INTRODUCTION [R-07.2015]

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 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-10.2019]

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," i.e., names, as countries or regions in which patent protection is desired. 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 the establishment of an international search report and written opinion 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 website (www.wipo.int/ pct/en/texts/reservations/res_incomp.html ). See also subsection V. below. 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 earliest-filed application whose priority is claimed 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 receipt. See PCT Rules 14.1(c), 15.3, and 16.1(f). 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 to issue a written opinion (PCT Rule 43bis ) which will normally be considered to be the first written opinion of the International Preliminary Examining Authority where international preliminary examination is demanded. See PCT Rule 66.1bis.

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, the Korean Intellectual Property Office, the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), the Japan Patent Office (JPO), or the Intellectual Property Office of Singapore (IPOS) to act as the International Searching Authority. However, IP Australia and JPO 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 - 1840.07. 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 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 made available 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. The written opinion indicates whether each claim appears to satisfy the PCT Article 33 criteria of "novelty," "inventive step," and "industrial applicability." 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. If a Demand for Chapter II examination is not timely filed, the International Bureau communicates a copy of the written opinion established by the ISA (retitled International Preliminary Report on Patentability (Chapter I of the PCT)) to each designated Office after the expiration of 30 months from the priority date.

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, 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, or requested the International Bureau to obtain a copy of the earlier application from a digital library, 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 the receiving Office to prepare and transmit a copy of a prior application. 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 request (Form PCT/RO/101) also contains a box which can be checked requesting the International Bureau to obtain a copy of the earlier application from a digital library. This is only possible if the application is registered in a digital library, made available to the International Bureau within the prescribed time limit, as set forth in PCT Rule 17.1(b-bis), and the access code is furnished to the International Bureau.

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 ). For applications filed before July 1, 2014, former PCT Rule 44ter provided that the written opinion of the ISA would not be made publicly available until the expiration of 30 months from the priority date. For applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant are made available to the public in their original language as of the publication date. 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 communicates copies of the publication of the international application to all designated Offices that have requested to receive the publication (PCT Article 20, PCT Rule 47, and PCT Rule 93bis.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 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 www.wipo.int/ pct/en/texts/time_limits.html. At the time of publication of this Chapter, only two countries have not adopted Article 22(1) as amended: Luxembourg (LU) and the United Republic of Tanzania (TZ). It is noted that Luxembourg is included in the regional designation "EPO" and that the United Republic of Tanzania is included in the regional designation "ARIPO." For those two 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 in PCT Article 22(1) as amended does not apply, a Demand for international preliminary examination must be filed with an appropriate International Preliminary Examining Authority (IPEA) within 19 months of the priority date.

Those states in which the Chapter II procedure is desired must be "elected" in the Demand.

PCT Rule 54bis.1 requires the Demand to be made 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 or of the declaration referred to in PCT Article 17(2)(a), and of the written opinion under PCT Rule 43bis.1; or
(B) 22 months from the priority date.

However, applicant may desire to file the Demand by 19 months from the priority date to extend the national stage entry deadline in Luxembourg and the United Republic of Tanzania.

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 and the basis for the amendments to the IPEA. See PCT Rule 62. The International Bureau also sends the IPEA a copy of the written opinion established by the International Searching Authority (ISA) unless the ISA is also acting as the 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) a translation, if the applicant is required to furnish a translation under PCT Rule 55.2;
(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) the written opinion established under PCT Rule 43bis.1.

The IPEA shall start the international preliminary examination upon receipt of the above materials unless the applicant expressly requests to postpone the start of the international preliminary examination until 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, 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 66.1bis. 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"), 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 website at: www.wipo.int/pct/en/texts/time_limits.html.

1802 PCT Definitions [R-07.2015]

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 1.9 and 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, and Notifications of Incompatibility Made by, the United States of America [R-07.2015]

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 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. This reservation is 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), 26.3ter(a) and 26.3ter(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), 26.3ter(a) and 26.3ter(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 made a notification of incompatibility with respect to these rules pursuant to PCT Rules 20.1(d), 26.3ter(b) and 26.3ter(d). As a result, PCT Rules 20.1(c), 26.3ter(a) and 26.3ter(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 49ter.1(a) - (d) and 49ter.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 made a notification of incompatibility with respect to these Rules pursuant to PCT Rules 49.5(l), 49ter.1(g) and 49ter.2(h). As a result, PCT Rules 49.5(c-bis), 49.5(k), 49ter.1(a) - (d) and 49ter.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 website at: www.wipo.int/ pct/en/texts/reservations/res_incomp.html.

