Patent Cooperation Treaty

1801	Basic Patent Cooperation Treaty  (PCT) 
Principles 

1802	PCT Definitions 

1803	Reservations Under the PCT Taken by the 
United States of America 

1805	Where to File an International Application 

1807	Agent or Common Representative and, 
General Power of Attorney 

1808	Change in or Revocation of the  Appointment 
of an Agent or a Common Representative 

1810	Filing Date Requirements 

1812	Elements of the International  Application 

1817	PCT Member States 

1817.01	Designation of States and  Precautionary 
Designations 

1817.02	Continuation or Continuation-in -Part 
Indication in the Request 

1819	Earlier International or  International-Type 
Search 

1820	Signature of Applicant  

1821	The Request 

1823	The Description  

1823.01	Reference to Deposited  Biological Material 

1823.02	Nucleotide and/or Amino Acid Sequence 
Listings  

1824	The Claims  

1825	The Drawings  

1826	The Abstract  

1827	Fees  

1828	Priority Claim and Document 

1830	International Application Transmittal Letter  

1832	License Request for Foreign Filing Under 
the PCT  

1834	Correspondence 

1834.01	Use of Telegraph, Teleprinter, Facsimile 
Machine 

1834.02	Irregularities in the Mail Service  

1836	Rectification of Obvious Errors  

1840	The International Searching  Authority 

1840.01	The European Patent Office as an
International Searching Authority  

1842	Chapter I Basic Flow 

1843	The International Search 

1844	The International Search Report  

1844.01	Time for the International Search Report 

1846	Sections of the Articles, Regulations, and 
Administrative Instructions Under the PCT 
Relevant to the International Search 

1847	Refund of International Search Fee 

1848	Sequence Listings 

1849	Subject Matter Excluded From 
International Search 

1850	Unity of Invention Before the International 
Searching Authority 

1851	Identification of Patent Documents 

1852	International-Type Search 

1853	Amendment Under PCT Article 

1857	International Publication 

1859	Withdrawal of International  Application
 or Designations 

1860	International Preliminary Examination 

1861	Chapter II Basic Flow 

1862	Agreement with the International Bureau 
To Serve as an International Preliminary 
Examination Authority 

1864	The Demand and Preparation for Filing
 of Demand 

1864.01	Amendments Filed with Demand 

1864.02	Applicant's Right to File a Demand 

1864.03	States Which May Be Elected 

1864.04	Agent's Right to Act  

1865	Filing of Demand 

1866	Filling in of Headings on Chapter II Forms 

1867	Preliminary Examination Fees   

1868	Correction of Defects in the Demand 

1869	Notification to International Bureau
 of Demand  

1870	Priority Document and Translation Thereof 

1871	Processing Amendments Filed Under 
Article 19 and Article 34 Prior to or at
 the Start of International Preliminary 
Examination 

1872	Transmittal of Demand to the Examining
 Corps 

1873	Later Election of States  

1874	Determination if International Preliminary 
Examination Is Required and Possible  

1875	Unity of Invention Before the International 
Preliminary Examining Authority  

1875.01	Preparation of Invitation Concerning  
Unity 

1875.02	Reply to Invitation Concerning Lack 
of Unity of Invention  

1876	Notation of Errors and Informalities by the 
Examiner 

1876.01	Request for Rectification and Notification
 of Action Thereon  

1877	Nucleotide and/or Amino Acid Sequence 
Listings During the International Preliminary 
Examination  

1878	Preparation of the Written Opinion  

1878.01(a)	Prior Art Under Chapter II  

1878.01(a)(1)	Novelty Under Chapter II  

1878.01(a)(2)	Inventive Step Under Chapter II  

1878.01(a)(3)	Industrial Applicability Under 
Chapter  II  

1878.02	Reply to the Written Opinion  

1879	Preparation of the International Preliminary 
Examination Report 

1879.01	Time Limit for Preparing Report  

1879.02	Transmittal of the International  Preliminary 
Examination Report  

1879.03	Translations  

1879.04	Confidential Nature of the Report  

1880	Withdrawal of Demand or Election  

1881	Receipt of Notice of Election by the Patent
 and Trademark Office  

1890	Receipt of Notice of Designation  

1891	Receipt of Notice of Election and Preliminary 
Examination Report  

1893	National Stage (U.S. National  Application
 Filed Under  35 U.S.C. 371) 

1893.01	Commencement and Entry  

1893.01(a)	Entry via the U.S. Designated Office 

1893.01(a)(1)	Submissions Required by  Months From
 the Priority Date  

1893.01(a)(2)	Article 19 Amendment (Filed With the 
International Bureau)  

1893.01(b)	Entry via the U.S. Elected Office 

1893.01(b)(1)	Submissions Required by  Months From
 the Priority Date 

1893.01(b)(2)	Article 19 and Article 34  Amendments 
(Filed With the  International Preliminary  
Examining Authority) 

1893.01(c)	Fees  

1893.01(d)	Translation  

1893.01(e)	Oath/Declaration 

1893.02	Abandonment 

1893.03	Prosecution of U.S. National Stage 
Applications Before the Examiner  

1893.03(a)	How To Identify That an Application 
Is a U.S. National Stage Application 

1893.03(b)	The Filing Date of a U.S. National Stage 
Application 

1893.03(c)	The Priority Date, Priority Claim, and
 Priority Papers for a U.S. National Stage 
Application 

1893.03(d)	Unity of Invention  

1893.03(e)	Papers Received From the  International 
Bureau and  Placed in a U.S. National 
Stage Application File  

1893.03(f)	Drawings and PCT Rule 11  

1893.03(g)	Information Disclosure Statement in a
National Stage Application  

1895	A Continuation or Continuation-In-		Part 
Application of a PCT Application Designating 
the United States 

1895.01	Handling of and Considerations In the 
Handling of National Applica tions Under
 35 U.S.C. 371 and  35 U.S.C. 111(a) 
Continuations  and Continuations-In-Part  
of a PCT Application 

1896	The Differences Between a National  
Application Filed Under 35 U.S.C. 111(a) 
and a National Stage Applica tion Filed 
Under 35 U.S.C. 371

 

  

INTRODUCTION

This chapter is designed to be a guide for patent examin-
ers in searching and examining applications filed under the 
Patent Cooperation Treaty (PCT). Applicants desiring addi-
tional 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 repro-
duced in Annex T of this Manual and the Administrative 
Instructions are reproduced in Annex AI.

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

MAJOR CONCEPTS OF THE PCT

The Patent Cooperation Treaty (PCT) enables the U.S. 
applicant to file one application, "an international applica-
tion", 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 filing in as many member countries to the PCT as 
the applicant "designates" or "elects," that is, names, as 
countries in which patent protection is desired. 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 a search and 
publication after 18 months from the priority date. Upon 
payment of national fees and the furnishing of any required 
translation, usually 20 months after the filing of any prior-
ity application for the invention, or the international filing 
date if no priority is claimed, the application will be sub-
jected to national procedures for granting of patents in each 
of the designated countries. If a demand for an international 
preliminary examination is filed within 19 months from the 
priority date, the period for entering the national stage is 
extended to 30 months from the priority date.

The PCT offers an alternative route to filing patent appli-
cations directly in the patent offices of those countries 
which are members of the PCT. It does not preclude taking 
advantage of the priority rights and other advantages pro-
vided under the Paris Convention. The PCT provides an 
additional and optional foreign filing route to patent appli-
cants.

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

In most instances a national U.S. application (NA) 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 ben-
efit of the U.S. national application filing date will be 
claimed.

RECEIVING OFFICE (RO)

The international application (IA) must be filed in a 
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 nation-
als. The receiving Office functions as the filing and formal-
ities review organization for international applications. 
International applications must contain upon filing the des-
ignation of at least one country in which patent protection 
is desired and must meet certain standards for completeness 
and formality (PCT Articles 11(1) and 14(1)).

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

The international application is subject to the payment of 
certain fees upon filing, or within 1 month thereafter, and at 
the expiration of 12 months from the priority date or within 
1 month thereafter. The receiving Office will grant an inter-
national 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 applica-
tion, the home copy (HC), remains in the receiving Office 
(PCT Article 12(1)). Once the receiving Office has trans-
mitted copies of the application, the International Searching 
Authority becomes the focus of international processing.

INTERNATIONAL SERACHING AUTHORITY (ISA)

The basic function of the International Searching 
Authority (ISA) is to conduct a prior art search of inven-
tions 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).  
At the option of the applicant, either the U.S. Patent and 
Trademark Office or the European Patent Office will act as 
an International Searching Authority for international 
applications filed in the United States Receiving Office. 
The International Searching Authority is also responsible 
for checking the content of the title and abstract (PCT 
Rules 37.2 and 38.2).  An international search report (SR) 
will normally be issued by the International Searching 
Authority within 3 months from the receipt of the search 
copy (usually about 16 months after the priority date)(PCT 
Rule 42). Copies of the International Search Report and 
prior art cited will be sent to the applicant by the ISA/US 
(PCT Rules 43 and 44.1).  The 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.  
However, no judgments or statements as to patentability 
will be made (PCT Rule 43.9). Once the international 
search report has been completed and transmitted, interna-
tional processing continues before the International Bureau.

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 Organi-
zation (WIPO) in Geneva, Switzerland performs the duties 
of the International Bureau.

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

The applicant has normally 2 months from the date of 
transmittal of the International Search Report to amend the 
claims by filing an amendment directly with the Interna-
tional Bureau (PCT Article 19 and PCT Rule 46). The 
International Bureau will then normally publish the interna-
tional application along with the search report and any 
amended claims (Amdt) at the expiration of 18 months 
from the priority date (PCT Article 21).The international 
publication is in pamphlet form with a front page contain-
ing bibliographical data, the abstract, and a figure of the 
drawing (PCT Rule 48). The pamphlet also contains the 
search report and any amendments to the claims submitted 
by the applicant. If the application is published in a lan-
guage other than English, the search report and abstract are 
also published in English. The International Bureau pub-
lishes a PCT Gazette in the French and English languages 
which contains information similar to that on the front 
pages of published international applications, as well as 
various indexes and announcements (PCT Rule 86).  The 
International Bureau also transmits copies of the interna-
tional application to all the designated Offices (PCT Article 
20 and PCT Rule 47).

DESIGNATED OFFICE (DO) and ELECTED 
OFFICE (EO)

The designated Office is the national Office (for exam-
ple, 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.

If no "Demand" for international preliminary examina-
tion has been filed within 19 months of the priority date, 
the applicant must complete the requirements for entering 
the national stage within 20 months from the priority date 
of the international application, unless the individual desig-
nated Office grants additional time. The applicant also has 
the right to amend the application within 1 month from the 
fulfillment of the requirements under PCT Article 22. After 
this month 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, a Demand for international preliminary exam-
ination must be filed with an appropriate International Pre-
liminary Examining Authority within 19 months of the 
priority date. Those states in which the Chapter II proce-
dure is desired must be "elected" in the Demand.

The original Demand is forwarded to the International 
Bureau by the International Preliminary Examining 
Authority. The International Bureau then notifies the vari-
ous elected Offices that the applicant has entered Chapter II 
and that the application should not be considered with-
drawn for failure to enter the national stage within 20 
months from the priority date.

The examiner of the International Preliminary Examin-
ing Authority may comment on lack of unity of invention, 
note errors, and issue a written "opinion" as to whether 
each claim is "novel", involves "inventive step", and is 
"industrially applicable."  If a written "opinion" is issued 
by the examiner, the applicant may reply to the opinion by 
arguments and amendments within the time period set for 
reply. The examiner will then issue the international pre-
liminary examination report 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 enter-
ing 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.

1802	PCT Definitions

The PCT contains definitions in PCT Article 2 and in 
PCT Rule 2, which are found in MPEP Annex T.  Addi-
tional definitions are found in  35 U.S.C. 351, MPEP 
Annex L,  37 CFR 1.401, MPEP Annex R, Section 101 of 
the PCT Administrative Instructions and MPEP Annex AI.

1803	Reservations Under the PCT Taken by 
the United States of America [R-1]

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)). The United States of Amer-
ica also made a reservation under PCT Article 64(4) which 
relates to the prior art effective date of a U.S. patent issuing 
from an international application.  See  35 U.S.C. 102(e) 
and 363. These reservations are still in effect.

 >The U.S. Receiving Office continues to accept applica-
tions only in English.  See 35 U.S.C.  361(c). PCT Rules  
20.4(c),  26.3ter(a) and  26.3ter(c) permit an international 
filing date be accorded even though portions of an interna-
tional application are in a language not acceptable to the 
Receiving Office. PCT Rules  20.4(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 taken a reserva-
tion on adherence to these Rules pursuant to PCT Rules  
20.4(d),  26.3ter(b) and  26.3ter(d). As a result, PCT Rules  
20.4(c),  26.3ter(a) and  26.3ter(c) shall not apply to the 
USPTO as Receiving Office for as long as the aforemen-
tioned incompatibility exists.

Also, PCT Rules  49.5(cbis) 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). As a 
result, PCT Rules  49.5(cbis) and  49.5(k) shall not apply to 
the USPTO as Designated Office for as long as the afore-
mentioned incompatibility exists. See the International 
Bureau' s notice published in PCT Gazette No. 07/1992.<    

1805	Where to File an International 
Application [R-1]

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 applica-
tions.

*****

See  37 CFR 1.421 - 1.425 as to who can file an interna-
tional application.

Only if at least one of the applicants is a resident or 
national of the United States of America may an interna-
tional application be filed in the United States Receiving 
Office (PCT Article 9(1) and (3), PCT Rules 19.1 and 19.2,  
35 U.S.C. 361(a) and  37 CFR 1.412(a), 1.421).  The con-
cepts of residence and nationality are defined in PCT Rules 
18.1 and 18.2.  For the purpose of filing an international 
application, the applicant may be either the inventor or the 
successor in title of the inventor (assignee or owner). How-
ever, the laws of the various designated States regarding the 
requirements for applicants must also be considered when 
filing an international application.  For example, the patent 
law of the United States of America requires that, for the 
purposes of designating the United States of America, the 
applicant(s) must be the inventor(s) (35 U.S.C. 373, PCT 
Article 27(3)).

The United States Receiving Office is located in Crystal 
Plaza, Building 2, 8th floor, 2011 Jefferson Davis Highway, 
Arlington, Virginia. International applications and related 
papers may be deposited directly with the United States 
Receiving Office or be mailed to: Assistant Commissioner 
for Patents, Box PCT, Washington, D.C. 20231.  It should 
be noted that the "Express Mail" provisions of  37 CFR 
1.10 apply to the filing of all applications and papers filed 
in the U.S. Patent and Trademark Office, including PCT 
international applications and related papers and fees.  It 
should be further noted, however, that PCT international 
applications and papers relating to international applica-
tions are specifically excluded from the Certificate of Mail-
ing or Transmission procedures under  37 CFR 1.8.  This 
means, for example, that a Demand for international pre-
liminary examination cannot be filed using the Certificate 
of Mailing or Transmission practice under  37 CFR 1.8 if 
the date of mailing is the date needed for official purposes. 
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 Fed-
eral 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)).  

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, fac-
simile transmission may not be used for the filing of an 
international application, the filing of 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 staff is 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 Commissioner to prescribe 
by rule that any paper or fee required to be filed in the 
Patent and Trademark Office will be considered filed in the 
Office on the date on which it was deposited with the 
United States Postal Service, PCT Rule 20.1(a) provides 
for marking the "date of actual receipt on the request." 
Although the "Express Mail" provisions under  37 CFR 
1.10 have not been contested to date regarding PCT appli-
cations, applicants should be aware of a possible different 
interpretation by foreign authorities.

PCT Rule 19.4 provides for transmittal of an interna-
tional application to the International Bureau as Receiving 
Office in certain instances. For example, when the interna-
tional application is filed with the United States Receiving 
Office and the language in which the international applica-
tion is filed is not accepted by the United States Receiving 
Office, or if the applicant does not have the requisite resi-
dence 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 prac-
tice will avoid the loss of a filing date in those instances 
where the United States Receiving Office is not competent 
to act, but where the international application indicates an 
applicant to be a national or resident of a PCT Contracting 
state or is in a language accepted under PCT Rule 12.1(a) 
by the International Bureau as a Receiving Office. Of 
course, where questions arise regarding residence or 
nationality, i.e., the U.S. is not clearly competent, the appli-
cation will be forwarded to the International Bureau as 
Receiving Office.  Note, where no residence or nationality 
is indicated, the U.S. is not competent, and the application 
will be forwarded to the International Bureau as Receiving 
Office so long as the necessary fee is paid.  The fee is an 
amount equal to the transmittal fee.

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

1807	Agent or Common Representative 
and, General Power of Attorney

37 CFR 1.455.  Representation in international applications.

(a)	Applicants of international applications may be represented by 
attorneys or agents registered to practice before the Patent and Trademark 
Office or by an applicant appointed as a common representative (PCT Art. 
49, Rules 4.8 and 90 and ? 10.10).  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 applica-
tion 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 all 
applicants, 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 sec-
tion 108 of the Administrative Instructions.

Where an appointment of an agent or common represen-
tative 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.

"GENERAL" POWER OF ATTORNEY

"General" powers of attorney are recognized for the pur-
pose of filing and prosecuting an international application 
before the international authorities.  The original general 
power of attorney should be deposited with the Interna-
tional Application Processing Division which is the central 
focus for PCT matters throughout the Office. Any applica-
tions relying thereon must include a copy thereof. A gen-
eral power of attorney form is provided in the annex to the 
PCT Applicant's Guide.

