1864    The Demand and Preparation for Filing of Demand [R-2]

37 C.F.R. 1.480  Demand for international preliminary examination.

  • (a) On the filing of a proper Demand in an application for which the United States International Preliminary Examining Authority is competent and for which the fees have been paid, the international application shall be the subject of an international preliminary examination. The preliminary examination fee (§ 1.482  (a)(1)) and the handling fee (§ 1.482  (b)) shall be due within the applicable time limit set forth in PCT Rule 57.3  .
  • (b) The Demand shall be made on a standardized form (PCT Rule 53  ). Copies of the printed Demand forms are available from the United States Patent and Trademark Office. Letters requesting printed Demand forms should be marked "Mail Stop PCT."
  • (c) Withdrawal of a proper Demand prior to the start of the international preliminary examination will entitle applicant to a refund of the preliminary examination fee minus the amount of the transmittal fee set forth in § 1.445  (a)(1).
  • (d) The filing of a Demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty on the international filing date (PCT Rule 53.7  ).
  • (e) Any Demand filed after the expiration of the applicable time limit set forth in PCT Rule 54 bis .1   .(a) shall be considered as if it had not been submitted (PCT Rule 54 bis .1   (b)).

Once applicant has filed an international application under Chapter I of the PCT , applicant has the right to file a demand for preliminary examination under Chapter II of the Treaty . The use of the term "Demand" distinguishes Chapter II from the "Request" under Chapter I. It is not possible to file a demand unless a proper Chapter I "Request" for an international application has been filed. Chapter I affords applicant the benefit of an international search, which includes an international search report and for international applications having an international filing date on or after January 1, 2004, a written opinion established by the International Searching Authority. The filing of a demand affords applicant examination of the application and allows applicant to file amendments to the description, claims and drawings to correct any defects, respond to any observations, or address negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability as described in PCT Article 33  (2)-(4) mentioned in the written opinion (Form PCT/ISA/237) established by the International Searching Authority. Thus, examination enables applicant to attempt to obtain a positive international preliminary examination report, which in some elected Offices is used as a basis for the issuance of a patent.

The demand should be filed on Form PCT/IPEA/401 along with the fee calculation sheet. For information on obtaining these forms free of charge, see MPEP § 1730 .

1864.01    Amendments Filed Under PCT Article 34  [R-2]

34

Procedure Before the International Preliminary Examining Authority

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  • (2)
    • (b) The applicant shall have a right to amend the claims, the description, and the drawings, in the prescribed manner and within the prescribed time limit, before the international preliminary examination report is established. The amendment shall not go beyond the disclosure in the international application as filed.

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66

Procedure Before the International Preliminary Examining Authority

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66.8. Form of Amendments

  • (a) Subject to paragraph (b), the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the sheet previously filed. The letter accompanying the replacement sheets shall draw attention to the differences between the replaced sheets and the replacement sheets and shall preferably also explain the reasons for the amendment.
  • (b) Where the amendment consists in the deletion of passages or in minor alterations or additions, the replacement sheet referred to in paragraph (a) may be a copy of the relevant sheet of the international application containing the alterations or additions, provided that the clarity and direct reproducibility of that sheet are not adversely affected. To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter which shall preferably also explain the reasons for the amendment.

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37 C.F.R. 1.485  Amendments by applicant during international preliminary examination.

  • (a) The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484  (b) or to any written opinion. Any such amendments must:
    • (1) Be made by submitting a replacement sheet in compliance with PCT Rules 10  and 11.1  to 11.13  for every sheet of the application which differs from the sheet it replaces unless an entire sheet is cancelled; and
    • (2) Include a description of how the replacement sheet differs from the replaced sheet. Amendments that do not comply with PCT Rules 10  and 11.1  to 11.13  may not be entered.
  • (b) If an amendment cancels an entire sheet of the international application, that amendment shall be communicated in a letter.

Under PCT Article 34  (2)(b), the applicant has a right to amend the claims, the description, and the drawings in the application before the International Preliminary Examining Authority (IPEA) before the international preliminary examination report is established. The amendment may be filed with the demand (PCT Article 34  ), within the period for reply to the written opinion of the International Searching Authority (ISA), or within the period for reply to the written opinion of the IPEA.

See MPEP § 1871 or MPEP § 1871.01 , as appropriate, regarding the processing of amendments filed prior to or at the start of international preliminary examination. See MPEP 1878.02 regarding amendments filed in reply to the written opinion of the ISA or IPEA. Amendments under PCT Article 34  , like amendments under PCT Article 19  (see MPEP § 1853 ), may not include new matter and must be accompanied by a description of how the replacement sheet differs from the replaced sheet.