1804 [Reserved]

1805 Where To File an International Application [R-10.2019]

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.

*****

See MPEP § 1806 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. See 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) and 1.421. The concepts of residence and nationality are defined in PCT Rule 18.1.

International applications may be filed electronically through the Office’s electronic filing system (EFS-Web). International applications and related papers may also 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 Priority Mail Express® 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 Priority Mail Express® 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. 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 and 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. However, any transfer request received after substantial processing of the international application by the United States Receiving Office has occurred may be declined.

An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless: (1) the invention was not made in the United States; or (2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order under 37 CFR 5.2, and the international application does not contain modifications, amendments, or supplements changing the general nature of the invention in a manner that would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181. See 37 CFR 5.11 and 5.15.

1806 Applicants and Inventors [R-07.2015]

Any resident or national of a Contracting State may file an international application. See PCT Article 9 and PCT Rule 18. The applicant can be an individual, corporate entity or other concern. Where there are two or more applicants, at least one of them must be a national or a resident of a Contracting State.

The question of 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.

Where the inventor is not the applicant, indications concerning the inventor must nevertheless be made in the Request where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application (PCT Rule 4.1(a)(iv) ). See PCT Applicant’s Guide, International Phase, Annexes B1 and B2, for those States and regional patent systems which require such indications. Furthermore, information concerning the inventor is required by most countries for the national phase. In such a case, the check-box "inventor only" should be marked, the inventor’s name and address indicated in Box No. III, and the inventor’s residence and nationality omitted.

I. APPLICANT FOR PURPOSES OF THE UNITED STATES IN INTERNATIONAL APPLICATIONS HAVING AN INTERNATIONAL FILING DATE ON OR AFTER SEPTEMBER 16, 2012

37 C.F.R. 1.421 Applicant for international application.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]

(a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
- (1) Has indicated a residence or nationality in a PCT Contracting State, or
- (2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6) ).
(b) Although the United States Receiving Office will accept international applications filed by any applicant who is a resident or national of the United States of America for international processing, for the purposes of the designation of the United States, an international application will be accepted by the Patent and Trademark Office for the national stage only if the applicant is the inventor or other person as provided in § 1.422 or § 1.424. Joint inventors must jointly apply for an international application.
(c) A registered attorney or agent of the applicant may sign the international application Request and file the international application for the applicant. A separate power of attorney from each applicant may be required.
(d) Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.
(e) Requests for changes in the indications concerning the applicant, agent, or common representative of an international application shall be made in accordance with PCT Rule 92bis and may be required to be signed by all applicants.
(f) Requests for withdrawals of the international application, designations, priority claims, the Demand, or elections shall be made in accordance with PCT Rule 90bis and must be signed by all applicants. A separate power of attorney from the applicants will be required for the purposes of any request for a withdrawal in accordance with PCT Rule 90bis which is not signed by all applicants.

37 C.F.R. 1.422 Legal representative as applicant in an international application.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]

If an inventor is deceased or under legal incapacity, the legal representative of the inventor may be an applicant in an international application which designates the United States of America.

II. APPLICANT FOR PURPOSES OF THE UNITED STATES IN INTERNATIONAL APPLICATIONS HAVING AN INTERNATIONAL FILING DATE BEFORE SEPTEMBER 16, 2012

37 C.F.R. 1.421 (pre-AIA) Applicant for international application.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]

(a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
- (1) Has indicated a residence or nationality in a PCT Contracting State, or
- (2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6) ).
(b) Although the United States Receiving Office will accept international applications filed by any resident or national of the United States of America for international processing, for the purposes of the designation of the United States, an international application must be filed, and will be accepted by the Patent and Trademark Office for the national stage only if filed, by the inventor or as provided in §§ 1.422 or 1.423. Joint inventors must jointly apply for an international application.
(c) For the purposes of designations other than the United States, international applications may be filed by the assignee or owner.
(d) A registered attorney or agent of the applicant may sign the international application Request and file the international application for the applicant. A separate power of attorney from each applicant may be required.
(e) Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.
(f) Requests for changes in the indications concerning the applicant, agent, or common representative of an international application shall be made in accordance with PCT Rule 92bis and may be required to be signed by all applicants.
(g) Requests for withdrawals of the international application, designations, priority claims, the Demand, or elections shall be made in accordance with PCT Rule 90bis and must be signed by all applicants. A separate power of attorney from the applicants will be required for the purposes of any request for a withdrawal in accordance with PCT Rule 90bis which is not signed by all applicants. The submission of a separate power of attorney may be excused upon the request of another applicant where one or more inventors cannot be found or reached after diligent effort. Such a request must be accompanied by a statement explaining to the satisfaction of the Director the lack of the signature concerned.