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 Examin-
ing Authority if the appointment was specifically to repre-
sent the applicant before that Authority. The appointment 
will then be effective in relation to any particular applica-
tion 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.  See Annex Z of the PCT Applicant's 
Guide for a suitable model form for a general power of 
attorney. The PCT Applicant's Guide is available from the 
International Bureau in Geneva, Switzerland.

1808	Change in or Revocation of the  
Appointment of an Agent or a 
Common Representative

PCT Rule 90.

Agents and Common Representatives

*****

90.6.Revocation and Renunciation

(a)	Any appointment of an agent or common representative may be 
revoked by the persons who made the appointment or by their successors 
in title, in which case any appointment of a sub-agent under Rule 90.1(d) 
by that agent shall also be considered as revoked.  Any appointment of a 
sub-agent under Rule 90.1(d) may also be revoked by the applicant con-
cerned.

(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 oth-
erwise 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 docu-
ment containing a revocation or renunciation under this Rule.

37 CFR 1.455.  Representation in international applications.

(a)	Applicants of international applications may be represented by 
attorneys or agents registered to practice before the Patent and Trademark 
Office or by an applicant appointed as a common representative (PCT Art. 
49, Rules 4.8 and 90 and ? 10.10). 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 applica-
tion 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 all 
applicants, 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 sec-
tion 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.

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 ear-
lier appointment of a common representative.

The rules for signing and submission of a power of attor-
ney also apply to a revocation of an appointment.

Renunciation of an appointment may be made by means 
of a notification signed by the agent or common representa-
tive. The rules for signing and submission of a power of 
attorney apply also to a renunciation. The applicant is 
informed of the renunciation by the International Bureau.

U.S. attorneys or agents wishing to withdraw from repre-
sentation in international applications may request to do so. 
To expedite the handling of requests for permission to with-
draw as attorney, the request should be submitted in tripli-
cate (original and two copies) to Box PCT and should 
indicate the present mailing addresses of the attorney who 
is withdrawing and of the applicant. Because the Patent and 
Trademark Office (PTO) 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.

The PTO usually requires that there be at least 30 days 
between approval of withdrawal and the expiration date of 
a time response period so that the applicant will have suffi-
cient time to obtain other representation or take other 
action. If less than 30 days remains in a running response 
period, a request to withdraw is normally disapproved.

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

1810	Filing Date Requirements

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 resi-
dence 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 appli-
cation,

(b)	the designation of at least one Contracting State,

(c)	the name of the applicant, as prescribed,

(d)	a part which on the face of it appears to be a description,

(e)	a part which on the face of it appears to be a claim or 
claims.

*****

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

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

35 U.S.C. 373.  Improper Applicant.

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

37 CFR 1.431.  International application requirements.

(a)	An international application shall contain, as specified in the 
Treaty and the Regulations, a Request, a description, one or more claims, 
an abstract, and one or more drawings (where required). (PCT Art. 3(2) 
and Section 207 of the Administrative Instructions.)

(b)	An international filing date will be accorded by the United 
States  Receiving Office, at the time of receipt of the international applica-
tion, 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 appli-
cation (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-
1.424);

(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 basic portion of the international 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 basic, trans-
mittal, and search fee payable is the basic, transmittal, and search fee in 
effect on the receipt date of the international application.

(1)	If the basic, 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, applicant will be notified and 
given one month within which to pay the deficient fees plus a late payment 
fee equal to the greater of:

(i)	Fifty percent of the amount of the deficient fees up to a 
maximum amount equal to the basic fee; or

(ii)	An amount equal to the transmittal fee (PCT Rule 16bis).

(2)	The one-month time limit set pursuant to this paragraph to 
pay deficient fees may not be extended.

(d)	If the payment needed to cover the transmittal fee, the basic fee, 
the search fee, one designation 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 applica-
tion withdrawn under PCT Article 14(3)(a).

THE "INTERNATIONAL FILING DATE"

An international filing date is accorded on the date on 
which the international application was received by the 
receiving Office or pursuant to the correction of defects on 
a later date (PCT Articles 11(1) and 11(2)(b) and PCT 
Rules 20.1, 20.3, 20.4(a), 20.5, and 20.6): in the former 
case, the international filing date will be the date on which 
the international application was received by the receiving 
Office; in the latter case, the international filing date will be 
the date on which the correction was received by the 
receiving Office. Any correction must be submitted by the 
applicant within certain time limits. 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. For particulars see PCT 
Rule 20.2.

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. Appli-
cants 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 application is not entitled to a filing date since the  
applicant(s) obviously lacks the right to file in the U.S. 
Receiving Office. Such applicant is notified pursuant to 
PCT Article 11(2)(a) that, at the time of receipt, the appli-
cant obviously lacked under Article 11(1)(i) the right to file 
based upon residence or nationality.  A timely reply to such 
notice results in applicant being accorded a filing date 
under Article 11(2)(b) as of the date of the reply if applicant 
establishes residence or nationality in the United States. 
See  35 U.S.C. 373.

1812	Elements of the International  
Application

PCT Article 3.

The International Application

(1)	Applications for the protection of inventions in  any of the Con-
tracting 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 inven-
tion;

(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 appli-
cation 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) 
(PCT Administrative Instructions, Section 207(a)). All the 
sheets contained in the international application must be 
numbered in consecutive Arabic numerals by using the fol-
lowing 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 PCT 
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 PTO. Letters requesting 
forms should be addressed "Box PCT."  The "Request" 
form can now be presented as a computer printout. The 
details of a computer generated Request form are provided 
in Administrative Instructions Section 102.

1817	PCT Member States [R-1]

The following is a list of PCT Member States:

State
	Ratification, 
Accession or  
Declaration
	Date of Ratification,  
Accession or Declaration
	Date From Which State 
May Be Designated

(1)	Central African Republic?
	Accession
	September 1971
	01 June 1978

(2)	Senegal?
	Ratification
	08 March 1972
	01 June 1978

(3)	Madagascar
	Ratification
	27 March 1972
	01 June 1978

(4)	Malawi
	Accession
	16 May 1972
	01 June 1978

(5)	Cameroon?
	Accession
	15 March 1973
	01 June 1978

(6)	Chad?
	Accession
	12 February 1974
	01 June 1978

(7)	Togo?
	Ratification
	28 January 1975
	01 June 1978

(8)	Gabon?
	Accession
	06 March 1975
	01 June 1978

(9)	United States of America
	Ratification
	26 November 1975
	01 June 1978

(10)	Germany??
	Ratification
	19 July 1976
	01 June 1978

(11)	Congo?
	Accession
	08 August 1977
	01 June 1978

(12)	Switzerland??
	Ratification
	14 September 1977
	01 June 1978

(13)	United Kingdom??
	Ratification
	24 October 1977
	01 June 1978

(14)	France??
	Ratification
	25 November 1977
	01 June 1978

(15)	Russian Federation
	Ratification
	29 December 1977
	01 June 1978

(16)	Brazil
	Ratification
	09 January 1978
	01 June 1978

(17)	Luxembourg??
	Ratification
	31 January 1978
	01 June 1978

(18)	Sweden??
	Ratification
	17 February 1978
	01 June 1978

(19)	Japan
	Ratification
	01 July 1978
	01 October 1978

(20)	Denmark??
	Ratification
	01 September  1978
	01 December 1978

(21)	Austria??
	Ratification
	23 January 1979
	23 April 1979

(22)	Monaco
	Ratification
	22 March 1979
	22 June 1979

(23)	Netherlands??
	Ratification
	10 April 1979
	10 July 1979

(24)	Romania
	Accession
	23 April 1979
	23 July 1979

(25)	Norway
	Ratification
	01 October 1979
	01 January 1980

(26)	Liechtenstein??
	Accession
	19 December 1979
	19 March 1980

(27)	Australia
	Accession
	31 December 1979
	31 March 1980

(28)	Hungary
	Ratification
	27 March 1980
	27 June 1980

(29)	Democratic People's Republic  	of 
Korea (North Korea )
	Accession
	08 April 1980
	08 July 1980

(30)	Finland??
	Ratification
	01 July 1980
	01 October 1980

(31)	Belgium??
	Ratification
	14 September 1981
	14 December 1981

(32)	Sri Lanka
	Ratification
	26 November 1981
	26 February 1982

(33)	Mauritania
	Accession
	13 January 1983
	13 April 1983

(34)	Sudan
	Accession
	16 January 1984
	16 April 1984

(35)	Bulgaria
	Accession
	21 February 1984
	21 May 1984

(36)	Republic of Korea (South  	Korea)
	Accession
	10 May 1984
	**>10 August 1984<

(37)	Mali?
	Accession
	19 July 1984
	19 October 1984

(38)	Barbados
	Accession
	12 December 1984
	12 March 1985

(39)	Italy??
	Ratification
	28 December 1984
	28 March 1985

(40)	Benin?
	Accession
	26 November 1986
	26 February 1987

(41)	Burkina Faso?
	Accession
	21 December 1988
	21 March 1989

(42)	Spain?? 
	Accession
	16 August 1998
	16 November 1989

(43)	Canada
	Ratification
	02 October 1989
	02 January 1990

(44)	Greece?? 
	Accession
	09 July 1990
	09 October 1990

(45)	Poland
	Accession
	25 September 1990
	25 December 1990

(46)	Cote d'Ivoire?
	Accession
	30 January 1991
	30 April 1991

(47)	Czech Republic
	Declaration
	18 December 1992
	01 January 1993

(48)	Guinea?
	Accession
	27 February 1991
	27 May 1991

(49)	Mongolia
	Accession
	27 February 1991
	27 May 1991

(50)	Ireland??
	Ratification
	01 May 1992
	01 August 1992

(51)	New Zealand
	Accession
	01 September 1992
	01 December 1992

(52)	Portugal?? 
	Accession
	24 August 1992
	24 November 1992

(53)	Ukraine
	Accession
	21 September 1992
	21 September 1992

(54)	Slovakia
	Declaration
	30 December 1992
	01 January 1993

(55)	Viet Nam
	Accession
	10 December 1992
	10 March 1993

(56)	Niger
	Accession
	21 December 1992
	21 March 1993

(57)	Kazakstan
	Declaration
	16 February 1993
	25 December 1991

(58)	Belarus
	Declaration
	14 April 1993
	25 December 1991

(59)	Latvia
	Accession
	07 June 1993
	07 September 1993

(60)	Uzbekistan
	Declaration
	18 August 1993
	25 December 1991

(61)	China
	Accession
	01 October 1993
	01 January 1994

(62)	Slovenia
	Accession
	01 December 1993
	01 March 1994

(63)	Trinidad and Tobago
	Accession
	10 December 1993
	10 March 1994

(64)	Georgia
	Declaration
	18 January 1994
	25 December 1991

(65)	Kyrgyzstan
	Declaration
	14 February 1994
	25 December 1991

(66)	Republic of Moldova
	Declaration
	14 February 1994
	25 December 1991

(67)	Tajikistan
	Declaration
	14 February 1994
	25 December 1991

(68) 	Kenya
	Accession
	08 March 1994
	08 June 1994

(69)	Lithuania
	Accession
	05 April 1994
	05 July 1994

(70)	Armenia
	Declaration
	17 May 1994
	25 December 1991

(71)	Estonia
	Accession
	24 May 1994
	24 August 1994

(72)	Liberia
	Accession
	27 May 1994
	27 August 1994

(73)	Swaziland
	Accession
	20 June 1994
	20 September 1994

(74)	Mexico
	Accession
	01 October 1994
	01 January 1995

(75)	Uganda
	Accession
	09 November 1994
	09 February 1995

(76)	Singapore
	Accession
	23 November 1994
	23 February 1995

(77)	Iceland
	Accession
	23 December 1994
	23 March 1995

(78)	Turkmenistan
	Declaration
	01 March 1995
	25 December 1991

(79)	The former Yugoslov Republic 	of 
Macedonia
	Accession
	10 May 1995
	10  August  1995

(80)	Albania
	Accession
	04 July 1995
	04 October 1995

(81)	Lesotho
	Accession
	21 July 1995
	21 October 1995

(82)	Azerbaijan
	Accession
	25 September 1995
	25 December 1995

(83)	Turkey
	Accession
	01 October 1995
	01 January 1996

(84)	Israel
	Ratification
	01 March 1996
	01 June 1996

(85)	Cuba 
	Accession
	16 April 1996
	16 July 1996

(86)	Saint Lucia
	Accession 
	30 May 1996
	30 August 1996

(87)	Bosnia and Herzegovina
	Accession
	07 June 1996
	07 September 1997

(88)	Federal Republic of  	Yugoslavia
	Ratification
	01 November 1996
	01 February 1997

(89)	Ghana
	Accession
	26 November 1996
	16 February 1997

(90)	Zimbabwe
	Accession
	11 March 1997
	11 June 1997

(91)	Sierra Leone
	Accession
	17 March 1997
	17 June 1997

(92)	Indonesia
	Accession
	05 June 1997
	05 September 1997

(93)	Gambia
	Accession
	09 September 1997
	09 December 1997

(94)	Guinea-Bissau
	Accession
	12 September 1997
	12 December 1997

>(95) Cyprus 
	Accession
	01 January 1998
	01 April 1998

(96) Croatia 
	 Accession
	 01 April 1998
	01 July 1998

(97) Grenada
	Accession
	22 June 1998
	22 September 1998

(98) India
	Accession
	07 September 1998
	 07 December 1998

(99) United Arab Emirates
	Accession
	10 December 1998
	 10 March 1999

(100) Republic of South Africa
	Accession
	16 December 1998
	16 March 1999

(101) Republic of Costa Rica
	Accession
	03 May 1999 
	03 August 1999

(102) Commonwealth of  

Dominica
	Accession 
	07 May 1999
	07 August 1999

(103) United Republic of Tanzania
	Accession
	14 June 1999
	14 September 1999

(104) Morrocco
	Accession
	08 July 1999
	08 October 1999

(105 Algeria 
	Ratification
	08 December 1999
	08 March 2000<

?Members of Africa Intellectual Property Organization (OAPI) regional patent system.  Only regional patent protection 
is available for OAPI member states. A designation of any state is an indication that all OAPI states have been desig-
nated. Note: only one designation fee is due regardless of the number of OAPI member states designated.
			
??Members of European Patent Convention (EPC) regional patent system. Either national patents or European patents 
for member States are available through PCT, except for Belgium, France, Greece, Ireland, Italy, Monaco, and Nether-
lands, for which only European patents are available if the PCT is used. Note: only one PCT designation fee is due if 
European patent protection is sought for one, several, or all EPC member countries.
			
The following states are members of African Regional Industrial Property Organization (ARIPO) regional patent system:  
(4) Malawi, (34) Sudan, (68) Kenya, (73) Swaziland, (75) Uganda, (81) Lesotho, (89) Ghana, (90) Zimbabwe, and (93) 
Gambia.
			
The following states are members of the Eurasian (EA) regional patent system:  (15) Russian Federation, (57) Kazak-
stan, (58) Belarus, (65) Kyrgyzstan, (66) Republic of Moldova, (67) Tajikistan, (70) Armenia, (78) Turkmenistan, and 
(82) Azerbaijan. 	The Federal Republic of Yugoslavia is comprised of the Republics of Serbia and Montenegro.  The 
World Intellectual Property Organization has utilized the two-letter code "YU" to refer to the Federal Republic of Yugo-
slavia becoming a party to the Patent Cooperation Treaty.  The United States understands that the scope of the territory 
covered by the designation encompasses only the Republics of Serbia and Montenegro.
			

1817.01	Designation of States and  
Precautionary Designations

37 CFR 1.432.  Designation of States and payment of designation 
fees.

(a)	The designation of States including an indication that applicant 
wishes to obtain a regional patent, where applicable, shall appear in the 
Request upon filing and must be indicated as set forth in PCT Rule 4.9 and 
section 115 of the Administrative Instructions. Applicant must specify at 
least one national or regional designation on filing of the international 
application for a filing date to be granted.  

(b)	If the fees necessary to cover all the national and regional desig-
nations specified in the Request are not paid by the applicant within one 
year from the priority date or within one month from the date of receipt of 
the international application if that month expires after the expiration of 
one year from the priority date, applicant will be notified and given one 
month within which to pay the deficient designation fees plus a late pay-
ment fee. The late payment fee shall be equal to the greater of fifty percent 
of the amount of the deficient fees up to a maximum amount equal to the 
basic fee, or an amount equal to the transmittal fee (PCT Rule 16bis). The 
one-month time limit set in the notification of deficient designation fees 
may not be extended. Failure to timely pay at least one designation fee 
will result in the withdrawal of the international application.

(1)	The one designation fee must be paid:

(i)	Within one year from the priority date;

(ii)	Within one month from the date of receipt of the interna-
tional application if that month expires after the expiration of one year 
from the priority date; or

(iii)	With the late payment fee defined in this paragraph 
within the time set in the notification of the deficient designation fees or in 
accordance with PCT Rule 16bis.1(e).

(2)	If after a notification of deficient designation fees the appli-
cant makes timely payment, but the amount paid is not sufficient to cover 
the late payment fee and all designation fees, the Receiving Office will, 
after allocating payment for the basic, search, transmittal and late payment 
fees, allocate the amount paid in accordance with PCT Rule 16bis.1(c) and 
withdraw the unpaid designations. The notification of deficient designa-
tion fees pursuant to this paragraph may be made simultaneously with any 
notification pursuant to ? 1.431(c).

