then the additional fees must be paid within one month from the date of the invitation to pay additional fees (PCT Rule 40.1 ). Such additional fees are payable directly to the International Searching Authority which is conducting the search, i.e., the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), or the Korean Intellectual Property Office (KIPO). The search fee amounts for the USPTO, EPO, and KIPO are found in each weekly edition of the Official Gazette .

In the invitation to pay additional fees, the International Searching Authority should set out a logically presented, technical reasoning containing the basic considerations behind the finding of lack of unity (PCT Rule 40.1 ).

Since these payments must take place within the time limit set by the International Searching Authority so as to enable the observation of the time limit for establishing the international search report set by PCT Rule 42 , the International Searching Authority should endeavor to ensure that international searches be made as early as possible after the receipt of the search copy. The International Searching Authority finally draws up the international search report (and for international applications having a filing date on or after January 1, 2004, the written opinion of the International Searching Authority) on those parts of the international application which relate to the “main invention,” that is, the invention or the group of inventions so linked as to form a single general inventive concept first mentioned in the claims ( PCT Article 17(3)(a) ). Moreover, the international search report (and for international applications having a filing date on or after January 1, 2004, the written opinion of the International Searching Authority) will be established also on those parts of the international application which relate to any invention (or any group of inventions so linked as to form a single general inventive concept) in respect of which the applicant has paid any additional fee within the prescribed time limits.

Where, within the prescribed time limit, the applicant does not pay any additional fees or only pays some of the additional fees indicated, certain parts of the international application will consequently not be searched. The lack of an international search report in respect of such parts of the international application will, in itself, have no influence on the validity of the international application and processing of the international application will continue, both in the international and in the national (regional) phases. The unsearched claims, upon entry into the national stage, will be considered by the examiner and may be the subject of a holding of lack of unity of invention.

VI.   PREPARATION OF THE INVITATION TO PAY ADDITIONAL FEES

An Invitation to Pay Additional Fees and, Where Applicable, Protest Fee (Form PCT/ISA/206) is used to invite the applicant to pay additional search fees. In the space provided on form PCT/ISA/206, the examiner should indicate the number of inventions claimed in the international application covering which particular claims and explain why the international application is not considered to comply with the requirements of unity of invention. The examiner should then indicate the total amount of additional fees required for the search of all claimed inventions.

Any claims found to be unsearchable under PCT Article 17 (2)(b) are not included with any invention. Unsearchable claims include the following:

  • (A) claims drawn to subject matter not required to be searched by the International Searching Authority (see MPEP § 1843.02 );
  • (B) claims in respect of which a meaningful search cannot be carried out (see MPEP § 1843.03 );
  • (C) multiple dependent claims which do not comply with PCT Rule 6.4 (a) (see MPEP § 1843.03 ).

In the box provided at the top of the form, the time limit of one month for response is set according to PCT Rule 40.1 . Extensions of time are not permitted.

VII.   AUTHORIZED OFFICER

Form PCT/ISA/206 must be signed by an examiner with at least partial signatory authority.

VIII.   TELEPHONIC UNITY PRACTICE

Telephone practice may be used to allow applicants to pay additional fees if

  • (A) Applicant or applicant’s legal representative has a USPTO deposit account,
  • (B) Applicant or the legal representative orally agrees to charge the additional fees to the account, and
  • (C) A complete record of the telephone conversation is included with the international search report including:
    • (1) Examiner’s name;
    • (2) Authorizing attorney’s name;
    • (3) Date of conversation;
    • (4) Inventions for which additional fees paid; and
    • (5) Deposit account number and amount to be charged.

When the telephone practice is used in making lack of unity requirements, it is critical that the examiner orally inform applicant that there is no right to protest the holding of lack of unity of invention for any group of invention(s) for which no additional search fee has been paid.

The examiner must further orally advise applicant that any protest to the holding of lack of unity or the amount of additional fee required must be filed in writing no later than one month from the mailing date of the international search report. The examiner should fill in the information on Form USPTO/299 “Chapter I PCT Telephone Memorandum for Lack of Unity” as a record of the telephonic holding of lack of unity.

If the applicant or the legal representative or agent refuses to either agree to a search limited to the first mentioned invention or authorize payment of additional fees over the telephone, or if applicant does not have a deposit account, the examiner should send a written invitation using Form PCT/ISA/206.

If a written invitation is required, the examiner should, if possible, submit the written invitation to the Technology Center for review and mailing within 7 days from the date the international application is charged to the examiner.

IX.   FORM PARAGRAPHS FOR LACK OF UNITY IN INTERNATIONAL APPLICATIONS

¶ 18.05    Heading for Lack of Unity Action for PCT Applications During the International Phase (Including Species)

REQUIREMENT FOR UNITY OF INVENTION

As provided in 37 CFR 1.475(a), an international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an international application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).