37 C.F.R. 1.422 (pre-AIA) When the inventor is dead.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]

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.

37 C.F.R. 1.423 (pre-AIA) When the inventor is insane or legally incapacitated.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]

In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may file an international application which designates the United States of America.

For international applications having international filing dates before September 16, 2012, only inventors (and legal representatives of deceased or legally incapacitated inventors) can be applicants for purposes of the designation of the United States. Therefore, for the purpose of entering the national stage in the United States of America, the inventor(s) must be indicated in the PCT Request as "applicant and inventor" for at least the United States.

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 a 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.

1807 Agent or Common Representative and General Power of Attorney [R-07.2015]

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), (b-bis), (c), or (d)(ii), it shall be submitted to the International Searching Authority, the Authority specified for supplementary search 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 Authority competent to carry out supplementary searches, 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 90bis.1 to 90bis.4, the requirement under paragraph (b) for a separate power of attorney shall not be waived under paragraph (d).

*****

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). A Customer Number may be used in the international phase solely for purposes of viewing the international application in the Patent Application Information Retrieval (PAIR) system. See MPEP § 1809.

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, the Authority specified for supplementary search or the International Preliminary Examining Authority, as the case may be.
(c) Any receiving Office, any International Searching Authority, any Authority competent to carry out supplementary searches 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 90bis.1 to 90bis.4 to the receiving Office, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau, as the case may be, a copy of the general power of attorney shall be submitted to that Office, Authority or Bureau.

*****

"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 90bis (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. 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 or where waiver could result in harm to an applicant as in the case of the removal of an applicant.

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

1808 Change in or Revocation of the Appointment of an Agent or a Common Representative [R-07.2015]

PCT Rule 90

Agents and Common Representatives

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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 the International Bureau or to the receiving Office at 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 11.116, 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; and (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. Furthermore, as 37 CFR 11.116 permits withdrawal from representation before the Office for reasons set forth in 37 CFR 11.116(a) and (b), if the reasons for withdrawal do not conform to one of the mandatory or permissive reasons set forth in 37 CFR 11.116, 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 92bis. 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 PAIR Access [R-10.2019]

The Patent Application Information Retrieval (PAIR) system displays information regarding patent application status. The private PAIR system allows applicant to access the current patent application status electronically via the Internet. To have access to private PAIR, the applicant must (1) be a registered patent attorney/agent, an independent inventor, or a person granted limited recognition, (2) have a customer number, and (3) have a verified USPTO.gov account to allow secure access to patent data. Further information can be found at www.uspto.gov/ patents/process/file/efs/guidance/register.jsp.

To associate a new international application that applicant is filing in EFS-Web with an existing customer number, enter the customer number in the appropriate field of EFS-Web when filling in the data.

To associate a previously filed international application to a customer number, a request must be made. Applicant must provide the customer number, international application number, registration number and signature of applicant or attorney of record. Form PTO-2248 may be obtained from the USPTO website (www.uspto.gov/patents-getting-started/ international-protection/patent-cooperation-treaty/ pct-chapter-i-forms ). The form can be mailed or transmitted by facsimile to Mail Stop EBC, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. The fax number is 571-273-0177.

The ability to view on private PAIR the status of the international application does not allow an applicant to change the correspondence address or appoint or change an agent with the customer number. See MPEP § 1807. Such a change must be made under PCT Rule 92bis through the submission of a written request to the U.S. receiving Office or the International Bureau.

1810 Filing Date Requirements [R-08.2017]

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.

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

[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the America Invents Act (AIA). See 35 U.S.C. 100 (note).]

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.

35 U.S.C. 363 (pre-AIA) International application designating the United States: Effect.

[Editor Note: Applicable to applications not subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See 35 U.S.C. 363 immediately above for the law otherwise applicable.]

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).