(c)	The amount payable for the designation fee set forth in para-
graph (b) is:

(1)	The designation fee in effect on the filing date of the interna-
tional application, if such fee is paid in full within one month from the 
date of receipt of the international application;

(2)	The designation fee in effect on the date such fee is paid in 
full, if such fee is paid in full later than one month from the date of receipt 
of the international application but within one year from the priority date;

(3)	The designation fee in effect on the date one year from the 
priority date, if the fee was due one year from the priority date, and such 
fee is paid in full later than one month from the date of receipt of the inter-
national application and later than one year from the priority date; or

(4)	The designation fee in effect on the international filing date, 
if the fee was due one month from the international filing date and after 
one year from the priority date, and such fee is paid in full later than one 
month from the date of receipt of the international application and later 
than one year from the priority date.

(d)	On filing the international application, in addition to specifying 
at least one national or regional designation under PCT Rule 4.9(a), appli-
cant may also indicate under PCT Rule 4.9(b) that all other designations 
permitted under the Treaty are made.

(1)	Indication of other designations permitted by the Treaty 
under PCT Rule 4.9(b) must be made in a statement on the Request that 
any designation made under this paragraph is subject to confirmation 
(PCT Rule 4.9(c)) not later than the expiration of 15 months from the pri-
ority date by:

(i)	Filing a written notice with the United States Receiving 
Office specifying the national and/or regional designations being con-
firmed;

(ii)	Paying the designation fee for each designation being 
confirmed; and

(iii)	Paying the confirmation fee specified in ? 1.445(a)(4).

(2)	Unconfirmed designations will be considered withdrawn. If 
the amount submitted is not sufficient to cover the designation fee and the 
confirmation fee for each designation being confirmed, the Receiving 
Office will allocate the amount paid in accordance with any priority of 
designations specified by applicant. If applicant does not specify any pri-
ority of designations, the allocation of the amount paid will be made in 
accordance with PCT Rule 16bis.1(c).

The designation of States is the indication, in Box No. V 
of the request (except in the last sub-box of that Box), of 
specific Contracting States in or for which the applicant is 
seeking protection for his or her invention.  Such a designa-
tion is called a "specific" designation, as distinct from the 
"precautionary" designations. Designations for the purpose 
of obtaining national patents are effected by indicating each 
Contracting State concerned.  On the printed form, this is 
accomplished by marking the appropriate check-boxes next 
to the names of the States. Where the applicant is seeking a 
European patent (for the States party to the European 
Patent Convention) or an OAPI patent, the checkbox 
"European Patent" or the checkbox "OAPI Patent" must be 
marked.  Switzerland and Liechtenstein cannot be desig-
nated independently of each other.

Belgium, France, Greece, Italy, Monaco, and Ireland can 
be designated only for a European Patent since only a Euro-
pean patent (and not a national patent) can be obtained via 
the PCT route for those countries.  Where any of the other 
States for which both a national and a European patent are 
available is designated twice in the same application, 
namely for national protection and for a European patent, 
the application is treated in the international phase as an 
application for a national patent in that State and also as an 
application for a European patent with effect for that State.

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

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

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

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

APPLICANT FOR PURPOSES OF EACH 
DESIGNATION

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

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

1817.02	Continuation or Continuation-in -
Part Indication in the Request

PCT Rule 4.

The Request (Contents)

*****

4.14.Continuation or Continuation-in-Part

If the applicant wishes his international application to be treated, in any 
designated State, as an application for a continuation or a continuation-in-
part of an earlier application, he shall so indicate in the request and shall 
identify the parent application involved.

*****

Box No. V and the Supplemental Box of the Request 
form should be used where the applicant has an earlier 
application in a country designated in the international 
application and where special title or treatment of the inter-
national application is desired. For example, if the appli-
cant has a pending United States application, the 
international application could contain additional subject 
matter and be treated as a continuation-in-part in the United 
States, if the United States is designated in the international 
application (PCT Rule 4.14). In this example, the entries to 
be placed in Box No. V would be as follows: "United States 
of America; continuation-in-part;" and in the Supplemental 
Box, an entry such as "Continuation of Box No. V, Parent 
application for U.S. designation: United States of America, 
20 May 1981, 222,222" identifying the earlier pending 
application should be inserted.

1819	Earlier International or  
International-Type Search

PCT Rule 4.

Request (Contents)

*****

4.11.Reference to Earlier Search

If an international or international-type search has been requested on 
an application under Article 15(5) or if the applicant wishes the Interna-
tional Searching Authority to base the international search report wholly 
or in part on the results of a search, other than an international or interna-
tional-type search, made by the national Office or intergovernmental orga-
nization which is the International Searching Authority competent for the 
international application, the request shall contain a reference to that fact. 
Such reference shall either identify the application (or its translation, as 
the case may be) in respect of which the earlier search was made by indi-
cating country, date and number, or the said search by indicating, where 
applicable, date and number of the request for such search.

*****

Certain International Searching Authorities refund part 
or all of the international search fee or reduce the amount of 
the international search fee where the international search 
can be based wholly or partly on an earlier search (whether 
an international, international-type, or other search) made 
by them. The United States provides for a reduced search 
fee where there is a corresponding prior U.S. national non-
provisional application.

Where the earlier search by the International Searching 
Authority was made in relation to a national, regional (for 
instance, European) or international application, that appli-
cation must be identified in Box No. VII of the request by 
an indication of the country of filing (or the European 
Patent Office), and the number and filing date of that appli-
cation. Note that, if the earlier search was made on the basis 
of a translation of that application into a language other 
than that in which the application was filed, that translation 
must also be identified in Box No. VII.  Where the earlier 
search was made independently of a patent granting proce-
dure (for instance, a standard search by the European Patent 
Office), a reference must be made to the date of the request 
for that search and the number given to the request by the 
International Searching Authority.

The United States Patent and Trademark Office performs 
an international-type search on all U.S. national applica-
tions filed on and after 01 June 1978. No specific request 
by the applicant is required and no number identifying the 
international-type search is assigned by the Office. All ear-
lier U.S. applications referred to in Box No. VI and Box 
No. VII as well as all U.S. applications referred to in sepa-
rate transmittal letters will be considered by the Office. See  
37 CFR 1.104(a)(3) and (a)(4). The forms to be used for 
recording an international-type search can be obtained from 
the International Application Processing Division.

Box No. VII should be used to identify related interna-
tional applications whether or not priority of that applica-
tion is claimed.

1820	Signature of Applicant 

PCT Rule 4.

Request (Contents)

*****

4.15.Signature

(a)	Subject to paragraph (b), the request shall be signed by the 
applicant or, if there is more than one applicant, by all of them.

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

*****

SIGNATURE OF APPLICANT OR AGENT

The international application must be signed in Box No. 
IX of the request by the applicant, or, where there are two 
or more applicants, by all of them. Subject to certain condi-
tions, the request may be signed by the agent instead of the 
applicant(s). Pursuant to  37 CFR 1.4(d), the request filed 
may be either an original, or a copy thereof. Certain papers 
may be filed by facsimile transmission. See 37 CFR 1.6(d) 
and the discussion in  MPEP ? 1805. 

The international application may be signed by an agent, 
but in that case the agent must be appointed as such by the 
applicant in a separate power of attorney signed by the 
applicant.  If there are two or more applicants, the request 
may be signed by an agent on behalf of all or only some of 
them; in that case the agent must be appointed as such in 
one or more powers of attorney signed by the applicants on 
whose behalf the agent signs the application. Where a 
power of attorney appointing an agent who signs an inter-
national application is missing, the signature is treated as 
missing until the power of attorney is submitted.

The signature should be executed in black indelible ink. 
The name of each person signing the international applica-
tion should be indicated (preferably typewritten) next to the 
signature.  Where a person signs on behalf of a legal entity 
(an organization such as a corporation, university, nonprofit 
organization, or governmental agency), his or her name and 
the capacity in which he or she signs should be indicated.  
Proof of the person's authority to sign on behalf of the legal 
entity will be required if that person does not possess 
apparent authority to sign on behalf of the legal entity.  An 
officer (President, Vice-President, Secretary, Treasurer) 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 trea-
surer, vice-chairman of the board of directors) are accept-
able.  A person having a title (manger, director, 
administrator, general counsel) that does not clearly set 
forth that person as an officer of the organization is not pre-
sumed to be an officer or to have the authority to sign on 
behalf of the organization.  An attorney does not generally 
have apparent authority to sign on behalf of an organiza-
tion.

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 also acceptable to have a person sign the interna-
tional 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 state-
ment must include a clause such as "The undersigned 
(whose title is supplied below) is empowered to sign the 
Request on behalf of the applicant."  

A power of attorney or authorization of agent from a per-
son signing on behalf of a legal entity to a registered patent 
attorney or agent will be required if the attorney or agent 
signs the international application.  Additional proof of 
authority may be required by the USPTO in any interna-
tional application.

 Where an applicant is temporarily unavailable, the inter-
national application can be filed without his or her signa-
ture. The lack of an applicant's signature or of a signed 
power of attorney is a correctable defect under PCT Article 
14(1)(a)(i) and (b), and can be remedied by filing a copy of 
the request (or, where the request has been signed by an 
agent, of a power of attorney) duly signed by the applicant 
within the time limit fixed by the receiving Office for the 
correction of this defect.

APPLICANT INVENTOR UNAVAILABLE OR 
UNWILLING TO SIGN THE INTERNATIONAL 
APPLICATION OR OTHER DOCUMENTS

The PCT provides a special procedure, where two or 
more applicants file an international application designat-
ing the United States of America, which enables the inter-
national application to proceed if an applicant inventor for 
the United States of America refuses to sign or cannot be 
found or reached after diligent effort. This procedure makes 
an exception to the general rule that all applicants must sign 
the request (or a separate power of attorney appointing an 
agent who then signs the request). Its operation is limited to 
signature of the request by applicants for the purposes of 
the designation of a State whose national law requires that 
national applications be filed by the inventor (the United 
States of America is the only Contracting State to have such 
a requirement in its national law).

It is provided by PCT Rule 4.15(b) that, where an appli-
cant inventor for the designation of the United States of 
America refused to sign the request or could not be found 
or reached after diligent effort, the request need not be 
signed by that applicant inventor if it is signed by at  least 
one applicant and a statement is furnished explaining, to the 
satisfaction of the receiving Office, the lack of the 
signature concerned. If such a statement is furnished to the 
satisfaction of the receiving Office, the international appli-
cation complies with the requirements of PCT Article 
14(1)(a)(i) for the purposes of all designated States (includ-
ing the United States of America) without adverse conse-
quences in the international phase. However, additional 
proofs may be required by the United States Patent and 
Trademark Office after entry into the national phase if the 
required oath or declaration by the inventor is not signed by 
all the applicant inventors.

The lack of a signature constitutes a defect under PCT 
Article 14(1)(a)(i), and the statement must thus be filed 
within the time limit set by the receiving Office for correc-
tion of such defects in accordance with PCT Article 
14(1)(b) and PCT Rule 26.2. That time limit is fixed, in 
each case, in the invitation by the receiving Office to cor-
rect any defects under PCT Article 14(1)(a);  the time limit 
must be reasonable under the circumstances, must be not 
less than 1 month from the date of the invitation, and may 
be extended by the receiving Office at any time before a 
decision is taken under PCT Rule 26.

If the request lacks the signature of an applicant inventor 
for the United States of America and a satisfactory state-
ment cannot be furnished for the purposes of PCT Rule 
4.15(b), the international application will be considered 
withdrawn. The Receiving Office will issue a declaration of 
withdrawal.

Provisions similar to PCT Rule 4.15(b) apply to excuse a 
lack of signature by an applicant inventor for the United 
States of America of certain other documents connected 
with the international application, provided that a similar 
statement is furnished explaining the lack of signature to 
the Office or Authority concerned.  These documents are 
the Demand, any notice of a later election, and a notice of 
withdrawal of the international application, a designation, a 
priority claim, or an election. Note, however, that the signa-
tures of all the applicants are not required for all of those 
documents for example, the Demand may be signed by the 
common representative (including an applicant who is con-
sidered to be the common representative).

PCT Rule 4.15(b) is implemented in the United States 
through  37 CFR 1.425, which provides:

37 CFR 1.425.  Filing by other than inventor.

Where an international application which designates the United States 
of America is filed and where one or more inventors refuse to sign the 
Request for the international application or cannot be found or reached 
after diligent effort, the Request need not be signed by such inventor if it is 
signed by another applicant. Such international application must be 
accompanied by a statement explaining to the satisfaction of the Commis-
sioner the lack of the signature concerned.

 Where there are joint inventors other than the nonsign-
ing applicant inventor, the available joint inventors should 
sign the request form on behalf of themselves and the non-
signing inventor. Where a sole inventor or all of the joint 
inventors refuse to sign the request or can not be located, 
another applicant may make the application on behalf of 
the nonsigning inventor(s). In both instances, the applica-
tion must be accompanied by a statement explaining the 
facts that the nonsigning inventor(s) either refuse to sign or 
cannot be located after diligent effort. Such proof should 
take the form of statements by persons with first hand 
knowledge of the pertinent facts.

APPLICANT INVENTOR DECEASED

37 CFR 1.422.  When the inventor is dead. 

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

Proof of the authority of the legal representative must be 
filed. Such proof normally takes the form of a certificate of 
the clerk of a competent court or the register of wills that 
the legal representative's appointment is still in full force 
and effect. Such certificate should be signed by an officer 
and authenticated by the seal of the court by which the 
same was issued. If the certificate is not in the  English lan-
guage, an English translation is also required. In the case of 
foreign executors or administrators, a consular officer of 
the United States or a notary public from a member country 
to the Hague Convention Abolishing the Requirement of 
Legalization for Foreign Public Documents must authenti-
cate the signature of the foreign officer attesting to the 
papers submitted as proof of authority.  See  
MPEP ? 409.01(b) and  ? 602.04.

1821	The Request

A general overview of certain aspects of the request fol-
lows.

37 CFR 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 Patent and 
Trademark Office. Letters requesting printed forms should be marked 
"Box 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)	International applications which designate the United States of 
America shall include:

(1)	The name, address and signature of the inventor, except as 
provided by ?? 1.421(d), 1.422, 1.423 and 1.425;

(2)	A reference to any copending national application or interna-
tional application designating the United States of America, if the benefit 
of the filing date for the prior copending application is to be claimed.

The request must either be made on a printed form to be 
filled in with the required indications or be presented as a 
computer printout complying with the Administrative 
Instructions. Any prospective applicant may obtain copies 
of the printed request form, free of charge, from the receiv-
ing Office with which he/she plans to file his/her interna-
tional application, or from the International Bureau. Details 
of the requirements for the request if presented as a com-
puter printout are set out in Administrative Instructions 
Section 102(h).

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, (normally) the 
inventor, and the agent (if any), and must contain the desig-
nation of at least one Contracting State.  The request must 
contain an indication of any wish of the applicant's to 
obtain a European patent rather than, or in addition to, a 
national patent in respect of a designated State.

DATES

Each date appearing in the international application or in 
any correspondence must be indicated by the Arabic num-
ber of the day, the name of the month and the Arabic num-
ber of the year, in that order. In the request, after, below or 
above that indication, the date should be repeated in paren-
theses with a two-digit Arabic numeral each for the number 
of the day, the number of the month and the last two figures 
of the year, in that order and separated by periods, slashes 
or hyphens, for example, 10 June 1986 (10.06.86); (10/06/
86) or (10-06-86).

Any prospective applicant may obtain English language 
Request forms free of charge from the United States Patent 
and Trademark Office, Box PCT, Washington, D.C. 20231. 
The Request may not contain any matter that is not speci-
fied in PCT Rule 4. Any additional material will be deleted 
ex officio (Administrative Instructions Section 303).

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 con-
tinued, e.g., "Continuation of Box No. IV."

FILE REFERENCE

The applicant or his/her agent may indicate a file refer-
ence in the box provided for the 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. The file reference may be 
composed either of letters of the Latin alphabet or Arabic 
numerals, or both. It may not exceed 12 characters. The 
receiving Office, the International Bureau, the International 
Searching Authority and the International Preliminary 
Examining Authority will use the file reference in corre-
spondence with the applicant.

TITLE OF INVENTION

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

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

Where the title is missing or is inconsistent with the title 
in the description, the Receiving Office invites the appli-
cant to correct the missing or inconsistent title.

APPLICANT

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

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

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

NAMES

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

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

ADDRESSES

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

1823	The Description 

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 reflect-
ing 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 inven-
tion 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 exam-
ples, 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 contem-
plated shall have no effect in that State;

(vi)	indicate explicitly, when it is not obvious from the descrip-
tion 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  indus-
try  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 fol-
lowed except when, because of the nature of the invention, a different 
manner or a different order would result in a better understanding and a 
more economic presentation.

(c)	Subject to the provisions of paragraph (b), each of the parts 
referred to in paragraph (a) shall preferably be preceded by an appropriate 
heading as suggested in the Administrative Instructions.

PCT Administrative Instruction Section 204.

Headings of the Parts of the Description

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

(i)	for matter referred to in Rule 5.1(a)(i),  "Technical Field";

(ii)	for matter referred to in Rule 5.1(a)(ii),  "Background Art";

(iii)	for matter referred to in Rule 5.1(a)(iii),  "Disclosure of 
Invention";

(iv)	for matter referred to in Rule 5.1(a)(iv),  "Brief Description of 
Drawings";

(v)	for matter referred to in Rule 5.1(a)(v),  "Best Mode for Car-
rying Out the Invention,"  or, where appropriate,  "Mode(s) for Carrying 
Out the Invention";

(vi)	for matter referred to in Rule 5.1(a)(vi),  "Industrial Applica-
bility";

(vii)	for matter referred to in Rule 5.2(a),  "Sequence Listing";

(viii)	for matter referred to in Rule 5.2(b),  "Sequence Listing Free 
Text." 