When Claims Are Directed to Multiple Processes, Products, and/or Apparatuses:

Products, processes of manufacture, processes of use, and apparatuses are different categories of invention. When an application includes claims to more than one product, process, or apparatus, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the “main invention” in the claims. In the case of non-compliance with unity of invention and where no additional fees are timely paid, the international search and/or international preliminary examination, as appropriate, will be based on the main invention in the claims. See PCT Article 17(3)(a)37 CFR 1.475(d)37 CFR 1.476(c) and 37 CFR 1.488(b)(3).

As provided in 37 CFR 1.475(b), an international application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:

  • (1) A product and a process specially adapted for the manufacture of said product; or
  • (2) A product and process of use of said product; or
  • (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
  • (4) A process and an apparatus or means specifically designed for carrying out the said process; or
  • (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.

Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).

This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.

Examiner Note:

1. Begin all Lack of Unity actions for PCT applications during the international phase (including species) with this heading.

2. Follow with form paragraphs 18.06 - 18.06.0218.07 - 18.07.03, as appropriate.

3. Use form paragraph 18.18 for lack of unity in U.S. national stage applications submitted under 35 U.S.C. 371 .

¶ 18.06    Lack of Unity - Three Groups of Claims

Group [1], claim(s) [2], drawn to [3].

Group [4], claim(s) [5], drawn to [6].

Group [7], claim(s) [8], drawn to [9].

Examiner Note:

1. In brackets 1, 4 and 7, insert Roman numerals for each Group.

2. In brackets 2, 5 and 8, insert respective claim numbers.

3. In brackets 3, 6 and 9, insert respective names of grouped inventions.

¶ 18.06.01    Lack of Unity - Two (or Additional) Groups of Claims

Group [1], claim(s) [2], drawn to [3].

Group [4], claim(s) [5], drawn to [6].

Examiner Note:

This form paragraph may be used alone or following form paragraph 18.06.

¶ 18.06.02    Lack of Unity - One Additional Group of Claims

Group [1], claim(s) [2], drawn to [3].

Examiner Note:

This form paragraph may be used following either form paragraph 18.06 or 18.06.01.

¶ 18.07    Lack of Unity - Reasons Why Inventions Lack Unity

The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:

Examiner Note:

Follow with form paragraphs 18.07.01 through 18.07.03, as appropriate.

¶ 18.07.01    Same or Corresponding Technical Feature Lacking Among Groups

[1] lack unity of invention because the groups do not share the same or corresponding technical feature.

Examiner Note:

1. This form paragraph may be used, for example, where the claims of Group I are directed to A + B, whereas the claims of Group II are directed to C + D, and thus the groups do not share a technical feature.

2. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions have been grouped using form paragraphs 18.06 - 18.06.02, or identify the species involved where species have been listed using form paragraph 18.20.

¶ 18.07.02    Shared Technical Feature Does Not Make a Contribution Over the Prior Art

[1] lack unity of invention because even though the inventions of these groups require the technical feature of [2], this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of [3][4]

Examiner Note:

1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions have been grouped using form paragraphs 18.06 - 18.06.02, or identify the species involved where species have been listed using form paragraph 18.20.

2. In bracket 2, identify the technical feature shared by the groups.

3. In bracket 3, insert citation of prior art reference(s) demonstrating the shared technical feature does not make a contribution over the prior art. Whether a particular technical feature makes a "contribution" over the prior art, and, therefore, constitutes a "special technical feature," is considered with respect to novelty and inventive step.

4. In bracket 4, explain how the shared technical feature lacks novelty or inventive step in view of the reference(s).

¶ 18.07.03    Heading – Chemical Compound Alternatives of Markush Group Are Not of a Similar Nature

Where a single claim defines alternatives of a Markush group, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2, is considered met when the alternatives are of a similar nature. When the Markush grouping is for alternatives of chemical compounds, the alternatives are regarded as being of a similar nature where the following criteria are fulfilled:

  • (A) all alternatives have a common property or activity; AND
  • (B)
    • (1) a common structure is present, that is, a significant structural element is shared by all of the alternatives; OR
  • (B)
    • (2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.

The phrase “significant structural element is shared by all of the alternatives” refers to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity.

The phrase “recognized class of chemical compounds” means that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention, i.e. each member could be substituted one for the other, with the expectation that the same intended result would be achieved.

Examiner Note:

1. This heading should be used when the chemical alternatives of a Markush group are determined to lack unity of invention.

2. Follow with form paragraphs listed using form paragraphs 18.07.03a - 18.07.03c, as appropriate.

¶ 18.07.03a    Alternatives Lack Common Property or Activity

The chemical compounds of [1] are not regarded as being of similar nature because all of the alternatives do not share a common property or activity. [2]

Examiner Note:

1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20.

2. In bracket 2, insert reasoning.

¶ 18.07.03b    Alternatives Share a Common Structure - However, the Common Structure is Not a Significant Structural Element and the Alternatives Do Not Belong to a Recognized Class

Although the chemical compounds of [1] share a common structure of [2], the common structure is not a significant structural element because it represents only a small portion of the compound structures and does not constitute a structurally distinctive portion in view of [3]. Further, the compounds of these groups do not belong to a recognized class of chemical compounds. [4]

Examiner Note:

1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20.