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

[Editor Note: See pre-AIA 37 CFR 1.431 in Appendix R for para. (b)(3)(iii) applicable to applications filed before September 16, 2012]

(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 (§ 1.421 ) 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, 1.422, and 1.424 );
  - (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 16bis ).
- (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 16bis.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. 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. 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-08.2017]

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 website (www.wipo.int/ pct/en/forms/ ). The "Request" form can also be presented as a computer printout prepared using the PCT-SAFE software or WIPO’s ePCT system. See MPEP § 1821.

1813 - 1816 [Reserved]

1817 PCT Member States [R-07.2015]

An updated list of PCT Contracting States is available from WIPO’s website (www.wipo.int/pct/guide/en/gdvol1/annexes/ annexa/ ax_a.pdf or www.wipo.int/pct/en/ pct_contracting_states.html ). An updated list of PCT Contracting States for which a regional patent can be obtained via the PCT is available from the WIPO’s website (www.wipo.int/pct/en/texts/reg_des.html ).

1818 [Reserved]

1819 Earlier Search [R-08.2012]

PCT Rule 4

The Request (Contents)

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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.

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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 June 1, 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-08.2017]

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;

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PCT Rule 4

The Request (Contents)

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4.15 Signature

The request shall be signed by the applicant or, if there is more than one applicant, by all of them.

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PCT Rule 26

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

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26.2bis 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.

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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 26.2bis, it is sufficient for purposes of PCT Article 14(1)(a)(i) that the application is signed by only one of the applicants. 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 26.2bis, 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 51bis.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. Pursuant to 37 CFR 1.34, a patent practitioner acting in a representative capacity must set forth his or her registration number on submitted papers.

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.

The United States Receiving Office will accept signatures meeting the requirements of either 37 CFR 1.4(d)(1) with respect to handwritten signatures or 37 CFR 1.4(d)(2) with respect to S-signatures. For handwritten signatures, the name of each person signing the international application should be indicated (preferably typewritten) next to the signature. For S-signatures, the signer’s name must be presented in printed or typed form preferably immediately below or adjacent the S-signature, and must be reasonably specific enough so that the identity of the signer can be readily recognized. See MPEP § 502.02, subsection II. Pursuant to 37 CFR 1.4(d)(2)(ii), a patent practitioner using an S-signature must supply his or her registration number either as part of the S-signature, or immediately below or adjacent to the S-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.

1821 The Request [R-10.2019]

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 standard form PCT/RO/101 to be filled in with the required indications or be presented as a computer printout complying with the PCT Administrative Instructions. Any prospective applicant may obtain copies of the Request form PCT/RO/101, 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. The Request form may also be obtained online from WIPO’s website (www.wipo.int/pct/en/forms/ ). Details of the requirements for the Request if presented as a computer printout are set out in Administrative Instructions Section 102(h).

The Request can also be filed via EFS-Web by uploading a zip file created using PCT-SAFE software which is available for downloading at WIPO’s website (www.wipo.int/ pct-safe/en/download/download_client.html ). The zip file from PCT-SAFE contains a validated PCT Request and fee calculation sheet in PDF format which are subsequently loaded in the USPTO’s Image File Wrapper (IFW). Further, submission of the zip file at the time of filing the international application entitles the applicant to a reduction of the international filing fee.

Alternatively, the Request can be filed via EFS-Web by uploading a zip file created using WIPO’s ePCT system. Submission of the zip file generated by ePCT entitles the applicant to the same reduction in international filing fees as submission of the zip file generated by PCT-SAFE. However, because WIPO’s ePCT system is web-based and the servers that support the system are located outside the United States, users of ePCT are reminded that the export of subject matter abroad pursuant to a foreign filing license from the USPTO is limited to purposes related to the filing of foreign applications, which include international applications filed in a receiving Office other than the RO/US. A foreign filing license does not authorize the export of subject matter into ePCT for generating a PCT Request for filing with the RO/US. Persons who are considering the use of WIPO’s ePCT system for preparation of the PCT Request for filing as part of an international application with the RO/US should consider contacting the Bureau of Industry and Security (BIS) at the Department of Commerce, the Directorate of Defense Trade Controls (DDTC) at the Department of State, or the National Nuclear Security Administration (NNSA) at the Department of Energy for the appropriate clearances where the international application may include technology subject to export controls. For detailed information, please see Use of WIPO’s ePCT System for Preparing the PCT Request for Filing as Part of an International Application With the USPTO as Receiving Office, 81 FR 27417, May 6, 2016 (www.gpo.gov/ fdsys/pkg/FR-2016-05-06/pdf/2016-10733.pdf ).