PCT Administrative Instruction Section 209.

Indications as to Deposited Biological Material on a Separate 
Sheet

(a)	To the extent that any indication with respect to deposited bio-
logical 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 the Japanese Patent Office when Japan is 
designated, paragraph (a) applies only to the extent that 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 CFR 1.435.  The description.

(a)	The application must meet the requirements as to the content 
and form of the description are 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 con-
templated 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 there-
fore recommended that due account be taken of national 
practice in the United States of America when the descrip-
tion 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 neces-
sary where the PCT route is not used for filing in several 
countries.

1823.01	Reference to Deposited  Biological 
Material

PCT Rule 13bis.

Inventions Relating to Biological Material

13bis.1.Definition

For the purposes of this Rule, "reference to deposited biological mate-
rial" 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.

13bis.2.References (General)

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

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

(a)	A reference to deposited biological material shall indicate:

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

(ii)	the date of deposit of the biological material with that institu-
tion;

(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 13bis.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 indi-
cation 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.

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

(a)	Subject to paragraphs (b) and (c), if any of the indications 
referred to in Rule 13bis.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 fur-
nished 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 applica-
tion.

(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 prepara-
tions for international publication have been completed, indicate that date, 
and include the relevant data from the indication, in the pamphlet pub-
lished under Rule 48;

(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.

13bis.5.References and Indications for the Purposes of One or 
More Designated States; Different Deposits for Different Desig-
nated 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).

13bis.6.Furnishing of Samples

Pursuant to Articles 23 and 40, no furnishing of samples of the depos-
ited 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 pro-
cessing may start under the said Articles. However, where the applicant 
performs the acts referred to in Articles 22 or 39 after international publi-
cation but before the expiration of the said time limits, the furnishing of 
samples of the deposited microorganism may take place, once the said acts 
have been performed. Notwithstanding the previous provision, the fur-
nishing of samples of the deposited biological material may take place 
under the national law applicable for any designated Office as soon as, 
under that law, the international publication has the effects of the compul-
sory national publication of an unexamined national application.

13bis.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 appli-
cation;

(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 bio-
logical material  to be made for the purposes of patent procedure before 
that Office or, if the national law does not provide for or permit such 
deposits, of that fact.

(c)	The International Bureau shall promptly publish in the Gazette 
requirements notified to it under paragraph (a) and information notified  to 
it under paragraph (b).

PCT Administrative Instruction Section 209.

Indications as to Deposited Biological Material  on a Separate 
Sheet

(a)	To the extent that any indication with respect to deposited bio-
logical 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 the Japanese Patent Office when Japan is 
designated, paragraph (a) applies only to the extent that 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 pre-
scribes the contents of any "reference to deposited biologi-
cal 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 interna-
tional application, and when such a reference must be fur-
nished. 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 appli-
cation 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 pamphlet containing 
the published 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 desig-
nated States or for one or only some of the designated 
States.  A reference is considered to be made for the pur-
pose 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 desig-
nated 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 interna-
tional application and which have been published in the 
PCT Gazette; these additional indications may relate not 
only to the deposit of the biological material but also to the 
biological material itself.

The indications in the first category are:

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

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

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

U.S. requirements include the name and address of the 
depository institution at the time of filing, the date of the 
deposit or a statement that the deposit was made on or 
before the priority date of the international application and,  
to the extent possible, a taxonomic description of the bio-
logical material. See Annex L of the PCT Applicants 
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 con-
cerning 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 pub-
lished.

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 indi-
cations 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 fur-
nished in time. 

No check is made in the international phase to determine 
whether a reference has been furnished within the pre-
scribed time limit. However, the International Bureau noti-
fies 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 pamphlet containing the published international 
application. Failure to include a reference to a deposited 
biological material (or any indication required in such a ref-
erence) 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 Japan be designated, 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 Japanese 
Patent Office in the national phase. 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 Inter-
national Bureau in the PCT Gazette.

A reference to a deposit cannot be disregarded by a des-
ignated 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 noti-
fied 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 applica-
tion 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 Japanese 
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 appli-
cation 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 unex-
amined national application (in other words, the interna-
tional application has qualified for the grant of "provisional 
protection").

1823.02	Nucleotide and/or Amino Acid 
Sequence Listings  [R-1]

>

PCT Rule < 5.

The Description

*****

*5.2.Nucleotide and/or Amino Acid Sequence Disclosure

(a)	Where the international application contains disclosure of one 
or more nucleotide and/or amino acid sequences, the description shall con-
tain a sequence listing complying with the standard prescribed by the 
Administrative Instructions and presented as a separate part of the descrip-
tion 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 descrip-
tion in the language thereof.

PCT Rule 13ter.

Nucleotide and/or Amino Acid Sequence Listings

13ter.1.Sequence Listing for International Authorities

(a)	Where the International Searching Authority finds that the inter-
national application contains disclosure of one or more nucleotide and/or 
amino acid sequences but:

(i)	the international application does not contain a sequence list-
ing complying with the standard provided for in the Administrative 
Instructions, that Authority may invite the applicant to furnish to it, within 
a time limit fixed in the invitation, a sequence listing complying with that 
standard;

(ii)	the applicant has not already furnished a sequence listing in 
computer readable form complying with the standard provided for in the 
Administrative Instructions, that Authority may invite the applicant to fur-
nish to it, within a time limit fixed in the invitation, a sequence listing in 
such a form complying with that standard.

	(b)  	[Deleted]

(c)	If the applicant does not comply with an invitation under para-
graph (a) within the time limit fixed in the invitation, the International 
Searching Authority shall not be required to search the international appli-
cation to the extent that such noncompliance has the result that a meaning-
ful search cannot be carried out.

(d)	Where the International Searching Authority finds that the 
description does not comply with Rule 5.2(b), it shall invite the applicant 
to file 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.

(e)	Paragraphs (a) and (c) shall apply mutatis mutandis to the proce-
dure before the International Preliminary Examining Authority.

(f)	Any sequence listing not contained in the international applica-
tion as filed shall not, subject to Article 34, form part of the international 
application.

13ter.2.Sequence Listing for Designated Office

Once the processing of the international application has started before 
a designated Office, Rule 13ter .1(a) shall apply mutatis mutandis to the 
procedure before that Office. No designated Office shall require the appli-
cant to furnish to it a sequence listing other than a sequence listing com-
plying with the standard provided for in the Administrative Instructions.

PCT Administrative Instruction Section 208.

Sequence Listings

Any nucleotide and/or amino acid sequence listing ("sequence listing") 
filed as part of the international application, or furnished together with the 
international application or subsequently (whether in printed form or com-
puter readable form), shall comply with Annex C.

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 stan-
dard specified in the Administrative Instructions. The stan-
dard is set forth in detail in Annex C - Standard for the 
Presentation of Nucleotide and Amino Acid Sequence List-
ings 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 Examin-
ing 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 a computer readable form pro-
vided for in the PCT Administrative Instructions. It is 
advisable for the applicant to submit a listing of the 
sequence in computer readable form, if such a listing is 
required by the competent International Searching Author-
ity 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 Author-
ity.

The computer readable form is not mandatory in interna-
tional applications to be searched by the United States 
International Searching Authority or examined by the 
United States International Preliminary Examining Author-
ity. However, if a computer readable form of a sequence 
listing is not provided, a search or examination will be per-
formed only to the extent possible in the absence of the 
computer readable form. The U.S. sequence rules (37 CFR 
1.821 - 1.825) and the PCT sequence requirements are sub-
stantively consistent. In this regard, full compliance with 
the requirements of the U.S. rules will ensure compliance 
with the applicable PCT requirements. The 
European Patent Office (EPO), since January 1, 1993, 
requires nucleotide and amino acid sequences to be in com-
puter readable form. Applicants should be cognizant of this 
requirement and ensure compliance with EPO requirements 
if the EPO is to be the search or examination authority.  See 
also  MPEP ? 1848. For a detailed discussion of the U.S. 
sequence rules, see  MPEP ? 2420 -  ? 2421.04.

1824	The Claims 

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 refer-
ences as: "as described in part ... of the description," or "as illustrated in 
figure ... of the drawings."

(b)	Where the international application contains drawings, the tech-
nical 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 inven-
tion 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 "character-
ized in that," "characterized by," "wherein the improvement comprises," 
or any other words to the same effect - stating concisely the technical fea-
tures 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. Multi-
ple 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 desig-
nated 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 lim-
itations contained in the claim to which it refers or, if the dependent claim 
is a multiple dependent claim, all the limitations contained in the particu-
lar 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 inter-
national application has started in that State, provided that the applicant 
shall be allowed at least two months from the expiration of the time limit 
applicable under Article 22 to adapt his application to the requirements of 
the said provisions of the national law.

PCT Administrative Instruction Section 205.

Numbering and Identification of Claims Upon Amendment

(a)	Amendments to the claims under Article 19 or Article 34(2)(b) 
may be made either by cancelling one or more entire claims, by adding 
one or more new claims or by amending the text of one or more of the 
claims as filed. All the claims appearing on a replacement sheet shall be 
numbered in Arabic numerals. Where a claim is cancelled, no renumber-
ing of the other claims shall be required. In all cases where claims are 
renumbered, they shall be renumbered consecutively.

(b)	The applicant shall, in the letter referred to in the second and 
third sentences of Rule 46.5(a) or in the second and fourth sentences of 
Rule 66.8(a), indicate the differences between the claims as filed and the 
claims as amended. He shall, in particular, indicate in the said letter, in 
connection with each claim appearing in the international application (it 
being understood that identical indications concerning several claims may 
be grouped), whether:

(i)	the claim is unchanged;

(ii)	the claim is cancelled;

(iii)	the claim is new;

(iv)	the claim replaces one or more claims as filed;

(v)	the claim is the result of the division of a claim as filed.

37 CFR 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 num-
bering 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 com-
mence on a new sheet.

The procedure for rectification of obvious errors is 
explained in  MPEP ? 1836. The omission of an entire 
sheet of the claims cannot be rectified without affecting the 
international filing date. It is recommended that a request 
for rectification of obvious errors in the claims be made 
only if the error 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 Pre-
liminary 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 and line numbers must not be 
placed in the margins (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 

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 interna-
tional  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 draw-
ings 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 indispens-
able 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 col-
orings.

(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 draw-
ings, 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 appear-
ing on the various sheets.

(j)	The different figures shall be arranged on a sheet or sheets with-
out wasting space, preferably in an upright position, clearly separated 
from one another. Where the figures are not arranged in an upright posi-
tion, 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 con-
secutively 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 CFR 1.437.  The drawings.

(a)	Subject to paragraph (b) of this section, when drawings are nec-
essary for the understanding of the invention, or are mentioned in the 
description, they must be part of an international application as originally 
filed in the United States Receiving Office in order to maintain the interna-
tional filing date during the national stage (PCT Art. 7).

(b)	Drawings missing from the application upon filing will be 
accepted if such drawings are received within 30 days of the date of first 
receipt of the incomplete papers. If the missing drawings are received 
within the 30-day period, the international filing date shall be the date on 
which such drawings  are received. If such drawings are not timely 
received, all references to drawings in the international application shall 
be considered non-existent (PCT Art. 14(2), Administrative Instruction 
310).

(c)	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 inven-
tion. 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. "Guidelines for Drawings Under the Patent 
Cooperation Treaty," published in the PCT Gazette (No. 7/
1978), may be obtained, in English and French, from the 
International Bureau.

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 indispens-
able. 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. Rules 
11.10 to 11.13 contain detailed requirements as to further 
physical requirements of drawings. Drawings newly exe-
cuted according to national standards may not be required 
during the national phase if the drawings filed with the 
international application comply with Rule 11. The exam-
iner may require new drawings where the drawings which 
were accepted during the international phase did not com-
ply with PCT Rule 11. A file reference may be indicated in 
the upper left corner on each sheet of the drawings as for 
the description.

All 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 sepa-
rated from each other. Where the drawings or tables cannot 
be presented satisfactorily in an upright position, they may 
be placed sideways, with the tops of the drawings or tables 
on the left-hand side of the sheet.

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

All sheets of drawings must be numbered in the center of 
either the top or the bottom of each sheet but not in the mar-
gin 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 num-
bered in Arabic numerals consecutively and independently 
of the numbering of the sheets and, if possible, in the order 
in which they appear. This numbering should be preceded 
by the expression "Fig."

The PCT makes no provision for photographs.  Never-
theless, 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 errors 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. Changes other than 
the rectification of obvious errors are considered amend-
ments.

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

If drawings are referred to in an international application 
and are not found in the search copy file, the examiner 
should refer the case to the Group Special Program Exam-
iner. See PCT Administrative Instructions Section 310.

1826	The Abstract 

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 (pref-
erably 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 illus-
trated 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 accom-
panied 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 scan-
ning 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 CFR 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 Receiv-
ing Office will result in the international application being declared with-
drawn.

The abstract must consist of a summary of the disclosure 
as contained in the description, the claims and any draw-
ings. Where applicable, it must also contain the most char-
acteristic 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)) provides a range 
of 50 - 250 words for the abstract. The PCT range of 50 - 
150 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 
must begin on a new sheet following the claims (PCT 
Administrative Instructions Section 207). The other physi-
cal requirements must correspond to those for the descrip-
tion. The abstract must be so drafted that it can efficiently 
serve as a scanning tool for the purposes of searching in the 
particular art. These and other requirements concerning the 
abstract are spelled out in detail in PCT Rule 8. Useful 
guidance can be obtained from the "Guidelines for the 
Preparation of Abstracts Under the Patent Cooperation 
Treaty," published in the PCT Gazette (No. 5/1978). Those 
Guidelines may be obtained, in English and French, from 
the International Bureau.

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

Where the receiving Office finds that the abstract is 
missing, it invites the applicant to furnish it within a time 
limit fixed in the invitation. The international application is 
considered withdrawn if no abstract is furnished to the 
receiving Office within the time limit fixed. Where the 
receiving Office has not invited the applicant to furnish an 
abstract, the International Searching Authority establishes 
one. The same applies where the abstract does not comply 
with the requirements outlined in the preceding paragraphs. 
Where the abstract is established by the International 
Searching Authority, the applicant may submit comments 
on it within 1 month from the date of mailing of the interna-
tional search report, (PCT Rule 38.2(b)).

SUMMARY OF ABSTRACT REQUIREMENTS

Preferably 50-150 words.  Should contain: 

(A)	Indication of field of invention.

(B)	Clear indication of the technical problem.

(C)	Gist of invention's solution of the problem.

(D)	Principal use or uses of the invention.

(E)	Reference numbers of the main technical features 
placed between parentheses.

(F)	Where applicable, chemical formula which best 
characterizes the invention.

Should not contain:

(A)	Superfluous language.

(B)	Legal phraseology such as "said" and "means."

(C)	Statements of alleged merit or speculative applica-
tion.

(D)	Prohibited items as defined in PCT Rule 9.

1827	Fees  [R-1]

A complete list of Patent Cooperation Treaty fee 
amounts which are to be paid to the United States Patent 
and Trademark Office, for both the national and interna-
tional stages, can be found at the beginning of each weekly 
issue of the Official Gazette of the United States Patent and 
Trademark Office. Applicants are urged to refer to this list 
before submitting any fees to the PTO.

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

1828	Priority Claim and Document [R-1]

An applicant who claims the priority of one or more ear-
lier national or international applications for the same 
invention must indicate on the Request, at the time of fil-
ing, the country in or for which it was filed, the date of fil-
ing, and the application number. See PCT Article 8 and 
PCT Rule 4.10 for priority claim particulars and PCT Rule 
90 bis.3 for withdrawal of priority claims.

Effective July 1, 1998, applicant may correct or add a 
priority claim by a notice submitted to the Receiving Office 
or the International Bureau within 16 months from the pri-
ority date, or where the priority date is changed, within 16 
months from the priority date so changed, whichever period 
expires first.  All priority claim additions or changes must, 
however, be submitted no later than 4 months from the 
international filing date.  PCT Rule 26bis.1 and **  37 CFR 
1.451 and 1.465.

Under the PCT procedure, the applicant may file the cer-
tified 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 certi-
fied copy may be submitted by the applicant to the Interna-
tional Bureau 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 International Bureau 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.

For use of the priority document in national stage appli-
cations filed under  35 U.S.C. 371, see MPEP ?1893.03(c).

1830	International Application Transmittal 
Letter 

A PCT international application transmittal letter, Form 
PTO-1382, is available free of charge for applicants to use 
when filing PCT international applications with the United 
States Receiving Office. The form is intended to simplify 
the filing of PCT international applications by providing a 
one-page letter which covers the most common requests 
and concerns of applicants. Specifically covered are:

(A)	Requests under  37 CFR 1.451 for preparation and 
transmittal to the International Bureau of certified copies of 
the U.S. national applications, the priority of which is 
claimed in international application;

(B)	Choice of Searching Authority to conduct the 
international search. Applicants may choose either the U.S. 
Patent and Trademark Office or the European Patent Office 
as the International Searching Authority.

(C)	Authorizations for any required additional search 
fees requested by the United States International Searching 
Authority to be charged to a Deposit Account subject to 
oral confirmation of the authorization. It should be noted 
that if the European Patent Office is chosen as the Search-
ing Authority, any supplemental search fees requested by 
that Office are payable directly to the European Patent 
Office.

(D)	Indications of information concerning differences 
in disclosure, if any, between the international application 
and related applications to assist in determining any foreign 
transmittal licensing requirements as well as for other pur-
poses; and

(E)	Requests for foreign transmittal license.