2. In bracket 2, identify common structure.

3. In bracket 3, insert citation of prior art reference(s) relied upon to demonstrate the commonly shared structure is not distinctive.

4. In bracket 4, explain why the compounds do not belong to a recognized class of chemical compounds.

¶ 18.07.03c    Alternatives Do Not Share a Common Structure or Belong to Recognized Class

The chemical compounds of [1] are not regarded as being of similar nature because: (1) all the alternatives do not share a common structure and (2) the alternatives do not all belong to a recognized class of chemical compounds. [2]

Examiner Note:

1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20.

2. In bracket 2, insert reasoning.

X.   PROTEST PROCEDURE

PCT Administrative Instruction Section 502

Transmittal of Protest Against Payment of Additional Fees and Decision Thereon Where International Application Is Considered to Lack Unity of Invention

The International Searching Authority shall transmit to the applicant, preferably at the latest together with the international search report, any decision which it has taken under Rule 40.2 (c) on the protest of the applicant against payment of additional fees where the international application is considered to lack unity of invention. At the same time, it shall transmit to the International Bureau a copy of both the protest and the decision thereon, as well as any request by the applicant to forward the texts of both the protest and the decision thereon to the designated Offices.

37 C.F.R. 1.477  Protest to lack of unity of invention before the International Searching Authority.

  • (a) If the applicant disagrees with the holding of lack of unity of invention by the International Searching Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered excessive, or both (PCT Rule 40.2 (c)).
  • (b) Protest under paragraph (a) of this section will be examined by the Director or the Director’s designee. In the event that the applicant’s protest is determined to be justified, the additional fees or a portion thereof will be refunded.
  • (c) An applicant who desires that a copy of the protest and the decision thereon accompany the international search report when forwarded to the Designated Offices may notify the International Searching Authority to that effect any time prior to the issuance of the international search report. Thereafter, such notification should be directed to the International Bureau ( PCT Rule 40.2 (c)).

The applicant may protest the allegation of lack of unity of invention or that the number of required additional fees is excessive and request a refund of the additional fee(s) paid. If, and to the extent that, the International Searching Authority finds the protest justified, the fee(s) are refunded (PCT Rule 40.2 (c)). (The additional search fees must be paid for any protest to be considered.)

Protest of allegation of lack of unity is in the form of a reasoned statement accompanying payment of the additional fee, explaining why the applicant believes that the requirements of unity of invention are fulfilled and fully taking into account the reasons indicated in the invitation to pay additional fees issued by the International Searching Authority. Any such protest filed with the U.S. International Searching Authority will be decided by a Technology Center Director (MPEP § 1002.02 (c) item (2)). To the extent applicant’s protest is found to be justified, total or partial reimbursement of the additional fee will be made. On the request of the applicant, the text of both the protest and the decision thereon is sent to the designated Offices together with the international search report (37 CFR 1.477 (c)).

XI.   NOTIFICATION OF DECISION ON PROTEST

A Notification of Decision of Protest or Declaration That Protest Considered Not to Have Been Made (Form PCT/ISA/212) is used by the Technology Center (TC) to inform the applicant of the decision regarding applicant’s protest on the payment of additional fees concerning unity of invention. The TC checks the appropriate box, i.e., 1 or 2. If box 2 is checked, a clear and concise explanation as to why the protest concerning the unity of invention was found to be unjustified must be given. Since the space is limited, supplemental attachment sheet(s) should be incorporated whenever necessary.

XII.   AUTHORIZED OFFICER

Form PCT/ISA/212 must be signed by a TC Director. See MPEP § 1002.02 (c), item (2).

XIII.   UNITY OF INVENTION - NUCLEOTIDE SEQUENCES

Under 37 CFR 1.475 and 1.499 et seq ., when claims do not comply with the requirement of unity of invention, i.e., when the claimed subject matter does not involve “one or more of the same or corresponding special technical features,” 37 CFR 1.475(a) , an additional fee is required to maintain the claims in the same application. 37 CFR 1.476 (b).

Nucleotide sequences encoding the same protein are considered to satisfy the unity of invention standard and will continue to be examined together.

Examples concerning Unity of Invention involving biotechnological inventions may be found in Chapter 10 of the International Search and Preliminary Examination Guidelines which can be obtained from the Patent Examiner’s Toolkit link or from the WIPO’s web site (www.wipo.int/pct/en/texts/gdlines.htm).

1851    Identification of Patent Documents [R-08.2012]

The examiner, in completing the international search report as well as the written opinion and international preliminary examination report, is required to cite the references in accordance with the provisions of Administrative Instructions Sections 503 and 611 and WIPO Standard ST.14 . These sections of the Administrative Instructions require reference citations to include, in addition to other information which is apparent from the forms which the examiner fills out, an indication of the two-letter country code of the country or entity issuing or publishing the document and the standard code for identifying the kind of patent document. The discussion which follows is limited to the identification of patent documents (and nonpatent publications) and a listing of the two-letter country codes for countries or other entities which issue or publish industrial property information.