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.

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.

I. 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.

II. 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." For indicating the international application as a continuation or continuation-in-part of an earlier application, see MPEP § 1828.02.

III. 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 25 characters including spaces. If the file reference exceeds 25 characters, the receiving Office may ex officio truncate the reference number to 25 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.

IV. 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.

V. APPLICANT

See MPEP § 1806 regarding who can be an applicant.

VI. NAMES

The name 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).

VII. 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.

VIII. DESIGNATION OF STATES

PCT Rule 4

The Request (Contents)

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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 PCT 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.

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.

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 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. See 37 CFR 1.432 and PCT Rule 4.9.

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. The Request may exclude the following designations: Germany (DE), Japan (JP), and Republic of Korea (KR). See Reservations, Declarations, Notifications and Incompatibilities at www.wipo.int/ pct/en/texts/reservations/res_incomp.html.

1822 [Reserved]

1823 The Description [R-07.2015]

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.

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PCT Administrative Instructions 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" or "Summary 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" or "Description of Embodiments;
(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."

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PCT Administrative Instructions 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-07.2015]

PCT Rule 13bis

Inventions Relating to Biological Material

13bis.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 the 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 13bis.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 13bis.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 13bis.7(a)(ii) and has published such requirement in the Gazette in accordance with Rule 13bis.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 13bis.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 13bis.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 13bis.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 Instructions 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 13bis.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 the 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 www.wipo.int/pct/en/appguide. 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 13bis.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-07.2015]

PCT Rule 5

The Description

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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 13ter

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

13ter.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 Instructions Section 208

Sequence Listings

Any sequence listing whether on paper or in electronic form, whether forming part of the international application or not forming part of the international application, 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 (text) provided for in the PCT Administrative Instructions. It is advisable for the applicant to submit a listing of the sequence in electronic form (text), 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 (text) 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 (text) 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 (text). 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 generally ensure compliance with the applicable PCT requirements. However, the requirements of 37 CFR 1.821 through 37 CFR 1.825 are less stringent than the requirements of WIPO Standard ST.25. See MPEP § 2422, subsection II, MPEP § 2422.03(a), subsection IV, and MPEP § 2422.07 for information specific to filing sequence listings in international applications.

For a detailed discussion of the U.S. sequence rules, see MPEP §§ 2420 - 2429.

The calculation of the international filing fee for an international application (PCT), including a sequence listing, filed via EFS-Web is determined based on the type of sequence listing file. A sequence listing filed in an ASCII text file will not be included in the sheet count of the international application (PCT). A sequence listing filed in a PDF file will be included in the sheet count of the international application (PCT). Therefore, the sheet count for an EFS-Web filed international application (PCT) containing both a PDF file and a text file sequence listing will be calculated to include the number of sheets of the PDF sequence listing.

II. TABLES RELATED TO SEQUENCE LISTINGS

Tables related to a sequence listing must be an integral part of the description of the international application (PCT), and must not be included in the sequence listing part or the drawing part. Such tables will be taken into account when calculating the application sheet count, and excess sheet fees may be required. When applicant submits tables related to a sequence listing in an international application (PCT) via EFS-Web, the tables must be in a PDF file. If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the international application (PCT). For more information, see Sequence Listings and Tables Related Thereto in International Applications Filed in the United States Receiving Office, 1344 OG 50 (July 7, 2009). If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the international application (PCT).

1824 The Claims [R-07.2015]

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 Instructions 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. 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 in Arabic numerals.
(b) The applicant shall, in the letter referred to in Rule 46.5(b) or Rule 66.8(c), indicate the differences between the claims as filed and the claims as amended or, as the case may be, differences between the claims as previously amended and currently 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;
- (vi) the claim replaces one or more claims as previously amended;
- (vii) the claim is the result of the division of a claim as previously amended.

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) ). 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-08.2017]

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.

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 cannot be presented satisfactorily in an upright position, they may be placed sideways, with the tops of the drawings 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."

In situations where one or more sheets are added, each sheet shall be identified by the number of the preceding sheet followed by a slant and then by another Arabic numeral such that the additional sheets are numbered consecutively, starting always with number one for the first sheet added after an unchanged sheet (e.g., 10/1, 15/1, 15/2, 15/3, etc.). See Administrative Instructions Section 311.

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. Rectifications of obvious mistakes are not considered to be 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. The amendment shall not go beyond the disclosure in the international application as filed. See PCT Article 34(2)(b).