1832	License Request for Foreign Filing 
Under the PCT 

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

If no petition or request for a foreign filing license is 
included in the international application, and it is clear that 
a license is required because of the designation of foreign 
countries and the time at which the Record Copy must be 
transmitted, it is current Office practice to construe the fil-
ing 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 applica-
tion, the application will not be forwarded to the Interna-
tional 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 pre-
vent abandonment as to the United States of America if it 
has been designated, by fulfilling the requirements of  
35 U.S.C. 371(c).

1834	Correspondence

PCT Rule 92.

Correspondence

92.1.Need for Letter and for Signature

(a)	Any paper submitted by the applicant in the course of the interna-
tional 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 furnish-
ing 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 mail-
ing of the invitation. If the omission is remedied within the time limit 
fixed in the invitation, the omission shall be disregarded; otherwise, the 
applicant shall be informed that the paper has been disregarded.

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

92.2.Languages

(a)	Subject to Rules 55.1 and 66.9 and to paragraph (b) of this Rule, 
any letter or document submitted by the applicant to the International 
Searching Authority or the International Preliminary Examining Authority 
shall be in the same language as the international application to which it 
relates. However, where a translation of the international application has 
been transmitted under Rule 23.1(b) or furnished under Rule 55.2, the lan-
guage of such translation shall be used.

(b)	Any letter from the applicant to the International Searching 
Authority or the International Preliminary Examining Authority may be in 
a language other than that of the international application, provided the 
said Authority authorizes the use of such language.

(c)	[Deleted]

(d)	Any letter from the applicant to the International Bureau shall 
be in English or French.

(e)	Any letter or notification from the International Bureau to the 
applicant or to any national Office shall be in English or French.

*****

PCT Administrative Instruction Section 105.

Identification of International Application With Two or More 
Applicants

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

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

If the Office finds that papers, other than the interna-
tional 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 fur-
nished 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 omis-
sion is not remedied within the time limit fixed in the invi-
tation (PCT Rule 92.1(b)). If the omission has been 
overlooked and the paper taken into account, the omission 
is disregarded.

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 represen-
tative (either the appointed common representative or the 
applicant who is considered to be the common representa-
tive (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.

FILING OF CORRESPONDENCE BY MAIL

The "Express Mail" procedure set forth at  37 CFR 1.10 
applies to "[a]ny correspondence received by the Patent 
and Trademark Office." Accordingly, papers filed with the 
PTO in international applications will be accorded by the 
Patent and Trademark Office the date of deposit with the 
United States Postal Service as shown on the "date-in" on 
the "Express Mail" mailing label as the date of filing in the 
PTO if the provisions of  37 CFR 1.10 are complied with.  
See  MPEP ? 513.

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

The certificate of mailing by first class mail procedure 
set forth at  37 CFR 1.8  differs from the  37 CFR 1.10 
Express Mail procedure. See  37 CFR 1.8(a)(2)(i)(D) and 
(E).  It is important to understand that the  37 CFR 1.8 cer-
tificate 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)(3)). 
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 sub-
mission is not physically received at the PTO on or before 
the due date. 

1834.01	Use of Telegraph, Teleprinter, 
Facsimile Machine

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 transmis-
sions. 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 transmis-
sion with certain exceptions which are identified in  
37 CFR 1.6(d).  It should be noted that a facsimile trans-
mission 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 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 1.494(b) or  37 CFR 1.495(b).

Facsimile transmission may be used to submit substitute 
sheets (other than drawings), extensions of time, power of 
attorney, fee authorizations (other than the basic national 
fee), confirmation of precautionary designations, Demands, 
response to written opinions, oaths or declarations, peti-
tions, 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 com-
pleted, unless the receipt date is a Saturday, Sunday, or Fed-
eral 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 Service 

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 intergovern-
mental 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 dili-
gence 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 deliv-
ery 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 ser-
vice 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 mail-
ing were recorded by the delivery service at the time of mailing. The noti-
fication may contain an indication that it applies only to mailings using 
specified delivery services or delivery services which satisfy specified cri-
teria. The International Bureau shall publish the information so notified in 
the Gazette.

(e)	Any national Office or intergovernmental organization may pro-
ceed 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 rele-
vant notification under paragraph (d), or

(ii)	even if that Office or organization has not sent to the Interna-
tional Bureau a notification under paragraph (d).

82.2.Interruption in the Mail Service

(a)	Any interested party may offer evidence that on any of the 10 
days preceding the day of expiration of the time limit the postal service 
was interrupted on account of war, revolution, civil disorder, strike, natu-
ral calamity, or other like reason, in the locality where the interested party 
resides or has his place of business or is staying.

(b)	If such circumstances are proven to the satisfaction of the 
national Office or intergovernmental organization which is the addressee, 
delay in arrival shall be excused, provided that the interested party proves 
to the satisfaction of the said Office or organization that he effected the 
mailing within five days after the mail service was resumed. The provi-
sions of Rule 82.1(c) shall apply mutatis mutandis.

DELAY OR LOSS IN MAIL

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

INTERRUPTION IN MAIL SERVICE

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

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

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

1836	Rectification of Obvious Errors 

PCT Rule 91.

Obvious Errors in Documents

91.1.Rectification

(a)	Subject to paragraphs (b) to (gquater), obvious errors in the inter-
national application or other papers submitted by the applicant may be rec-
tified.

(b)	Errors which are due to the fact that something other than what 
was obviously intended was written in the international application or 
other paper shall be regarded as obvious errors. The rectification itself 
shall be obvious in the sense that anyone would immediately realize that 
nothing else could have been intended than what is offered as rectification.

(c)	Omissions of entire elements or sheets of the international appli-
cation, even if clearly resulting from inattention, at the stage, for example, 
of copying or assembling sheets, shall not be rectifiable.

(d)	Rectification may be made on the request of the applicant. The 
authority having discovered what appears to be an obvious error may 
invite the applicant to present a request for rectification as provided in 
paragraphs (e) to  (gquater). Rule 26.4 shall apply mutatis mutandis to the 
manner in which rectifications shall be requested.

(e)	No rectification shall be made except with the express authori-
zation:

(i)	of the receiving Office if the error is in the request,

(ii)	of the International Searching Authority if the error is in any 
part of the international application other than the request or in any paper 
submitted to that Authority,

(iii)	of the International Preliminary Examining Authority if the 
error is in any part of the international application other than the request or 
in any paper submitted to that Authority, and

(iv)	of the International Bureau if the error is in any paper, other 
than the international application or amendments or corrections to that 
application, submitted to the International Bureau.

(f)	Any authority which authorizes or refuses any rectification shall 
promptly notify the applicant of the authorization or refusal and, in the 
case of refusal, of the reasons therefor. The authority which authorizes a 
rectification shall promptly notify the International Bureau accordingly. 
Where the authorization of the rectification was refused, the International 
Bureau shall, upon request made by the applicant prior to the time relevant 
under paragraph (gbis), (gter) or (gquater) and subject to the payment of a 
special fee whose amount shall be fixed in the Administrative Instructions, 
publish the request for rectification together with the international applica-
tion. A copy of the request for rectification shall be included in the com-
munication under Article 20 where a copy of the pamphlet is not used for 
that communication or where the international application is not published 
by virtue of Article 64(3).

(g)	The authorization for rectification referred to in paragraph (e) 
shall, subject to paragraphs (gbis), (gter)  and (gquater), be effective:

(i)	where it is given by the receiving Office or by the Interna-
tional Searching Authority, if its notification to the International Bureau 
reaches that Bureau before the expiration of 17 months from the priority 
date;

(ii)	where it is given by the International Preliminary Examining 
Authority, if it is given before the establishment of the international pre-
liminary examination report;

(iii)	where it is given by the International Bureau, if it is given 
before the expiration of 17 months from the priority date.

(gbis) If the notification made under paragraph (g)(i) reaches the Inter-
national Bureau, or if the rectification made under paragraph (g)(iii) is 
authorized by the International Bureau, after the expiration of 17 months 
from the priority date but before the technical preparations for interna-
tional publication have been completed, the authorization shall be effec-
tive and the rectification shall be incorporated in the said publication.

(gter) Where the applicant has asked the International Bureau to publish 
his international application before the expiration of 18 months from the 
priority date, any notification made under paragraph (g)(i) must reach, and 
any rectification made under paragraph (g)(iii) must be authorized by, the 
International Bureau, in order for the authorization to be effective, not 
later than at the time of the completion of the technical preparations for 
international publication.

(gquater) Where the international application is not published by virtue 
of Article 64(3), any notification made under paragraph (g)(i) must reach, 
and any rectification made under paragraph (g)(iii) must be authorized by, 
the International Bureau, in order for the authorization to be effective, not 
later than at the time of the communication of the international application 
under Article 20.

Obvious errors in the international application or other 
papers submitted by the applicant may generally be recti-
fied under PCT Rule 91, if the rectification is authorized, as 
required, within the applicable time limit. Any such rectifi-
cation is free of charge. The omission of entire sheets of the 
description cannot be rectified, even if resulting from inat-
tention at the stage of copying or assembling sheets.

Applicants often attempt to rely upon the priority appli-
cation to establish a basis for obvious error. The priority 
document (application) cannot be used to support obvious 
error corrections. The rectification is obvious only in the 
sense that anyone would immediately realize that nothing 
else could have been intended than what is offered as recti-
fication. For example, a misspelled word could be consid-
ered an obvious error subject to rectification. A missing 
chemical formula or missing line of text would not be con-
sidered obvious error subject to rectification.

Rectifications must be authorized:

(A)	If the error is in the request by the Receiving 
Office;

(B)	If the error is in the description, the claims, the 
drawings or the abstract by the International Searching 
Authority, or by the International Preliminary Examining 
Authority where the international application is pending 
before the latter Authority;

(C)	If the error is in any paper other than the interna-
tional application or amendments or corrections to it by the 
International Bureau.

The request for rectification must be addressed to the 
authority competent to authorize the rectification. It must 
be filed in time for the rectification to be authorized and for 
notification of the authorization to reach the International 
Bureau before the expiration of the applicable time limit, 
namely:

(A)	Where the authorization is given by the 
Receiving Office or the International Searching Authority 
its  notification must reach the International Bureau before 
the expiration of 17 months from the priority date (or later, 
before the technical preparations for international publica-
tion have been completed);

(B)	Where the authorization is given by the Inter 
national Preliminary Examining Authority it must be given 
before the establishment of the international preliminary 
examination report;

(C)	Where the authorization is given by the Inter 
national Bureau it must be given before the expiration of 17 
months from the priority date (or later, before the technical 
preparations for international publication have been com-
pleted).

The patent examiner, in his or her capacity as an officer 
of either the International Searching Authority or Interna-
tional Preliminary Examining Authority, informs the appli-
cant of the authorization or refusal to authorize the 
rectification of obvious errors. 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 
by use of Form PCT/IPEA/412.

Where the examiner discovers what might be considered 
an obvious error, an invitation to request rectification 
(Form PCT/ISA/216 or PCT/IPEA/411) should be mailed 
to applicant.

1840	The International Searching  
Authority

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, includ-
ing the collection of handling fees and their transmittal to the International 
Bureau.

(b)	The handling fee, preliminary examination fee, and any addi-
tional fees due for international preliminary examination shall be paid 
within such time as may be fixed by the Commissioner.

37 CFR 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 Receiv-
ing Office and in other Receiving Offices as may be agreed upon by the 
Commissioner, in accordance with 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  Interna-
tional 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

(4)	Transmitting the international search report to the applicant 
and the International Bureau.

The United States Patent and Trademark Office agreed 
to and was appointed by the PCT Assembly, to act as an 
International Searching Authority. As such an authority, a 
primary function is to establish documentary search reports 
on prior art with respect to inventions which are the subject 
of applications. See PCT Article 16.

Pursuant to an agreement concluded with the Interna-
tional Bureau, the USPTO, as an International Searching 
Authority, agreed to conduct international searches and pre-
pare international search reports, for, in addition to the 
United States of America, Mexico, Trinidad and Tobago, 
Brazil, Barbados, Israel, and New Zealand. The agreement 
stipulated the English language and specified that the sub-
ject matter to be searched is that which is searched or 
examined in United States national applications.

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 Arti-
cle 12(1)), the details of the transmittal are provided in PCT 
Rule 23.

THE MAIN PROCEDURAL STEPS IN THE 
INTERNATIONAL SEARCHING AUTHORITY

The main procedural steps that any international applica-
tion goes through in the International Searching Authority 
are (1) the making of the international search (PCT Article 
15), and (2) the preparing of the international search report 
(PCT Article 18 and PCT Rule 43).

COMPETENT INTERNATIONAL SEARCHING 
AUTHORITY

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

The United States Patent and Trademark Office has 
informed the International Bureau that in addition to the 
United States Patent and Trademark Office, the European 
Patent Office is competent as an International Searching 
Authority for searching all kinds of international applica-
tions filed in the United States Receiving Office on and 
after October 1, 1982. (PCT Article 16(2) and PCT Rule 
35.2(a)(i).

MATTERS TO BE CONSIDERED WHEN 
CHOOSING AN INTERNATIONAL SEARCHING 
AUTHORITY

Choosing The European Patent Office (EPO) as an Inter-
national Searching Authority could be advantageous to 
United States applicants who designate countries for Euro-
pean Regional patent protection in PCT International appli-
cations for the following reasons:

(A)	Claims may be amended according to EPO search 
results before entering the European Office as a designated 
Office.

(B)	The EPO search fee need not be paid upon enter-
ing the European Office as a designated Office.

(C)	The EPO search results may be available for use 
in a U.S. priority application.

(D)	The EPO international search may be obtained 
without the need for a European professional representa-
tive.

(E)	The European Patent Office search could provide 
the U.S. applicant with the benefit of a European art search 
(which may be different from applicant's own or the 
USPTO's search) before it is necessary to enter the Euro-
pean Patent Office or other designated Offices.

Some of the disadvantages that may occur due to the 
European Patent Office making the international search are 
the following:

(A)	Additional mailing time to and from the EPO 
Searching Authority may shorten the time for applicants to 
respond to various invitations from the EPO such as for 
comments on abstracts and payments of additional search 
fees as well as for PCT Article 19 amendments to the 
claims after issuance of the International Search Report.

(B)	There may be more difficulty in solving any pro-
cedural problems between the applicant and the EPO than 
with the USPTO due to physical distance and time differ-
ences.

The PCT Applicant's Guide provides helpful informa-
tion for communications with the European Patent Office.

1840.01	The European Patent Office as an 
International Searching Authority 

Since October 1, 1982, the European Patent Office 
(EPO) has been available as a Searching Authority for PCT 
applications filed in the United States Receiving Office. 
The choice of Searching Authority, either the EPO or the 
United States Patent and Trademark Office, must be made 
by the applicant on filing the international application. The  
choice of Searching Authority may also be indicated on 
Form PTO-1382 Transmittal Letter.

It should be noted that the European Patent Office will 
not search, by virtue of PCT Article 17(2)(a)(i), any 

international  application to the extent that it considers that 
the international application relates to subject matter set 
forth in PCT Rule  39.1. Furthermore, the European Patent 
Office is not equipped to search computer programs.

The international search fee for the European Patent 
Office must be paid to the United States Patent and Trade-
mark Office (USPTO) as a Receiving Office at the time of 
filing the international application. The search fee for the 
European Patent Office is announced weekly in the Official 
Gazette in United States dollars. The search fee will change 
as costs and exchange rates require. If exchange rates fluc-
tuate significantly, the fee may change frequently. Notice of 
changes will be published in the Official Gazette shortly 
before the effective date of any change.

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

A revised fee calculation sheet (Form PCT/RO/101, 
Annex) having appropriate spaces to indicate the choice of 
International Searching Authority has been developed so 
that applicants may indicate which International Searching 
Authority is to make the search.

1842	Chapter I Basic Flow

1843	The International Search

PCT Article 17.

Procedure before the International Searching Authority

(1)	Procedure before the International Searching Authority shall be 
governed by the provisions of this Treaty, the Regulations, and the agree-
ment which the International Bureau shall conclude, subject to this Treaty 
and the Regulations, with the said Authority.

(2)(a)	If the International Searching Authority considers:

(i)	that the international application relates to a subject matter 
which the International Searching Authority is not required, under the 
Regulations, to search, and in the particular case decides not to search, or

(ii)	that the description, the claims, or the drawings, fail to com-
ply with the prescribed requirements to such an extent that a meaningful 
search could not be carried out, the said Authority shall so declare and 
shall notify the applicant and the International Bureau that no international 
search report will be established.

(b)	If any of the situations referred to in subparagraph (a) is 
found to exist in connection with certain claims only, the international 
search report shall so indicate in  respect of such claims, whereas, for the 
other claims, the said report shall be established as provided in Article 18. 

(3)(a)	If the International Searching Authority considers that the 
international application does not comply with the requirement of unity of 
invention as set forth in the Regulations, it shall invite the applicant to pay 
additional fees. The International Searching Authority shall establish the 
international search report on those parts of the international application 
which relate to the invention first mentioned in the claims (main inven-
tion) and, provided the required additional fees have been paid within the 
prescribed time limit, on those parts of the international application which 
relate to inventions in respect of which the said fees were paid.

(b)	The national law of any designated State may provide that, 
where the national Office of the State finds the invitation, referred to in 
subparagraph (a), of the International Searching Authority justified and 
where the  applicant has not paid all additional fees, those parts of the 
international application which consequently have not been searched shall, 
as far as effects in the State are concerned, be considered withdrawn 
unless a special fee is paid by the applicant to the national Office of that 
State. 

PCT Rule 33.