The standard codes for identifying different kinds of patent documents are found in the “WIPO Handbook on Industrial Property Information and Documentation” - WIPO Standard ST.16 which is published by the World Intellectual Property Organization. The listing is extensive. The Special Program Examiners in each Technology Center (TC) have a complete copy of Standard ST.16. It is also accessible on WIPO’s web site (www.wipo.int/scit/en/standards/standards.htm). Provided herein is an abbreviated version representing the countries and codes commonly used by the examiner in preparing search reports.

U.S. patents published before January 2, 2001, are Code A documents generally. Beginning with patents published on January 2, 2001, U.S. patents are Code B documents. Patent Application Publications, first published on March 15, 2001, are Code A documents. Reexamination certificates published before January 2, 2001, are Code B documents. Reexamination certificates published on or after January 2, 2001, are Code C documents. Tables providing a complete list of the kind codes of patents and other documents published by the USPTO are included in MPEP §  901.04(a) . All nonpatent literature documents are Code N. Numerical designations are sometimes found on published documents along with the letter code designation. These should be used by the examiner only if such numerical designation is on the document. Numerical codes along with letter codes can be found, for example, on certain published patent documents such as the German Offenlegungsschrift and published international applications. If numerical designations are not provided, the examiner should use only the letter code designation.

The most commonly cited documents are patents and published patent applications. A guideline for the citation of such documents is listed below. The listing is indicated in the order in which the elements should be listed.

In the case of a patent or published patent application:

  • (A) The Office that issued the document, by the two letter code (WIPO Standard ST.3);
  • (B) The number of the document as given to it by the Office that issued it (for Japanese patent documents the indication of the year of the reign of the Emperor must precede the serial number of the patent document);
  • (C) The kind of document, by the appropriate symbols as indicated on the document under WIPO Standard ST.16 or, if not indicated on that document, as provided in that Standard, if possible;
  • (D) The name of the patentee or applicant (in capital letters, where appropriate, abbreviated);
  • (E) The date of publication of the cited patent document or, in case of a corrected patent document, the date of issuance of the corrected patent document as referred to under INID code (48) of WIPO Standard ST.9 and, if provided on the document, the supplementary correction code as referred to under INID code (15);
  • (F) Where applicable, the pages, columns, lines or paragraph numbers where the relevant passages appear, or the relevant figures of the drawings.

The following examples illustrate the citation of a patent document as indicated above:

JP 10-105775 A (NCR INTERNATIONAL INC.) 24 April 1998 (24.04.1998) paragraphs 26 to 30.

DE 3744403 A1 (JOSEK, A.) 29 August 1991 (29-08-1991), page 1, abstract.

US 5,635,683 A (MCDERMOTT, R. M. et al.) 03 June 1997 (03/06/1997), column 7, lines 21 to 40.

  STANDARD CODE FOR THE IDENTIFICATION OF DIFFERENT KINDS OF PATENT DOCUMENTS

The Code, WIPO Standard ST.16, is subdivided into mutually exclusive groups of letters. The groups characterize patent documents, nonpatent literature documents (N), and restricted documents (X). Groups 1-7 comprise letters enabling identification of documents pertaining to different publication levels.

 
Group 1 Use for documents resulting from a patent application and being identified as the primary or major series (excluding the utility model documents of Group 2 and the special series of patent documents of Group 3, below)
A First publication level
B Second publication level
C   Third publication level
 
Group 2 Use for utility model documents having a numbering series other than the documents of Group 1
U First publication level
Y Second publication level
Z   Third publication level
 
Group 3 Use for special series of patent documents
M Medicament patent documents (e.g., documents previously published by FR)
P Plant patent documents (e.g., published by US)
S   Design patent documents (e.g., published by US)
 
Group 4 Use for special types of patent documents or documents derived from/relating to patent applications and not covered by Groups 1 to 3 above, as specified below:
L Documents, not covered by letter code W, relating to patent documents and containing bibliographic information and only the text of an abstract and/or claim(s) and, where appropriate, a drawing.
R Separately published search reports
T Publication, for information or other purposes, of the translation of the whole or part of a patent document already published by another office or organization
W   Documents relating to utility model documents falling in Group 2 and containing bibliographic information and only the text of an abstract and/or claim(s) and, where appropriate, a drawing
 
Group 5 Use for series of patent documents not covered by Groups 1 to 4, above
E First publication level
F Second publication level
G   Third publication level
 
Group 6 Use for series of patent documents or documents derived from/relating to patent applications not covered by Groups 1 to 5 above, according to the special requirements of each industrial property office
H  
I    
 
Group 7 Other
N Non-patent literature documents
X   Documents restricted to the internal use of industrial property offices

  List of Examples of Patent Documents, Previously and Currently Published, or Intended To Be Published, Divided According to Code