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 Quality Assurance Specialist in his or her Technology Center or a PCT Special Program Examiner. See Administrative Instructions Section 310.

1826 The Abstract [R-08.2017]

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. Where the receiving Office has not invited the applicant to furnish an abstract or the applicant fails to furnish an abstract within a time limit fixed in the invitation, the International Searching Authority establishes one. See PCT Rule 38. 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) Summary 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-07.2015]

A complete list of Patent Cooperation Treaty fee amounts which are to be paid to the United States Patent and Trademark Office (USPTO), 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 International Patent Legal Administration page of the USPTO website (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), PCT Rule 15.3, 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). For international applications filed on or after November 15, 2011, the transmittal fee paid to the USPTO as Receiving Office consists of both a basic portion and a non-electronic filing portion. See 37 CFR 1.445(a)(1). The non-electronic filing portion is applicable where applicant files the international application in paper rather than by the USPTO’s electronic filing system (EFS-Web).

1827.01 Refund of International Application Fees [R-07.2015]

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.

If the receiving Office and International Searching Authority are not the same Office, 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 and not to the receiving Office.

1828 Priority Claim and Document [R-07.2015]

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 90bis.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.

The 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 26bis.1 and 37 CFR 1.451 and 1.465. For a withdrawal of a priority claim, see MPEP § 1859.

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, the applicant may request the U.S. Receiving Office (RO/US) to prepare, and transmit to the IB, a certified copy of the earlier application. The request (Form PCT/RO/101) contains a box which can be checked requesting that the receiving Office prepare the certified copy. 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. If the earlier application is made available to the International Bureau via a digital library, applicant may request the International Bureau to obtain a copy of the earlier application from the digital library. The International Bureau will electronically obtain the copy of the earlier application if the applicant has made a request in accordance with PCT Rule 17.1(b-bis ).

Transmission may be delayed or prevented when no inventor common to the priority application is named in the international application. Further, transmission of the priority document will not occur until its national security review is complete.

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-10.2019]

37 C.F.R. 1.452 Restoration of right of priority

(a) If the international application has an international filing date which is later than the expiration of the priority period as defined by PCT Rule 2.4 but within two months from the expiration of the priority period, the right of priority in the international application may be restored upon request if the delay in filing the international application within the priority period was unintentional.
(b) A request to restore the right of priority in an international application under paragraph (a) of this section must be filed not later than two months from the expiration of the priority period and must include:
- (1) A notice under PCT Rule 26bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application;
- (2) The petition fee as set forth in § 1.17(m); and
- (3) 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.
(c) If the applicant makes a request for early publication under PCT Article 21(2)(b), any requirement under paragraph (b) of this section 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.

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 as set forth in § 1.17(m); (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. However, the United States Receiving Office may decline to forward the international application to the International Bureau under PCT Rule 19.4(a)(iii) if substantial processing of the international application by the United States Receiving Office has occurred. An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless: (1) the invention was not made in the United States; or (2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order under 37 CFR 5.2, and the international application does not contain modifications, amendments, or supplements changing the general nature of the invention in a manner that would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181. See 37 CFR 5.11 and 5.15.

It should 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 a national stage application in any office that has notified the International Bureau under PCT Rule 26bis.3(j) and 49ter.1(g) of an incompatibility with its national law. A full listing of the national offices that will not accept the restoration of the right of priority in the national stage may be found on WIPO’s website at www.wipo.int/pct/en/texts/reservations/res_incomp.html. In the United States, a right of priority that has been restored under PCT Rule 26bis.3 during the international stage will be effective in the U.S. national stage. See MPEP § 1893.03(c).

It should also be noted that regardless of the PCT Rule 26bis.3(j) and 49ter.1(g) status of any particular office, 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(xi), which defines "priority date" for purposes of computing time limits, contains no limitation that the priority claim be valid.

In addition, in the context of a request for restoration of the right of priority pursuant to PCT Rule 26bis.3(a), the receiving Office shall, upon reasoned request by the applicant or sua sponte, not transmit documents or parts thereof in relation to the request for restoration, if it finds that (i) the document or part thereof does not obviously serve the purpose of informing the public about the international application; (ii) publication or public access or any such document or part thereof would clearly prejudice the personal or economic interests of any person; and (iii) there is no prevailing public interest to grant access to that document or part thereof. See PCT Rule 26bis.3(h-bis).