Relevant Prior Art for the International Search

33.1.Relevant Prior Art for the International Search

(a)	For the purposes of Article 15(2), relevant prior art shall consist 
of everything which has been made available to the public anywhere in the 
world by means of written disclosure (including drawings and other illus-
trations) and which is capable of being of assistance in determining that 
the claimed invention is or is not new and that it does or does not involve 
an inventive step (i.e., that it is or is not obvious), provided that the mak-
ing available to the public occurred prior to the international filing date.

(b)	When any written disclosure refers to an oral disclosure, use, 
exhibition, or other means whereby the contents of the written disclosure 
were made available to the public, and such making available to the public 
occurred on a date prior to the international filing date, the international 
search report shall separately mention that fact and the date on which it 
occurred if the making available to the public of the written disclosure 
occurred on a date which is the same as, or later than, the international fil-
ing date.

(c)	Any published application or any patent whose publication date 
is the same as, or later than, but whose filing date, or, where applicable, 
claimed priority date, is earlier than the international filing date of the 
international application searched, and which would constitute relevant 
prior art for the purposes of Article  15(2) had it been published prior to 
the international filing date, shall be specially mentioned in the interna-
tional search report.

33.2.Fields to Be Covered by the International Search

(a)	The international search shall cover all those technical fields, 
and shall be carried out on the basis of all those search files, which may 
contain material pertinent to the invention.

(b)	Consequently, not only shall the art in which the invention is 
classifiable be searched but also analogous arts regardless of where classi-
fied.

(c)	The question what arts are, in any given case, to be regarded as 
analogous shall be considered in the light of what appears to be the neces-
sary essential function or use of the invention and not only the specific 
functions expressly indicated in the international application.

(d)	The international search shall embrace all subject matter that is 
generally recognized as equivalent to the subject matter of the claimed  
invention for all or certain of its features, even though, in its specifics, the 
invention as described in the international application is different.

33.3.Orientation of the International Search

(a)	International search shall be made on the basis of the claims, 
with due regard to the description and the drawings (if any) and with par-
ticular emphasis on the inventive concept towards which the claims are 
directed.

(b)	In so far as possible and reasonable, the international search 
shall cover the entire subject matter to which the claims are directed or to 
which they might reasonably be expected to be directed after they have 
been amended.

PCT Rule 39.

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

39.1.Definition

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

(i)	scientific and mathematical theories,

(ii)	plant or animal varieties or essentially biological processes for 
the production of plants and animals, other than microbiological processes 
and the products of such processes,

(iii)	schemes, rules or methods of doing business, performing purely 
mental acts or playing games,

(iv)	methods for treatment of the human or animal body by surgery 
or therapy, as well as diagnostic methods,

(v)	mere presentations of information,

(vi)	computer programs to the extent that the International Searching 
Authority is not equipped to search prior art concerning such programs.

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

There are several benefits to applicants who use the 
PCT. One of the three most commonly mentioned benefits 
is the international search (and consequently the interna-
tional search report). The others are the time delay gained 
before having to enter the national phase and the monetary 
savings since filing and translation fees are also deferred or 
indeed, may not be necessary depending upon the search 
results.  The international search gives applicants the bene-
fit of knowing the status of the prior art with respect to their 
invention before time for entry into the national stage. This 
affords applicants the time to make economic decisions 
whether to perfect their national stage filings.

The objective of the international search is to discover 
relevant prior art (PCT Article 15(2)). "Prior art" consists 
of everything which has been made available to the public 
anywhere in the world by means of written disclosure 
(including drawings and other illustrations); it is  relevant  
in respect of the international application if it is capable of 
being of assistance in determining that the claimed inven-
tion is or is not new and that the claimed invention does or 
does not involve an inventive step (i .e., that it is or is not 
obvious), and if the making available to the public occurred 
prior to the international filing date. For further details, see 
PCT Rule 33. The international search is made on the basis 
of the claims, with due regard to the description and the 
drawings (if any) contained in the international application 
(PCT Article 15(3)). Categories of relevant prior art as 
described in PCT Rule 33.1 are indicated in the search 
report under the section "Documents Considered To Be 
Relevant." The various letter designations are defined on 
the search report form (see PCT/ISA/210).

It is pointed out, for example, that:

(A)	A category X reference defeats novelty or defeats 
inventive step when the reference is considered alone;

(B)	A category Y reference is said to defeat or refute 
inventive step when combined with one or more other such 
references - the combination being obvious to a person 
skilled in the art;

(C)	A category A reference is one showing the general 
state of the art but would not be considered to be of particu-
lar relevance;

(D)	A category E reference is an earlier document 
which is published on or after the international filing date;

(E)	A category P reference is a document published 
prior to the international filing date but later than the 
claimed priority date (commonly called an intervening ref-
erence).

These are the most commonly used categories of refer-
ences.

The examiner should not view these categories strictly in 
the sense that they have a direct comparison to U.S. appli-
cation of prior art references, for example, a category X ref-
erence defeats novelty and in that sense, it is closely 
analogous to U.S. consideration of  35 U.S.C. 102 prior art. 
However, a category X reference can also defeat inventive 
step which is analogous to U.S. consideration of  35 U.S.C. 
103 prior art.

DOCUMENTS SEARCHED BY THE 
INTERNATIONAL SEARCHING AUTHORITY

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

CERTAIN SUBJECT MATTER NEED NOT BE 
SEARCHED

No International Searching Authority is required to per-
form an international search where the international appli-
cation relates to any of the following subject matters:

(A)	Scientific and mathematical theories;

(B)	Plant or animal varieties or essentially biological 
processes for the production of plants and animals, other 
than microbiological processes and the products of such 
processes;

(C)	Schemes, rules or methods of doing business, per-
forming purely mental acts or playing games;

(D)	Methods for treatment of the human or animal 
body by surgery or therapy, as well as diagnostic methods;

(E)	Mere presentation of information; and

(F)	Computer programs to the extent that it, the said 
Authority is not equipped to search prior art (PCT Article 
17(2)(a)(i) and PCT Rule 39).

The applicant considering the filing of an international 
application may be well advised not to file one if the sub-
ject matter of the application falls into one of the above 
mentioned areas. If he or she still does file, the Interna-
tional Searching Authority may declare that it will not 
establish an international search report. It is to be noted, 
nevertheless, that the lack of the international search report 
in such case will not have, in itself, any influence on the 
validity of the international application and the latter's pro-
cessing will continue, including its communication to the 
designated Offices.

The USPTO has declared that it will search and examine, 
in international applications, all subject matter searched 
and examined in U.S. national applications.

NO SEARCH REQUIRED IF CLAIMS ARE 
UNCLEAR

If the International Searching Authority considers that 
the description, the claims, or the drawings fail to comply 
with the prescribed requirements to such an extent that a  
meaningful search could not be carried out, it may declare 
that it will not establish a search report (PCT Article 
17(2)(a) (ii) and (b)). Such declaration may also be made in 
respect of some of the claims only. The lack of the interna-
tional search report will not, in itself, have any influence on 
the validity of the international application and the latter's 
processing will continue, including its communication to 
the designated Offices. Where only some of the claims are 
found to be  unsearchable, the International Searching 
Authority will not search them, but will search the rest of 
the international application. Any unsearched claims will 
be indicated in the Search Report.

1844	The International Search Report 

PCT Article 18.

The International Search Report

(1)	The international search report shall be established within the 
prescribed time limit and in the prescribed form.

(2)	The international search report shall, as soon as it has been 
established, be transmitted by the International Searching Authority to the 
applicant and the International Bureau.

(3)	The international search report or the declaration referred to in 
Article 17(2)(a) shall be translated as provided in the Regulations. The 
translations shall be prepared by or under the responsibility of the Interna-
tional Bureau.

The results of the international search will be recorded in 
the international search report (Form PCT/ISA/210), which 
is transmitted with Form PCT/ISA/220 to the applicant and 
with Form PCT/ISA/219 to the International Bureau. The 
search report will be published by the International Bureau 
and will serve as a basis for examination of the interna-
tional application by the designated Offices and the Inter-
national Preliminary Examination Authority.

The time limit for establishing the international search 
report or the declaration under Article 17(2)(a) that no 
search report will be established is 3 months from receipt of 
the search copy by the searching authority or 9 months 
from the priority date, whichever time limit expires later. 
To ensure timeliness, Office policy is to set a shorter period 
for the search by the examiner so that any corrections to the 
report can be made timely and also to allow for review and 
mailing to the International Bureau. The Office strives to 
get all search reports to the International Bureau by 16 
months from the priority date or, where there is no priority 
date, 9 months from the international filing date. See PCT 
Rule 42.1.

The search report should not contain any expressions of 
opinion, reasoning, argument or explanation as to any cited 
prior art. Any such comments would be inappropriate and 
should be used only if preliminary examination is or 
becomes a part of the international proceeding. The search 
report is only for the purpose of identifying prior art and 
not for commenting thereupon.

The printed international search report form (Form PCT/
ISA/210) to be transmitted to the applicant and to the Inter-
national Bureau contains two main sheets ("first sheet" and 
"second sheet") to be used for all searches. These two main 
sheets are intended for recording the important features of 
the search such as the fields searched and for citing docu-
ments revealed by the search. The printed international 
search report form also contains four optional continuation 
sheets for use where necessary. There are two  continuation 
sheets for each of the "first sheet" and the "second sheet": 
"continuation of first sheet (1)" and "continuation of first 
sheet (2)", and "continuation of second sheet" and "patent 
family annex", respectively. The patent family annex sheet 
is not currently used by the United States International 
Searching Authority since patent family information is not 
readily available to the examiner. The "continuation of first 
sheet (1)" is to be used only where an indication is made on 
the first sheet that claims were found unsearchable (item 1) 
and/or unity of invention is lacking (item 2). The relevant 
indications must then be made on that continuation sheet. 
The "continuation of first sheet (2)" is to contain the text of 
the abstract where an abstract or an amended abstract has 
been established by the International Searching Authority 
(item 5) and an indication to that effect is made on the first 
sheet. The "continuation of second sheet" is to be used 
where the space on the second sheet is insufficient for the 
citation of documents. Lastly, the "extra sheet" may be 
used whenever additional space is required to complete 
information from the other sheets.

It is to be noted that only the "second sheet", the "contin-
uation of second sheet" (if any) and the "continuation of 
first sheet (1)" (if any), will be the subject of international 
publication, as the "first sheet" and the "continuation of 
first sheet (2)" (if any) contain only information which will 
already appear on the front page of the pamphlet.

The international search report must list the classifica-
tion identification of the fields searched using the IPC.

Where the international search report is entirely or partly 
based on a previous search made for an application relating 
to a similar subject, the relevant search files consulted for 
this previous search must also be identified in the report as 
having been consulted for the international application in 
question.

RESTRICTION OF THE SUBJECT OF THE 
INTERNATIONAL SEARCH

The report must indicate whether the search was 
restricted or not for any of the reasons indicated below.

If any such restrictions were applied, the claims in 
respect of which a search has not been carried out must be 
identified and the reasons of this should be indicated.

The three categories where such restrictions may arise 
are:

(A)	Lack of unity of invention;

(B)	Claims drawn to subject matter excluded from the 
search;

(C)	Claims in respect of which a meaningful search 
cannot be carried out.

Form PTO/ISA/210. Patent Cooperation Treaty International Search Report

Form PTO/ISA/210-cont.

Form PTO/ISA/210-cont.

Form PTO/ISA/210-cont.

AUTHENTICATION AND DATES

The identification of the International Searching Author-
ity which established the international search report and the 
date on which the report was drawn up should be indicated 
in the search report. This date should be that of the drafting 
of the report by the search examiner who carried out the 
search. In addition to the date of actual completion of the 
international search, the international search report shall 
also indicate the date on which it was mailed to the appli-
cant, which is important for the computation of the time 
limit for filing amendments to the claims under PCT Arti-
cle 19. See PCT Rules 43.1 and 43.2.

The international search report shall indicate the name of 
an authorized officer of the International Searching Author-
ity which means the person who actually performed the 
search work and prepared the search report. See PCT Rule 
43.8. Note that the name is required but not the signature.

CONTENTS OF THE INTERNATIONAL SEARCH  
REPORT

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

1844.01	Time for the International Search 
Report

Publication of the international application occurs at 18 
months from the earliest priority date or, where there is no 
priority date, 18 months from the international application 
filing date. The Office goal is to have the search report 
mailed in sufficient time to reach the International Bureau 
by the end of 16 months from the priority date or 9 months 
from the filing date if no priority claim is made. This is 
necessary since the technical preparations for publication 
are completed by 17.5 months from the earliest priority 
date. In view of the treaty mandated publication and the 
time needed for technical preparation, the Office sets time 
periods for completion of the search report which will 
ensure sufficient time to complete  internal processing and 
review and achieve receipt of search report at the Interna-
tional Bureau by the 16th  month from the priority date.  
See PCT Rule 42.1 for time limit for the search.

Thus, as a matter of practice, each examining group 
tends to set its internal time period for completion of the 
search  report to meet the time limits set by the Interna-
tional Application Processing Division. The International 
Application Processing Division sets its time for comple-
tion to ensure adequate time for review, corrections (where 
necessary) and mailing.

The date of transmittal of the search report becomes crit-
ical for applicants since it starts the 2 month period for sub-
mission of amendments to the claims under Article 19.  See 
PCT Rule 46.1.

The Patent Cooperation Treaty is extremely date sensi-
tive and for that reason, examiners are encouraged to com-
plete the international search and prepare the search report 
promptly after receipt. Monitoring and tracking procedures 
have been devised to minimize the risk of late search 
reports and/or date transmission thereof.

1846	Sections of the Articles, Regulations, 
and Administrative Instructions 
Under the PCT Relevant to the 
International Search

PCT Articles 15 - 20 (Appendix T);

PCT Rules 33 - 47 (Appendix T); and

Administrative Instructions Sections 501 - 516

(Appendix AI).

1847	Refund of International Search Fee

37 CFR 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, will be refunded.

(b)	[Reserved]

(c)	Refund of the supplemental search fees will be made if such 
refund is determined to be warranted by the Commissioner or the Com-
missioner's designee acting under PCT Rule 40.2(c).

(d)	The international and search fees will be refunded if no inter 
national 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)).

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 accompa-
nied by (1) a protest and (2) a request for refund of the sup-
plemental search fee.

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 Search-
ing Authority. The transmittal fee will not be refunded.

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. This 
is clearly necessary where applicant has chosen the Euro-
pean Patent Office as the search authority.

1848	Sequence Listings

PCT Rule 13ter.

Nucleotide and/or Amino Acid Sequence Listings

13ter.1.Sequence Listing for International Authorities

(a)	Where the International Searching Authority finds that the inter-
national application contains disclosure of one or more nucleotide and/or 
amino acid sequences but:

(i)	the international application does not contain a sequence list-
ing complying with the standard provided for in the Administrative 
Instructions, that Authority may invite the applicant to furnish to it, within 
a time limit fixed in the invitation, a sequence listing complying with that 
standard;

(ii)	the applicant has not already furnished a sequence listing in 
computer readable form complying with the standard provided for in the 
Administrative Instructions, that Authority may invite the applicant to fur-
nish to it, within a time limit fixed in the invitation, a sequence listing in 
such a form complying with that standard.

	(b)  	[Deleted]

(c)	If the applicant does not comply with an invitation under para-
graph (a) within the time limit fixed in the invitation, the International 
Searching Authority shall not be required to search the international appli-
cation to the extent that such noncompliance has the result that a meaning-
ful search cannot be carried out.

(d)	Where the International Searching Authority finds that the 
description does not comply with Rule 5.2(b), it shall invite the applicant 
to file 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.

(e)	Paragraphs (a) and (c) shall apply mutatis mutandis to the proce-
dure before the International Preliminary Examining Authority.

(f)	Any sequence listing not contained in the international applica-
tion as filed shall not, subject to Article 34, form part of the international 
application.

PCT Administrative Instruction Section 513.

 Sequence Listings

(a)	Where the International Searching Authority receives a correc-
tion of a defect under Rule 13  ter.1(d), it shall:

(i)	indelibly mark, in the upper right-hand corner of each 
replacement sheet, the international application number and the date on 
which that sheet was received;

(ii)	indelibly mark, in the middle of the bottom margin of each 
replacement sheet, the words "SUBSTITUTE SHEET (RULE 13  
ter.1(d))" or their equivalent in the language of publication of the interna-
tional application;

(iii)	indelibly mark on the letter containing the correction, or 
accompanying any replacement sheet, the date on which that letter was 
received;

(iv)	keep in its files a copy of the letter containing the correction 
or, when the correction is contained in a replacement sheet, the replaced 
sheet, a copy of the letter accompanying the replacement sheet, and a copy 
of the replacement sheet;

(v)	promptly transmit any letter and any replacement sheet to the 
International Bureau, and a copy thereof to the receiving Office.

(b)	Where the international search report is based on a sequence 
listing that was not contained in the international application as filed but 
was furnished subsequently to the International Searching Authority, the 
international search report shall so indicate.

(c)	Where a meaningful international search cannot be carried out 
because a sequence listing is not available to the International Searching 
Authority in the required form, that Authority shall so state in the interna-
tional search report.

(d)	The International Searching Authority shall indelibly mark, in 
the upper right-hand corner of the first sheet of any sequence listing in 
printed form which was not contained in the international application as 
filed but was furnished subsequently to that Authority, the words "SUB-
SEQUENTLY FURNISHED SEQUENCE LISTING" or their equivalent 
in the language of publication of the international application.

(e)	The International Searching Authority shall keep in its files:

(i)	any sequence listing in printed form which was not con-
tained in the international application as filed but was furnished subse-
quently to that Authority; and

(ii)	any sequence listing in computer readable form.