 
CODE: A Patent Documents Identified as Primary or Major Series — First Publication Level
EXAMPLES:  
Australia Standard or petty patent application
Austria Patent application (Aufgebot)
Belgium Brevet d’invention/Uitvindingsoctrooi
Belgium Brevet de perfectionnement/Verbeteringsoctrooi
Belgium Demande de brevet d’invention/Uitvin dingsoctrooiaanvraag
Brazil Pedido de privilégio (Unexamined patent application for invention)
Bulgaria Patentna zajavka predostavena za publichna inspektzija (Patent application made available to the public)
Canada Patent (prior to October 1, 1989, under previous Patent Act)
Canada Patent application laid open to public inspection under amended Patent Act, as of October 1, 1989)
China Patent application published before the examination
Cuba Patent application
Czechoslovakia Patent application
Czechoslovakia Inventor’s certificate application
Czech Republic Prihláška Vynálezu (Application for the protection of an invention — patent)
Denmark Almindeligt tilgaengelig patentansøgning
Egypt Patent specification
European Patent Office Patent application published with search report
European Patent Office Patent application published without search report
European Patent Office Separate publication of the search report
Finland Julkiseksi tullut patenttihakemus-Allmänt tillgänglig patentansökan
France Brevet d’invention (old law)
France Brevet d’invention premiére et unique publication
France Certificat d’addition à un brevet d’invention, premiére et unique publication
France Certificat d’utilité, premiére et unique publication
France Certificat d’addition à un certificat d’utilité, premiére et unique publication
France Demande de brevet d’invention, premiére publication
France Demande de certificat d’addition à un brevet d’invention, premiére publication
France Demande de certificat d’utilité, premiére publication
France Demande de certificat d’addition à un certificat d’utilité, premiére publication
Germany Offenlegungsschrift
Germany (document published by the Patent Office of the former GDR) Patentschrift (Ausschliessungspatent), patent granted in accordance with paragraph 17.1 of the Patent Law of the former German Democratic Republic of October 27, 1983
Germany (document published by the Patent Office of the former GDR) Patentschrift (Wirtschaftspatent), patent granted in accordance with paragraph 17.1 of the Patent Law of the former German Democratic Republic of October 27, 1983
Greece Diploma evresitechnias
Greece Etisi gia Diploma evresitechnias
Greece Etisi gia Diploma tropopiisis
Hungary Patent application
India Patent specification
Ireland Patent specification
Israel Bakashah lepatent (Application of patent for invention)
Italy Domanda di brevetto publicata
Japan Kôkai tokkyo kôhô
Japan Kôhyo tokkyo kôhô
Luxembourg Brevet d’invention
Luxembourg Certificat d’addition à un brevet d’invention
Malawi Patent application
Mexico Patent (Granted patent — according to old law)
Mexico Patent application (according to new law)
Mongolia Patent
Morocco Brevet d’invention
Netherlands Terinzagegelegging
New Zealand Patent application
Norway Alment tilgjengelige patentsöknader
OAPI Brevet d’invention
Pakistan Patent specification
Peru Patente de invención
Philippines Patent for invention
Poland Opis zgloszeniowy wynalazku
Portugal Pedido de patente de invenção
Republic of Korea Konggae t’ukho kongbo
Romania Descrierea inventiei
Romania Cerere de brevet de invente
Russian Federation Zayavka na izobreteniye (Published application for invention)
Slovakia Prihláška Vynálezu (Published application for invention)
Slovenia Patent
Slovenia Patent s skrajšanim trajanjem (Short-term patent)
Soviet Union Opisanie izobreteniyak patentu
Soviet Union Opisanie izobreteniyak avtorskomu svidetelstvu
Spain Patente de invención
Spain Solicitud de patente con informe sobre el estado de la técnica (Patent application published with search report)
Spain Solicitud de patente sin informe sobre el estado de la técnica (Patent application published without search report)
Sweden Allmant tillganglig patentansokan
Switzerland Auslegeschrift/Fascicule de la demande/Fascicolo della domanda (Patent Application published and pertaining to the technical fields for which search and examination as to novelty are made)
Switzerland Patentschrift/Fascicule du brevet/Fascicolo del brevetto (Patent published and pertaining to the technical fields for which neither search nor examination as to novelty are made)
Tunisia Talab Baraat Ekhtiraâ
Turkey Patent tarifnamesi
United Kingdom Patent specification (old Law; not printed on documents)
United Kingdom Patent application (new Law)
United States of America Patent (published before January 2, 2001)
United States of America Patent application publication (published beginning March 15, 2001)
World Intellectual Property Organization International application published with or without the international search report
Yugoslavia Patenta prijava koja se moze razgledati
 