1828.02 Continuation or Continuation-in-Part Indication in the Request [R-07.2015]

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 49bis.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(d)(2).

The inclusion of a proper reference to the parent application in the PCT Request form or the presence of such reference on the front page of the published international application will satisfy the requirement in 37 CFR 1.78 for the presentation of a benefit claim in an application data sheet. See 37 CFR 1.76(g). In such cases, a reference to the parent application in an application data sheet would not be required in the national stage application. Furthermore, inclusion of a proper reference to the parent application in the PCT Request form is also beneficial 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. See MPEP § 211.02, which indicates the right to rely on a prior application may be waived by an applicant if a reference to the prior application is not included in the later-filed application.

1829 [Reserved]

1830 International Application Transmittal Letter [R-07.2015]

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 www.uspto.gov/ patents-getting-started/international-protection/ patent-cooperation-treaty/pct-chapter-i-forms.

1831 [Reserved]

1832 License Request for Foreign Filing Under the PCT [R-10.2019]

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: (1) the invention was not made in the United States; or (2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order under 37 CFR 5.2, and the international application does not contain modifications, amendments, or supplements changing the general nature of the invention in a manner that would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181. See37 CFR 5.11 and 5.15. 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) ).

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) and 35 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).

1833 [Reserved]

1834 Correspondence [R-08.2017]

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 55.3 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 Instructions 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 Priority Mail Express® 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 accepted" indicated on the Priority Mail Express® 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 Priority Mail Express® provisions of 37 CFR 1.10(c) - (e) require, in addition to using the Priority Mail Express® Post Office to Addressee service, an indication of the Priority Mail Express® 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 Priority Mail Express® 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 Priority Mail Express® 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 Filing of Correspondence by Facsimile [R-07.2015]

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, Article 34 amendments, 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) ). See 37 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 or Electronic Communications Service [R-10.2019]

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).

I. 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.

II. INTERRUPTION IN MAIL OR ELECTRONIC COMMUNICATIONS 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. See PCT Rule 82quater.

Special provisions also apply to interruptions caused by war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communications services or other like reasons. For example, a delay in meeting a time limit may be excused where the interested party establishes that an outage of electronic communications services affected a widespread geographical area, was unexpected or unforeseen, and that no alternative means of communication was available. See PCT Rule 82quater and PCT Administrative Instruction Section 111 for details.

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

1835 [Reserved]

1836 Rectification of Obvious Mistakes [R-07.2015]

PCT Rule 91

Rectification of 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, 26bis 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 20 where 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 Rule 91.1 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.

1837 - 1839 [Reserved]

1840 The International Searching Authority [R-10.2019]

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 43bis (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 16 and PCT Rule 43bis.

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, Bahrain, Barbados, Brazil, Chile, Dominican Republic, Egypt, Georgia, Guatemala, India, Israel, Jordan, Mexico, New Zealand, Oman, Panama, Peru, Philippines, Qatar, Saint Lucia, Saint Vincent and the Grenadines, South Africa, Thailand, 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 43bis ).

III. COMPETENT INTERNATIONAL SEARCHING AUTHORITY

In respect of international applications filed with the U.S. Receiving Office, the United States International Searching Authority 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), the Korean Intellectual Property Office (KIPO), the Australian Patent Office (IP Australia) (IPAU), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), the Japan Patent Office (JPO), and the Intellectual Property Office of Singapore (IPOS) 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. The choice of International Searching Authority (ISA) must be made by the applicant on filing the international application. See MPEP §§ 1840.01 - 1840.07 for further information regarding the competency of the EPO, KIPO, IPAU, Rospatent, ILPO, JPO, and IPOS 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.

The international search fee for the selected ISA must be paid to the USPTO as a receiving Office within one month from the time of receipt of the international application. The search fee amounts for the competent International Searching Authorities are found in each weekly edition of 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 selected ISA considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13, the ISA may invite applicants to timely pay directly to it an additional search fee in the currency accepted by the ISA for each additional invention.

1840.01 The European Patent Office as an International Searching Authority [R-10.2019]

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 original announcement appeared in the Official Gazette at 1022 OG 52 on September 28, 1982. An announcement modifying the original arrangement with the EPO appeared in the Official Gazette at 1412 OG 61 on March 10, 2015.

For any limitations or restrictions with the EPO as an ISA, please refer to the PCT Information section of the Official Gazette found on the USPTO’s website (www.uspto.gov/learning-and-resources/ official-gazette ).