1864.02   Applicant’s Right To File a Demand

31

Demand for International Preliminary Examination

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  • (2)
    • (a) Any applicant who is a resident or national, as defined in the Regulations, of a Contracting State bound by Chapter II, and whose international application has been filed with the receiving Office of or acting for such State, may make a demand for international preliminary examination.

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54

The Applicant Entitled to Make a Demand

54.1. Residence and Nationality

  • (a) Subject to the provisions of paragraph (b), the residence or nationality of the applicant shall, for the purposes of Article 31  (2), be determined according to Rule 18.1  (a) and (b).
  • (b) The International Preliminary Examining Authority shall, in the circumstances specified in the Administrative Instructions, request the receiving Office or, where the international application was filed with the International Bureau as receiving Office, the national Office of, or acting for, the Contracting State concerned to decide the question whether the applicant is a resident or national of the Contracting State of which he claims to be a resident or national. The International Preliminary Examining Authority shall inform the applicant of any such request. The applicant shall have an opportunity to submit arguments directly to the Office concerned. The Office concerned shall decide the said question promptly.

54.2. Right to Make a Demand

The right to make a demand under Article 31  (2) shall exist if the applicant making the demand or, if there are two or more applicants, at least one of them is a resident or national of a Contracting State bound by Chapter II and the international application has been filed with a receiving Office of or acting for a Contracting State bound by Chapter II.

  • (i) [Deleted]
  • (ii) [Deleted]

54.3 International Applications Filed with the International Bureau as Receiving Office

Where the international application is filed with the International Bureau as receiving Office under Rule 19.1  (a)(iii), the International Bureau shall, for the purposes of Article 31  (2)(a), be considered to be acting for the Contracting State of which the applicant is a resident or national.

54.4. Applicant Not Entitled to Make a Demand

If the applicant does not have the right to make a demand or, in the case of two or more applicants, if none of them has the right to make a demand under Rule 54.2  , the demand shall be considered not to have been submitted.

If there is a sole applicant, he or she must be a resident or national of a Contracting State bound by Chapter II of the PCT. If there are two or more applicants, it is sufficient that one of them be a resident or national of a Contracting State bound by Chapter II, regardless of the elected State(s) for which each applicant is indicated. Only applicants for the elected States are required to be indicated in the Demand. The detailed requirements for the various indications required in connection with each applicant (name and address, telephone number, facsimile machine number or teleprinter address, nationality and residence) are the same as those required under PCT Rule 4  in connection with the Request. Note that any inventor who is not also an applicant is not indicated in the Demand.

If the recording of a change in the name or person has been requested under PCT Rule 92 bis .1   before the Demand was filed, it is the applicant(s) of record at the time when the Demand is filed who must be indicated in the Demand.

1864.03   States Which May Be Elected [R-2]

31

Demand for International Preliminary Examination

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  • (4)
    • (a) The demand shall indicate the Contracting State or States in which the applicant intends to use the results of the international preliminary examination ("elected States"). Additional Contracting States may be elected later. Election may relate only to Contracting States already designated under Article 4  .
  • (b) Applicants referred to in paragraph (2)(a) may elect any Contracting State bound by Chapter II. Applicants referred to in paragraph (2)(b) may elect only such Contracting States bound by Chapter II as have declared that they are prepared to be elected by such applicants.

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The filing of a demand on or after January 1, 2004, shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty on the international filing date (PCT Rule 53.7  ). For demands filed before January 1, 2004, only those eligible states pursuant to PCT Article 31  indicated as being elected are elected. Only PCT member states which have ratified or acceded to Chapter II and which were designated in the Request may be elected under Chapter II. The Assembly has taken no action to allow persons who are residents or nationals of a State not party to the PCT or not bound by Chapter II to make a Demand under Article 31(2)(b)  .

1864.04   Agent’s Right To Act [R-2]

Any agent entitled to practice before the receiving Office where the international application was filed may represent the applicant before the international authorities ( PCT Article 49  ).

If for any reason, the examiner needs to question the right of an attorney or agent to practice before the International Preliminary Examining Authority (IPEA) , the USPTO roster of registered attorneys and agents should be consulted. If the international application was filed with a receiving Office other than the United States, Form PCT/IPEA/410 may be used by the requesting IPEA to ask the receiving Office with which the international application was filed, whether the agent named in the international application has the right to practice before that Office.

The PCT Article and Regulations governing the right to practice are PCT Article 49  and PCT Rule 83  .