CODE: B Patent Documents Identified as Primary or Major Series -Second Publication Level
EXAMPLES:  
Australia Accepted standard or petty patent
Austria Patentschrift
Belgium Brevet d’invention/Uitvindingsoctrooi
Brazil Patente (granted patent of invention)
Canada Reissue patent (prior to October 1, 1989, under previous Patent Act)
Cuba Patente de invención
Czechoslovakia Popis vynalezu k patentu
Czechoslovakia Popis vynalezu k autorskemu osvedceni
Czech Republic Patentovy spis (patent specification)
Denmark Fremlaeggelsesskrift (old Law)
Denmark Patentskrift
Denmark Patentskrift (amended)
Finland Kuulutusjulkaisu - Utläggningsskrift
France Brevet d’invention, deuxième publication de l’invention
France Certificat d’addition à un brevet d’invention, deuxième publication de l’invention
France Certificat d’utilité, deuxième publication de l’invention
France Certificat d’addition à un certificat d’utilité, deuxième publication de l’invention
Germany Auslegeschrift
Germany (document published by the Patent Office of the former GDR) Patentschrift (Ausschliessungspatent), patent granted in accordance with paragraph 18.1 of the Patent Law of the former German Democratic Republic of October 27, 1983
Germany (document pub lished by the Patent Office of the former GDR) Patentschrift (Wirtschaftspatent), patent granted in accordance with paragraph 18.1 of the Patent Law of the former German Democratic Republic of October 27, 1983
Greece Diploma evresitechnias (Patent of invention)
Greece Diploma tropopiisis (Patent of addition)
Hungary Szabadalmi leiras
Indonesia Patent granted in accordance with article 61 of the Patent Law, Number 6 of 1989 Concerning Patents
Japan Tokkyo kôhô
Netherlands Openbaar gemaakte octrooiaanvrage
Norway Utlegningsskrift
Poland Opis patentowy
Portugal Patente de invenção (Granted patent of published application)
Republic of Korea T’ukho kongbo
Spain Patente de invención con informe sobre el estado de la técnica (Patent specification with search report)
Spain Patente de invención con examen previo (Patent specification published after examination)
Sweden Utläggningsskrift
Switzerland Patentschrift/Fascicule du brevet/Fascicolo del brevetto (Patent published and pertaining to the technical fields for which search and examination as to novelty are made)
United Kingdom Amended patent specification (old Law)
United Kingdom Patent specification (new Law)
United States of America Reexamination certificate (published prior to January 2, 2001)
United States of America Patent (published on or after January 2, 2001)
 
CODE: C Patent Documents Identified as Primary or Major Series - Third Publication Level
EXAMPLES:  
Argentina Patente de invención (Patent)
 
CODE: E Patent Documents Identified as Series Other Than the Documents Coded A, B, C, U, Y, Z, M, P, S, T, W, L or R - First Publication Level
EXAMPLES:  
Canada Reissue patent (under amended Patent Act, as of October 1, 1989)
France Certificat d’addition à brevet d’invention (old Law)
Sweden Patentskrift i ändrad lydelse (Amended patent specification)
United States of America Reissue patent
 
CODE: H Patent Documents Identified in Series According to Special Requirements of Individual Industrial Property Offices
EXAMPLES:  
United States of America Statutory invention registration
 
CODE: M Patent Documents Identified in Series According to Special Requirements of Individual Industrial Property Offices
EXAMPLES:  
France Brevet spécial de médicament
France Addition à un brevet spécial de médicament
 
CODE: P Plant Patent Documents
EXAMPLES:  
United States of America Plant patent
United States of America Plant patent application publication
 
CODE: S Design Patent Documents
EXAMPLES:  
Brazil Pedido de privilégio (unexamined patent application for industrial model)
Russian Federation Patent na promishlenniy obrazets (Design patent)
United States of America Design patent
 
CODE: U Utility Model Documents Having a Numbering Series Other Than the Documents Coded A, B or C— First Publication Level
EXAMPLES:  
Austria Gebrauchsmusterschrift (published with or without a search report)
Brazil Pedido de privilégio (unexamined patent application for industrial model)
Bulgaria Zajavka za polezni modeli predostavena za publichna inspektzija (Utility model application made available to the public)
Czech Republic Uzitny vzor (Utility model)
Denmark Almindeligt tilgaengelig brugsmodelansogning
Denmark Brugsmodelskrift
Finland Hyödyllisyysmalli-Nyttighetsmodell (Utility model)
Germany Gebrauchsmuster
Greece Etisi gia Pistopiitiko Ipodigmatos Chrisimotitas (Utility model application)
Hungary Hasznalati minta leiras (Utility model specification)
Japan Kôkai jitsuyô shin-an kôhô (Published unexamined utility model application)
Japan Tôroku jitsuyô shin-an kôhô (Published registered utility model application) (without substantive examination)
Mexico Utility model
Poland Opis zgloszeniowy wzoru uzytilowego
Portugal Pedido de modelo de utilidade (Published application for a utility model)
Republic of Korea Konggae shilyong shin-an kongbo
Russian Federation Svidetelstvo na poleznuyu model (Certificate for utility model)
Slovakia Úžitkovy vzor (Utility model)
Spain Solicitud de modelo de utilidad
 