Where an international application contains disclosure of 
a nucleotide and/or amino acid sequence, the description 
must contain a listing of the sequence complying with the 
Standard specified in the Administrative Instructions. See  
MPEP ? 1823.02. If the International Searching Authority 
finds that an international application contains such a dis-
closure but that the description does not include such a list-
ing or that the listing included does not comply with that 
Standard, the International Searching Authority may invite 
the applicant to furnish a listing complying with that Stan-
dard.

If the International Searching Authority finds that a 
sequence listing is not in a computer readable form pro-
vided for in the Administrative Instructions, it may invite 
the applicant to furnish a listing to it in such a form.  Again, 
the International Searching Authority would invite the 
applicant to supply the computer readable diskette or other 
acceptable electronic medium.

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

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

1849	Subject Matter Excluded From 
International Search

The examiner is not required to perform an international 
search on claims which relate to any of the following sub-
ject matter:

(A)	Scientific and mathematical theories;

(B)	Plant or animal varieties or essentially biological 
processes for the production of plants and animals, other 
than microbiological processes and the products of such 
processes;

(C)	Schemes, rules or methods of doing business, per-
forming purely mental acts or playing games;

(D)	Methods for treatment of the human or animal 
body by surgery or therapy, as well as diagnostic methods;

(E)	Mere presentation of information; and

(F)	Computer programs to the extent that the Author-
ity is not equipped to search prior art concerning such pro-
grams.

See PCT Rule 39. In addition, the examiner is not 
required to search the international application, to the 
extent that a meaningful search cannot be carried out, in 
certain cases where a nucleotide and/or amino acid 
sequence listing is not furnished in accordance with the 
prescribed standard or in a computer readable form. See 
Administrative Instructions Section 513(c). However, the 
U.S. Patent & Trademark Office has declared that it will 
search and examine all subject matter searched and exam-
ined in U.S. national applications. If none of the claims are 
required to be searched, the examiner will declare that no 
search report will be established using form PCT/ISA/203. 
It should, nevertheless, be noted that the lack of an interna-
tional search report in such a case does not, in itself, have 
any influence on the validity of the international  applica-
tion, the processing of which, including its communication 
to the designated Offices, continues.

1850	Unity of Invention Before the 
International Searching Authority

PCT Rule 40.

Lack of Unity of Invention (International Search)

40.1.Invitation to Pay

The invitation to pay additional fees provided for in Article 17(3)(a) 
shall specify the reasons for which the international application is not con-
sidered as complying with the requirement of unity of invention and shall 
indicate the amount to be paid.

40.2.Additional Fees

(a)	The amount of the additional fee due for searching under Article 
17(3)(a) shall be determined by the competent International Searching 
Authority.

(b)	The additional fee due for searching under Article 17(3)(a) shall 
be payable direct to the International Searching Authority.

(c)	Any applicant may pay the additional fee under protest, that is, 
accompanied by a reasoned statement to the effect that the international 
application complies with the requirement of unity of invention or that the 
amount of the required additional fee is excessive. Such protest shall be 
examined by a three-member board or other special instance of the Inter-
national Searching Authority or any competent higher authority, which, to 
the extent that it finds the protest justified, shall order the total or partial 
reimbursement to the applicant of the additional fee. On the request of the 
applicant, the text of both the protest and the decision thereon shall be 
notified to the designated Offices together with the international search 
report. The applicant shall submit any translation thereof with the furnish-
ing of the translation of the international application required under Arti-
cle 22.

(d)	The three-member board, special instance or competent higher 
authority, referred to in paragraph (c), shall not comprise any person who 
made the decision which is the subject of the protest.

*****

40.3.Time Limit

The time limit provided for in Article 17(3)(a) shall be fixed, in each 
case, according to the circumstances of the case, by the International 
Searching Authority; it shall not be shorter than 15 or 30 days, respec-
tively, depending on whether the applicant's address is in the same country 
as or in a different country from that in which the International Searching 
Authority is located, and it shall not be longer than 45 days, from the date 
of the invitation.

PCT Administrative Instruction Section 502.

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

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

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

(a)	An international and a national stage application shall relate to 
one invention only or to a group of inventions so linked as to form a single 
general inventive concept ("requirement of unity of invention"). Where a 
group of inventions is claimed in an application, the requirement of unity 
of invention shall be fulfilled only when there is a technical relationship 
among those inventions involving one or more of the same or correspond-
ing special technical features. The expression "special technical features" 
shall mean those technical features that define a contribution which each 
of the claimed inventions, considered as a whole, makes over the prior art.

(b)	An international or a national stage application  containing 
claims to different categories of invention will be considered to have unity 
of invention if the claims are drawn only to one of the following combina-
tions of categories:

(1)	A product and a process specially adapted for the manufac-
ture of said product; or

(2)	A product and a process of use of said product; or

(3)	A product, a process specially adapted for the manufacture 
of the said product, and a use of the said product; or

(4)	A process and an apparatus or means specifically designed 
for carrying out the said process; or

(5)	A product, a process specially adapted for the manufacture 
of the said product, and an apparatus or means specifically designed for 
carrying out the said process.

(c)	If an application contains claims to more or less than one of the 
combinations of categories of invention set forth in paragraph (b) of this 
section, unity of invention might not be present.

(d)	If multiple products, processes of manufacture or uses are 
claimed, the first invention of the category first mentioned in the claims of 
the application and the first recited invention of each of the other catego-
ries related thereto will be considered as the main invention in the claims, 
see PCT Article 17(3)(a) and ? 1.476(c).

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

37 CFR 1.477.  Protest to lack of unity of invention before the 
International Searching Authority.

(a)	If the applicant disagrees with the holding of lack of unity of 
invention by the International Searching Authority, additional fees may be 
paid under protest, accompanied by a request for refund and a statement 
setting forth reasons for disagreement or why the required additional fees 
are considered excessive, or both (PCT Rule 40.2(c)).

(b)	Protest under paragraph (a) of this section will be examined by 
the Commissioner or the Commissioner's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees or a 
portion thereof will be refunded.

(c)	An applicant who desires that a copy of the protest and the deci-
sion thereon accompany the international search report when forwarded to 
the Designated Offices, may notify the International Searching Authority 
to that effect any time prior to the issuance of the international search 
report. Thereafter, such notification should be directed to the International 
Bureau (PCT Rule 40.2(c)). 

THE REQUIREMENT FOR "UNITY OF 
INVENTION"

Any international application must relate to one inven-
tion only or to a group of inventions so linked as to form a 
single general inventive concept (PCT Article 3(4)(iii) and 
17(3)(a), PCT Rule  3.1, and  37 CFR 1.475). Observance 
of this requirement is checked by the International Search-
ing Authority and may be relevant in the national (or 
regional) phase.

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

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

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

PCT Rule 13.2, as it was modified effective July 1, 1992, 
no longer specifies the combinations of categories of inven-
tion which are considered to have unity of invention. Those 
categories, which now appear as a part of Annex B to the 
Administrative Instructions, has been substituted with a 
statement describing the method for determining whether 
the requirement of unity of invention is satisfied. Unity of 
invention exists only when there is a technical relationship 
among the  claimed inventions involving one or more spe-
cial technical features. The term "special technical fea-
tures" is defined as meaning those technical features that 
define a contribution which each of the inventions consid-
ered as a whole, makes over the prior art. The determina-
tion is made based on the contents of the claims as 
interpreted in light of the description and drawings. Annex 
B also contains examples concerning unity of invention.

A.	Independent and Dependent Claims

Unity of invention has to be considered in the first place 
only in relation to the independent claims in an interna-
tional application and not the dependent claims. By "depen-
dent" claim is meant a claim which contains all the features 
of another claim and is in the same category of claim as that 
other claim (the expression "category of claim" referring to 
the classification of claims according to the subject matter 
of the invention claimed, for example, product, process, use 
or apparatus or means, etc.).

If the independent claims avoid the prior art and satisfy 
the requirement of unity of invention, no problem of lack of 
unity arises in respect of any claims that depend on the 
independent claims. In particular, it does not matter if a 
dependent claim itself contains a further invention. Equally, 
no problem arises in the case of a genus/species situation 
where the genus claim avoids the prior art.  Moreover, no 
problem arises in the case of a combination/subcombina-
tion situation where the subcombination claim avoids the 
prior art and the combination claim includes all the features 
of the subcombination.

If, however, an independent claim does not avoid the 
prior art, then the question whether there is still an inven-
tive link between all the claims dependent on that claim 
needs to be carefully considered.  If there is no link remain-
ing, an objection of lack of unity (that is, arising only after 
assessment of the prior art) may be raised.  Similar consid-
erations apply in the case of a genus/species or combina-
tion/subcombination situation.

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

B.	Illustrations of Particular Situations 

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

(A)	Combinations of different categories of claims;

(B)	So-called "Markush practice"; and

(C)	Intermediate and final products.

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

Examples to assist in understanding the interpretation on 
the three areas of special concern referred to in the preced-
ing paragraph are set out below.

C.	Combinations of Different Categories of Claims

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

(A)	In addition to an independent claim for a given 
product, an independent claim for a process specially 
adapted for the manufacture of the said product, and an 
independent claim for a use of the said product; or

(B)	In addition to an independent claim for a given 
process, an independent claim for an apparatus or means 
specifically designed for carrying out the said process; or

(C)	In addition to an independent claim for a given 
product, an independent claim for a process specially 
adapted for the manufacture of the said product and an 
independent claim for an apparatus or means specifically  
designed for carrying out the said process, it being under-
stood that a process is specially adapted for the manufac-
ture of a product if it inherently results in the product and 
that an apparatus or means is specifically designed for car-
rying out a process if the contribution over the prior art of 
the apparatus or means corresponds to the contribution the 
process makes over the prior art.

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

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

D.	"Markush Practice"

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

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

(A)	All alternatives have a common property or activ-
ity; and

(B)(1)	A common structure is present, i.e., a significant 
structural element is shared by all of the alternatives; or

(C)(2)	In cases where the common structure cannot be 
the unifying criteria, all alternatives belong to a recognized 
class of chemical compounds in the art to which the inven-
tion pertains.

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

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

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

When dealing with alternatives, if it can be shown that at 
least one Markush alternative is not novel over the prior art, 
the question of unity of invention shall be reconsidered by 
the examiner. Reconsideration does not necessarily imply 
that an objection of lack of unity shall be raised.

E.	Intermediate and Final Products 

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

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

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

(A)	The intermediate and final products have the same 
essential structural element, in that:

(1)	The basic chemical structures of the intermedi-
ate and the final products are the same, or

(2)	The chemical structures of the two products are 
technically closely interrelated, the intermediate incorpo-
rating an essential structural element into the final product; 
and

(B)	The intermediate and final products are techni-
cally interrelated, this meaning that the final product is 
manufactured directly from the intermediate or is separated 
from it by a small number of intermediates all containing 
the same essential structural element.

Unity of invention may also be considered to be present 
between intermediate and final products of which the struc-
tures are not known, for example, as between an intermedi-
ate having a known structure and a final product the 
structure of which is not known, or as between an interme-
diate of unknown structure and a final product of unknown 
structure. In order to satisfy unity in such cases, there shall 
be sufficient evidence to lead one to conclude that the inter-
mediate and final products are technically  closely interre-
lated as, for example, when the intermediate contains the 
same essential element as the final product or incorporates 
an essential element into the final product.

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

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

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

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

As long as unity of invention can be recognized applying 
the above interpretations, the fact that, besides the ability to 
be used to produce final products, the intermediates also 
exhibit other possible effects or activities shall not affect 
the decision on unity of invention.

PCT Rule 13.3 requires that the determination of the 
existence of unity of invention be made without regard to 
whether the inventions are claimed in separate claims or as 
alternatives within a single claim.

PCT Rule 13.3 is not intended to constitute an encour-
agement to the use of alternatives within a single claim, but 
is intended to clarify that the criterion for the determination 
of unity of invention (namely, the method contained in Rule 
13.2) remains the same regardless of the form of claim 
used.

PCT Rule 13.3 does not prevent an International Search-
ing or Preliminary Examining Authority or an Office from 
objecting to alternatives being contained within a single 
claim on the basis of considerations such as clarity, the con-
ciseness of claims or the claims fee system applicable in 
that Authority or Office.

LACK OF UNITY OF INVENTION

See Annex B of the Administrative Instructions for 
examples of unity of invention.

The search fee which the applicant is required to pay is 
intended to compensate the International Searching 
Authority for carrying out an international search on the 
international application, but only where the international 
application meets the "requirement of unity of invention". 
That means that the international application must relate to 
only one invention or must relate to a group of inventions 
which are so linked as to form a single general inventive 
concept (PCT Articles 3(4)(iii) and 17(3)(a)).

If the International Searching Authority finds that the 
international application does not comply with the require-
ment of unity of invention, the applicant will be invited to 
pay additional search fees. The International Searching 
Authority will specify the reasons for its findings and indi-
cate the number of additional fees to be paid (PCT Rules 
40.1, 40.2(a) and (b)). Such additional fees are payable 
directly to the International Searching Authority which is 
conducting the search, either the United States Patent and 
Trademark Office or European Patent Office, within the 
time limit fixed, which must not be shorter than 15 days, if 
the applicant's address is in the same country as the Interna-
tional Searching Authority; or 30 days, if applicant's 
address is in a country different than the country of the 
International Searching Authority; and not longer than 45 
days from the date of the invitation (PCT Rule 40.3). The 
search fee amounts for the U.S. and the European Patent 
Office are found in each weekly edition of the Official 
Gazette.

The International Searching Authority will establish the 
international search report on those parts of international 
application which relate to the "main invention," that is, the 
invention or the group of inventions so linked as to form a 
single general inventive concept first mentioned in the 
claims (PCT Article 17 (3)(a)).  Moreover, the international 
search report will be established also on those parts of the 
international application which relate to any invention (or 
any group of inventions so linked as to form a single gen-
eral inventive concept) in respect of which the applicant 
has paid any additional fee within the prescribed time lim-
its.

Any applicant may pay the additional fee under protest, 
that is, accompanied by a reasoned statement to the effect 
that the international application complies with the require-
ment of unity of invention or that the amount of the 
required additional fee is excessive (PCT Rule 40.2(c)). 
Any such protest filed with the U.S. International Search-
ing Authority will be examined and decided by the Group 
Director (37 CFR 1.477). To the extent that the applicant's 
protest is found to be justified, total or partial reimburse-
ment of the additional fee will be made. On the request of 
the applicant, the text of both the protest and the decision 
thereon is sent to the designated Offices together with the 
international search report (37 CFR 1.477).

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

See  MPEP ? 1875.01 for telephone unity practice. It 
applies in the same manner under Chapter I.

UNITY OF INVENTION - NUCLEOTIDE 
SEQUENCES

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

The Commissioner has decided sua sponte to partially 
waive  37 CFR 1.475 and 1.499 et seq. to permit applicants 
to claim up to ten (10) nucleotide sequences that do not 
have the same or corresponding special technical feature 
without the payment of an additional fee.  The PCT permits 
inventions that lack unity of invention to be maintained in 
the same international application for payment of addtional 
fees. Thus, in international applications, for each group for 
which applicant has paid additional international search 
and/or preliminary examination fees, the PTO has deter-
mined that up to four (4) such additional sequences per 
group is a reasonable number for examination.  Further, 
claims directed to the selected sequences will be examined 
with claims drawn to any sequence combinations which 
have a common technical feature with the selected 
sequences. Nucleotide sequences encoding the same pro-
tein are considered to satisfy the unity of invention standard 
and will continue to be examined together.

See  MPEP ? 803.04 for examples of nucleotide 
sequence claims impacted by this partial waiver of  37 CFR 
1.475 and 1.499 et seq.

1851	Identification of Patent Documents 
[R-1]

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

The standard codes for identifying different kinds of 
patent documents are found in the "WIPO Handbook on 
Industrial Property Information and Documentation" - 
WIPO Standard ST.16 which is published by the World 
Intellectual Property Organization. The listing is extensive. 
The Special Program Examiner in each examining Group 
has a complete copy of Standard ST.16. Provided herein is 
an abbreviated version representing the countries and codes 
commonly used by the examiner in preparing search 
reports.

U.S. patent documents, for example, are Code A docu-
ments generally. Reexamination certificates are Code B 
documents. All nonpatent literature documents are Code N. 
Numerical designations which are sometimes found on 
published documents along with the letter code designation 
should be used by the examiner only if such numerical des-
ignation is on the document. Numerical codes along with 
letter codes can be found, for example, on certain published 
patent documents such as the German Offenlegungsschrift 
and published international applications. If numerical des-
ignations are not provided, the examiner should use only 
the letter code designation.

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

In the case of a patent document:

(A)	The Office that issued the document, by the two 
letter code (WIPO Standard ST.3);

(B)	The number of the document as given to it by the 
Office that issued it (for Japanese patent documents the 
indication of the year of the reign of the Emperor must pre-
cede the serial number of the patent document);

(C)	The kind of document, by the appropriate symbols 
as indicated on the original document or as given in Appen-
dix II to WIPO Standard ST.16;

(D)	The name of the patentee or applicant (in capital 
letters, where appropriate, abbreviated);

(E)	The date of publication of the cited patent docu-
ment indicated thereon;

(F)	Where applicable, the pages, columns or lines 
where the relevant passages appear, or the relevant figures 
of the drawings.

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

JP 50-14535 B (NCR CORP.) 28 May 1975 (28.05.75), 
see column 4, lines 3 to 27.

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

US 4,540,573 A (NEURATH et al.) 10 September 1985 
(10/09/85), see entire document, especially column 1, 
lines 10-23.