CODE: Y Utility Model Documents Having a Numbering Series Other Than the Documents Coded A, B or C— Second Publication Level
EXAMPLES:  
Brazil Patente (granted patent of utility model)
Bulgaria

Opisanie na patent za polezen model (Description of a patent for utility model)

Denmark

Brugsmodelskrift

Denmark

Brugsmodelskrift (amended)

Greece

Pistopiitiko Ipodigmatos Chrisimotitas (Utility model)

Japan Jitsuyô shin-an kôhô (Published examined utility model application)
Poland

Opis ochronny wzoru uzytkowego

Portugal

Modelo de utilidade (Granted utility model)

Republic of Korea

Shilyong shin-an kongbo (Utility model specification)

Spain

Modelo de utilidad

   

  Country Codes

The two-letter country codes listed below are set forth in WIPO Standard ST.3, which is published in the “WIPO Handbook on Industrial Property Information and Documentation” and is accessible via the internet at the WIPO website (www.wipo.int/scit/en/standards/standards.htm). WIPO Standard ST.3 provides, in Annex A, Section 1, a listing of two-letter country codes and/or organizational codes in alphabetic sequence of their short names for the states, other entities and intergovernmental organizations issuing or publishing industrial property documents. Codes for states or organizations that existed on January 1, 1978, but that no longer exist are provided in Annex B, Section 2. Annex B, Section 1 (not reproduced below) lists States for which the Codes have changed.

 
List of States, Other Entities and Intergovernmental Organizations, in Alphabetic Sequence of Their Short Names, and Their Corresponding Codes
   
Afghanistan AF
African Intellectual Property Organization (OAPI) OA
African Regional Intellectual Property Organization (ARIPO) AP
Albania AL
Algeria DZ
Andorra AD
Angola AO
Anguilla AI
Antigua and Barbuda AG
Argentina AR
Armenia AM
Aruba AW
Australia AU
Austria AT
Azerbaijan AZ
Bahamas BS
Bahrain BH
Bangladesh BD
Barbados BB
Belarus BY
Belgium BE
Belize BZ
Benelux Office for Intellectual Property (BOIP) BX
Benin BJ
Bermuda BM
Bhutan BT
Bolivia BO
Bosnia and Herzegovina BA
Botswana BW
Bouvet Island BV
Brazil BR
Brunei Darussalam BN
Bulgaria BG
Burkina Faso BF
Burundi BI
Cambodia KH
Cameroon CM
Canada CA
Cape Verde CV
Cayman Islands KY
Central African Republic CF
Chad TD
Chile CL
China CN
Colombia CO
Community Plant Variety Office (European Community)(CPVO) QZ
Comoros KM
Congo (See Congo, below; Democratic Republic of the Congo)  
Congo CG
Cook Islands CK
Costa Rica CR
Côte d’Ivoire CI
Croatia HR
Cuba CU
Cyprus CY
Czech Republic CZ
Democratic People’s Republic of Korea KP
Democratic Republic of the Congo CD
Denmark DK
Djibouti DJ
Dominica DM
Dominican Republic DO
   
Ecuador EC
Egypt EG
El Salvador SV
Equatorial Guinea GQ
Eritrea ER
Estonia EE
Ethiopia ET
Eurasian Patent Organization (EAPO) EA
   
European Community Trademark Office (See Office for Harmonization in the Internal Market)  
European Patent Office (EPO) EP
Falkland Islands (Malvinas) FK
Faroe Islands FO
Fiji FJ
Finland FI
France FR
Gabon GA
Gambia GM
Georgia GE
Germany DE
Ghana GH
Gibraltar GI
Greece GR
Greenland GL
Grenada GD
Guatemala GT
Guernsey GG
Guinea GN
Guinea-Bissau GW
Gulf Cooperation Council (see Patent Office of the Cooperation Council for the Arab States of the Gulf)  
Guyana GY
Haiti HT
Holy See VA
Honduras HN
Hong Kong (See The Hong Kong Special Administrative Region of The People’s Republic of China)  
Hungary HU
Iceland IS
India IN
Indonesia ID
International Bureau of the World Intellectual Property Organization (WIPO) IB, WO
Iran, Islamic Republic of IR
Iraq IQ
Ireland IE
Isle of Man IM
Israel IL
Italy IT
Jamaica JM
Japan JP
Jersey JE
Jordan JO
Kazakhstan KZ
Kenya KE
Kiribati KI
Korea (See Democratic People’s Republic of Korea; Republic of Korea)  
Kuwait KW
Kyrgyzstan KG
Lao People’s Democratic Republic LA
Latvia LV
Lebanon LB
Lesotho LS
Liberia LR
Libyan Arab Jamahiriya LY
Liechtenstein LI
Lithuania LT
Luxembourg LU
Macau MO
Macedonia (see The former Yugoslav Republic of Macedonia)  
Madagascar MG
Malawi MW
Malaysia MY
Maldives MV
Mali ML
Malta MT
Mauritania MR
Mauritius MU
Mexico MX
Moldova (See Republic of Moldova)  
Monaco MC
Mongolia MN
Montenegro ME
Montserrat MS
Morocco MA
Mozambique MZ
Myanmar MM
Namibia NA
Nauru NR
Nepal NP
Netherlands NL
Netherlands Antilles AN
New Zealand NZ
Nicaragua NI
Niger NE
Nigeria NG
Nordic Patent Institute (NPI) XN
Northern Mariana Islands MP
Norway NO
Office for Harmonization in the Internal Market (Trademarks and Designs) (OHIM) EM
Oman OM
Pakistan PK
Palau PW
Panama PA
Papua New Guinea PG
Paraguay PY
Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC) GC
Peru PE
Philippines PH
Poland PL
Portugal PT
Qatar QA
Republic of Korea KR
Republic of Moldova MD
Romania RO
Russian Federation RU
Rwanda RW
Saint Helena SH
Saint Kitts and Nevis KN
Saint Lucia LC
Saint Vincent and the Grenadines VC
Samoa WS
San Marino SM
Sao Tome and Principe ST
Saudi Arabia SA
Senegal SN
Serbia RS
Seychelles SC
Sierra Leone SL
Singapore SG
Slovakia SK
Slovenia SI
Solomon Islands SB
Somalia SO
South Africa ZA
South Georgia and the South Sandwich Islands GS
Spain ES
Sri Lanka LK
Sudan SD
Suriname SR
Swaziland SZ
Sweden SE
Switzerland CH
Syrian Arab Republic SY
Taiwan, Province of China TW
Tajikistan TJ
Tanzania (see United Republic of Tanzania)  
Thailand TH
The Former Yugoslav Republic of Macedonia MK
The Hong Kong Special Administrative Region of The People’s Republic of China HK
Timor-Leste TL
Togo TG
Tonga TO
Trinidad and Tobago TT
Tunisia TN
Turkey TR
Turkmenistan TM
Turks and Caicos Islands TC
Tuvalu TV
Uganda UG
Ukraine UA
United Arab Emirates AE
United Kingdom GB
United Republic of Tanzania TZ
United States of America US
Uruguay UY
Uzbekistan UZ
Vanuatu VU
Vatican City State (See Holy See)  
Venezuela VE
Viet Nam VN
Virgin Islands, British VG
Western Sahara EH
World Intellectual Property Organization (WIPO) (International Bureau of) WO, IB
Yemen YE
   
Zambia ZM
Zimbabwe ZW
   
Annex B, Section 2
List of States or Organizations That Existed on January 1, 1978, but That No Longer Exist
Czechoslovakia CS
Democratic Yemen SY/YD
German Democratic Republic DL/DD
International Patent Institute IB
Soviet Union SU
Yugoslavia/Serbia and Montenegro YU

1852    Taking Into Account Results of Earlier Search(es) [R-08.2012]

PCT Rule 41

Taking into Account Results of Earlier Search

41.1. Taking into Account Results of Earlier Search

Where the applicant has, under Rule 4.12 , requested the International Searching Authority to take into account the results of an earlier search and has complied with Rule 12 bis .1 and:

  • (i) the earlier search was carried out by the same International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, the International Searching Authority shall, to the extent possible, take those results into account in carrying out the international search;
  • (ii) the earlier search was carried out by another International Searching Authority, or by an Office other than that which is acting as the International Searching Authority, the International Searching Authority may take those results into account in carrying out the international search.

37 C.F.R. 1.104  Nature of examination.

  • "" (a) Examiner’s action .

*****

  • (3) An international-type search will be made in all national applications filed on and after June 1, 1978.
  • (4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in § 1.21 (e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.

*****

PCT Rule 4.12 provides that the applicant may request that the results of an earlier international, international-type or national search carried out by the same or another International Searching Authority or by a national Office be used in establishing an international search report on such international application. See MPEP § 1819 . An international-type search is conducted on all U.S. national nonprovisional applications filed after June 1, 1978. Upon specific request, at the time of the examination of a U.S. national nonprovisional application and provided that the payment of the appropriate international-type search report fee has been made ( 37 CFR 1.21(e) ) an international-type search report Form PCT/ISA/201 will also be prepared.

1853    Amendment Under PCT Article 19 [R-08.2012]

PCT Article 19

Amendment of the Claims before the International Bureau

  • (1) The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit. He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the description and the drawings.
  • (2) The amendments shall not go beyond the disclosure in the international application as filed.
  • (3) If the national law of any designated State permits amendments to go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.

PCT Rule 46

Amendment of Claims Before the International Bureau

46.1. Time Limit

The time limit referred to in Article 19 shall be two months from the date of transmittal of the international search report to the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later, provided that any amendment made underArticle 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.

46.2. Where to File

Amendments made under Article 19 shall be filed directly with the International Bureau.

46.3. Language of Amendments

If the international application has been filed in