STANDARD CODE FOR THE IDENTIFICATION OF 
DIFFERENT KINDS OF PATENT DOCUMENTS

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

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

List of Patent Documents, Past and Currently Published, 
and Intended to Be Published in the Future

CODE:  A
	Patent Documents Identi-
fied as Primary or Major 
Series - First Publication 
Level

	
EXAMPLES:
	
Australia
	Standard or petty patent 
application

Austria
	Patent application (Aufge-
bot)

Belgium
	Brevet d'invention/Uitvin-
dingsoctrooi

Belgium
	Brevet de perfectionne-
ment/Verbeteringsoctrooi

Brazil
	Pedido de privilegio 
(Unexamined patent appli-
cation for invention)

Bulgaria
	Patentna zajavka pre-
dostavena za publichna 
inspektzija (Patent appli-
cation made available to 
the public)

Canada
	Patent (prior to October 1, 
1989, under previous 
Patent Act)

Canada
	Patent application laid 
open to public inspection 
under amended Patent 
Act, as of October 1, 
1989)

Cuba
	Patent  application

Czechoslovakia
	Patent  application

Czechoslovakia
	Inventor's certificate 
application

Denmark
	Almindeligt tilgaengelig 
patentansogning

Egypt
	Patent  specification

European Patent 
Office
	Patent application pub-
lished with search report

European Patent  
Office
	Patent application pub-
lished without search 
report

European Patent  
Office
	Separate publication of the 
search report

Finland
	Julkiseksi tullut patentti-
hakemus-Allmant 
tillganglig patentansokan

France
	Brevet d'invention, 
premiere et unique publi-
cation

France
	Certificat d'addition a un 
brevet d'invention, 
premiere et unique publi-
cation

France
	Certificat d'utilite, 
premiere et unique publi-
cation

France
	Certificat d'addition a 
uncertificat d'utilite, 
premiere et unique publi-
cation

France
	Demande de brevet 
d'invention, premiere 
publication

France
	Demande de certificat 
d'addition a un brevet 
d'invention, premiere 
publication

France
	Demande de certificat 
d'utilite, premiere publi-
cation

France
	Demande de certificat 
d'addition a un certificat 
d'utilite, premiere publi-
cation

Germany
	Offenlegungsschrift

Germany  (docu-
ment published by 
the  Patent Office of  
the former  GDR)
	Patentschrift (Ausschlies-
sungspatent), patent 
granted in accordance 
with paragraph 17.1 of the 
Patent Law of the former 
German Democratic 
Republic of October 27, 
1983

Germany  (docu-
ment published by 
the  Patent Office of  
the former  GDR)
	Patentschrift (Wirtschafts-
patent), patent granted in 
accordance with para-
graph 17.1 of the Patent 
Law of the former German 
Democratic Republic of 
October 27, 1983 

Hungary
	Patent application

India
	Patent specification

Ireland
	Patent specification

Italy
	Domanda di brevetto pub-
licata

Japan
	Kokai tokkyo koho

Japan
	Kohyo tokkyo koho

Luxembourg
	Brevet d'invention

*>Luxembourg<
	Certificat d'addition a un 
brevet d'invention

Netherlands
	Terinzagegelegging

Norway
	Alment tilgjengelige pat-
entsoknader

Pakistan
	Patent specification

Poland
	Opis zgloszeniowy 
wynalazku

Republic of   Korea
	Konggae t'ukho kongbo

Romania
	Descrierea inventiei

Soviet Union
	Opisanie izobreteniya k 
patentu

Soviet Union
	Opisanie izobreteniya k 
avtorskomu svidetelstvu

Spain
	Patente de invencion

Sweden
	Allmant tillganglig paten-
tansokan

Switzerland
	Auslegeschrift/Fascicule 
de la demande/Fascicolo 
della domanda (Patent 
Application  published 
and pertaining to the tech-
nical fields for which 
search and examination as 
to novelty are made)

Switzerland
	Patentschrift/Fascicule du 
brevet/Fascicolo del bre-
vetto (Patent published 
and pertaining to the tech-
nical fields for which nei-
ther search nor 
examination as to novelty 
are made)

United Kingdom
	Patent specification (old 
Law; not printed on docu-
ments)

United Kingdom
	Patent application (new 
Law)

United States
	Patent

World Intellectual  
Property   Organiza-
tion
	International application 
published with or without 
the international search 
report 

Yugoslavia
	Patenta prijava koja se 
moze razgledati

	
CODE:  B
	Patent Documents Identi-
fied as Primary or Major 
Series -Second Publica-
tion Level

	
 EXAMPLES:
	
Australia
	Accepted standard or petty 
patent

Austria
	Patentschrift

Brazil
	Patente (granted patent of 
invention)

Canada
	Reissue patent (prior to 
October 1, 1989, under 
previous Patent Act)

Cuba
	Patente de invencion

Czechoslovakia
	Popis vynalezu k patentu

Czechoslovakia
	Popis vynalezu k autor-
skemu osvedceni

Denmark
	Fremlaeggelsesskrift (old 
Law)

Denmark
	Patentskrift

Finland
	Kuulutusjulkaisu - Utlag-
gningsskrift

France
	Brevet d'invention, deux-
ieme publication de 
l'invention

France
	Certificat d'addition a un 
brevet d' invention, deux-
ieme publication de 
l'invention

France
	Certificat d'utilite, deux-
ieme publication 
del'invention

France
	Certificat d'addition a un 
certificat d'utilite, deux-
ieme publication de  
l'invention

Germany
	Auslegeschrift

Germany  (docu-
ment published by 
the  Patent Office of  
the former  GDR)
	Patentschrift (Ausschlies-
sungspatent), patent 
granted in accordance 
with paragraph 18.1 of the 
Patent Law of the former 
German Democratic 
Republic of October 27, 
1983 

Germany  (docu-
ment pub lished by 
the  Patent Office of  
the former  GDR)
	Patentschrift (Wirtschafts-
patent), patent granted in 
accordance with para-
graph 18.1 of the Patent 
Law of the former German 
Democratic Republic of 
October 27, 1983 

Hungary
	Szabadalmi leiras

Japan
	Tokkyo koho

Netherlands
	Openbaar gemaakte 
octrooiaanvrage

Norway
	Utlegningsskrift

Poland
	Opis patentowy

Republic of    Korea
	T'ukho kongbo

Switzerland
	Patentschrift/Fascicule du 
brevet/Fascicolo del bre-
vetto (Patent published 
and pertaining to  the tech-
nical fields for which 
search and examination as 
to novelty are made)

United Kingdom
	Amended patent  specifi-
cation (old Law)

United Kingdom
	Patent specification (new 
Law)

United States
	Reexamination certificate

	
CODE:  C
	Patent Documents Identi-
fied as Primary or Major 
Series - Third Publication 
Level

	
EXAMPLES:
	
Argentina
	Patente de invencion 
(Patent)

Australia
	Standard or petty patent, 
amended after acceptance

Denmark
	Patentskrift (old Law)

Finland
	Patentti (Patent)

Germany
	Patentschrift

Germany  (docu-
ment published by 
the  Patent Office of  
the former  GDR)
	Patentschrift (Ausschlies-
sungspatent), Patent 
granted in accordance 
with paragraph 19 of the 
Patent Law of the former 
German Democratic 
Republic of October 27, 
1983

Netherlands
	Octrooi

Norway
	Patent

Sweden
	Patentskrift

United Kingdom
	Amended patent specifica-
tion (new Law)

	
CODE:  E
	Patent Documents Identi-
fied as Series Other Than 
the Documents Coded A, 
B, C, U, Y, Z, M, P, S, T, 
W, L or R - First Publica-
tion Level

	
EXAMPLES:
	
France
	Certificat d'addition a bre-
vet d'invention (old Law)

United States
	Reissue patent

	
CODE:  H
	Patent Documents Identi-
fied in Series According to 
Special Requirements of 
Individual Industrial Prop-
erty Offices

	
 EXAMPLE:
	
  United States
	Statutory invention regis-
tration

	
CODE *>:M<
	Medicament Patent Docu-
ments

	
EXAMPLES:
	
France
	Brevet special de medica-
ment

France
	Addition a un brevet spe-
cial de medicament

	
CODE:  P
	Plant Patent Documents

	
 EXAMPLE:
	
  United States
	Plant patent

	
CODE:  S
	Design Patent Documents

	
EXAMPLES:
	
  Brazil
	Pedido de privilegio 
(unexamined patent appli-
cation for industrial 
model)

  United States
	Design patent

	
CODE:  U
	Utility Model Documents 
Numbered in Series other 
than the Documents of  
Group I- First Publication 
Level

	
 EXAMPLES:
	
  Brazil
	Pedido de privilegio 
(unexamined patent appli-
cation for industrial 
model)

Germany
	Gebrauchsmuster

Japan
	Kokai jitsuyo shin-an 
koho (Published unexam-
ined utility model applica-
tion)

Republic of   Korea
	Konggae shilyong shin-an 
kongbo

Spain
	Solicitud de modelo de 
utilidad

	
CODE: Y
	Utility Model Documents 
Numbered in Series other 
than the Documents of 
Group I-  Second Publica-
tion Level

	
EXAMPLES:
	
  Brazil
	Patente (granted patent of 
utility model)

 Japan
	Jitsuyo shin-an koho (Pub-
lished examined utility 
model application)

  Spain
	Model o de utilidad

Country Codes

The two-letter country codes listed below are set forth in 
WIPO Standard ST.3, which is published in the "WIPO 
Handbook on Industrial Property Information and Docu-
mentation" and is accessible via the internet at the WIPO 
website (www.wipo.org). WIPO Standard ST.3  provides, 
in Annex A, Section 1, a listing of  two-letter country codes 
and/or organizational codes in alphabetic sequence of their 
short names for the states, other entities and intergovern-
mental organizations issuing or publishing industrial prop-
erty documents. Codes for states or organizations that 
existed on January 1, 1978 but that no longer exist are pro-
vided in Annex B, Section 2.

Annex A, Section 1

 List of States, Other Entities  and Intergovernmental 
Organizations, in Alphabetic Sequence of Their Short 
Names, and Their Corresponding Codes
	
	
Afghanistan
	AF

African Intellectual Property  	
Organization (OAPI)
	OA

African Regional Industrial 
Property 	Organization (ARIPO)
	AP

Albania
	AL

Algeria
	DZ

American Samoa
	AS

Angola
	AO

Anguilla
	AI

Antigua and Barbuda
	AG

Argentina
	AR

Armenia 
	AM

Aruba
	AW

Australia
	AU

Austria
	AT

Azerbaijan
	AZ

Bahamas
	BS

Bahrain
	BH

Bangladesh
	BD

Barbados
	BB

Belarus
	BY

Belgium
	BE

Belize
	BZ

Benelux Trademark Office 
(BBM)   	and Benelux Designs 
Office 			(BBDM)
	BX

Benin
	BJ

Bermuda
	BM

Bhutan
	BT

Bolivia
	BO

Bosnia and Herzegovina
	BA

Botswana
	BW

Bouvet Island
	BV

Brazil
	BR

Brunei Darussalam
	BN

Bulgaria
	BG

Burkina Faso
	BF

Burundi
	BI

Cambodia
	KH

Cameroon
	CM

Canada
	CA

Cape Verde
	CV

Cayman Islands
	KY

Central African Republic
	CF

Chad
	TD

Chile
	CL

China
	CN

Colombia
	CO

Comoros
	KM

Congo
	CG

Cook Islands
	CK

Costa Rica
	CR

Cote d'Ivoire
	CI

Croatia
	HR

Cuba
	CU

Cyprus
	CY

Czech Republic
	CZ

Democratic People's Republic 	of 
Korea
	KP 

Denmark
	DK

Djibouti
	DJ

Dominica
	DM

Dominican Republic
	DO

East Timor
	TP

Ecuador
	EC

Egypt
	EG

El Salvador
	SV

Equatorial Guinea
	GQ

Eritrea
	ER

Estonia
	EE

Ethiopia
	ET

Eurasian Patent Organization  	
(EAPO)
	EA

European Community  	Trade-
mark Office (See Office  	for 
Harmonization in the Internal 			
Market)
	EP

European Patent Office (EPO)
	EP

Falkland Islands (Malvinas)
	FK

Faroe Islands
	FO

Fiji
	FJ

Finland
	FI

France
	FR

Gabon
	GA

Gambia
	GM

Georgia
	GE

Germany
	DE

Ghana
	GH

Gibraltar
	GI

Greece
	GR

Greenland
	GL

Grenada
	GD

Guatemala
	GT

Guinea
	GN

Guinea-Bissau
	GW

Guyana
	GY

Haiti
	HT

Holy See
	VA

Honduras
	HN

Hong Kong
	HK

Hungary
	HU

Iceland
	IS

India
	IN

Indonesia
	ID

International Bureau of the 
World  	Intellectual Property 
Organization 			(WIPO)
	IB, WO

Iran (Islamic Republic of)
	IR

Iraq
	IQ

Ireland
	IE

Israel
	IL

Italy
	IT

Jamaica
	JM

Japan
	JP

Jordan
	JO

Kazakstan
	KZ

Kenya
	KE

Kiribati
	KI

Korea (See Democratic People's 	
Republic of Korea; Republic of 	
Korea)
	
Kuwait
	KW

Kyrgyzstan
	KG

Laos
	LA

Latvia
	LV

Lebanon
	LB

Lesotho
	LS

Liberia
	LR

Libya
	LY

Liechtenstein
	LI

Lithuania
	LT

Luxembourg
	LU

Macau
	MO

Madagascar
	MG

Malawi
	MW

Malaysia
	MY

Maldives
	MV

Mali
	ML

Malta
	MT

Marshall Islands
	MH

Mauritania
	MR

Mauritius
	MU

Mexico
	MX

Micronesia (Federal States of)
	FM

Monaco
	MC

Mongolia
	MN

Montserrat
	MS

Morocco
	MA

Mozambique
	MZ

Myanmar
	MM

Namibia
	NA

Nauru
	NR

Nepal
	NP

Netherlands
	NL

Netherlands Antilles
	AN

New Zealand
	NZ

Nicaragua
	NI

Niger
	NE

Nigeria
	NG

Northern Mariana Islands
	MP

Norway
	NO

Office for Harmonization in the  	
Internal Market (Trademarks and  	
Designs) (OHIM)
	EM

Oman
	OM

Pakistan
	PK

Palau
	PW

Panama
	PA

Papua New Guinea
	PG

Paraguay
	PY

Peru
	PE

Philippines
	PH

Poland
	PL

Portugal
	PT

Qatar
	QA

Republic of Korea
	KR

Republic of Moldova
	MD

Romania
	RO

Russian Federation
	RU

Rwanda
	RW

Saint Helena
	SH

Saint Kitts and Nevis
	KN

Saint Lucia
	LC

Saint Vincent and the Grena-
dines
	VC

Samoa
	WS

San Marino
	SM

Sao Tome and Principe
	ST

Saudi Arabia
	SA

Senegal
	SN

Seychelles
	SC

Sierra Leone
	SL

Singapore
	SG

Slovakia
	SK

Slovenia
	SI

Solomon Islands
	SB

Somalia
	SO

South Africa
	ZA

South Georgia and the South  	
Sandwich Islands
	GS

Spain
	ES

Sri Lanka
	LK

Sudan
	SD

Suriname
	SR

Swaziland
	SZ

Sweden
	SE

Switzerland
	CH

Syria
	SY

Taiwan, Province of China
	TW

Tajikistan
	TJ

Thailand
	TH

The Former Yugoslav Republic  	
of Macedonia
	MK

Togo
	TG

Tonga
	TO

Trinidad and Tobago
	TT

Tunisia
	TN

Turkey
	TR

Turkmenistan
	TM

Turks and Caicos Islands
	TC

Tuvalu
	TV

Uganda
	UG

Ukraine
	UA

United Arab Emirates
	AE

United Kingdom
	GB

United Republic of Tanzania
	TZ

United States of America
	US

Uruguay
	UY

Uzbekistan
	UZ

Vanuatu
	VU

Vatican City State (See Holy 
See)
	
Venezuela
	VE

Viet Nam
	VN

Virgin Islands (British)
	VG

Western Sahara
	EH

World Intellectual Property  	
Organization (WIPO)  	(Interna-
tional Bureau of)
	WO, IB

Yemen
	YE

Yugoslavia
	YU

Zaire
	ZR

Zambia
	ZM

Zimbabwe
	ZW

Annex B, Section 2 
	
 List of States or Organizations That Existed on  January 
1, 1978, But That No Longer Exist
	
Czechoslovakia
	CS

Democratic Yemen
	SY/YD

German Democratic Republic
	DL/DD

International Patent Institute
	IB

Soviet Union
	SU

1852	International-Type Search

PCT Rule 41.

Earlier Search Other Than International Search

41.1.Obligation to Use Results; Refund of Fee

If reference has been made in the request, in the form provided for in 
Rule 4.11, to an international-type search carried out under the conditions 
set out in Article 15(5) or to a search other than an international or interna-
tional-type search, the International Searching Authority shall, to the 
extent possible, use the results of the said search in  establishing the inter-
national search report on the international application. The International 
Searching Authority shall refund the search fee, to the extent and under 
the conditions provided for in the agreement under Article 16(3)(b) or in a 
communication addressed to and published in the Gazette by the Interna-
tional Bureau, if the international search report could wholly or partly be 
based on the results of the said search.

37 CFR 1.104.  Nature of examination. 

	(a)  	Examiner's action.

*****

(3)	An international-type search will be made in all national 
applications filed on and after June 1, 1978.

(4)	Any national application may also have an international-type 
search report prepared thereon at the time of the national examination on 
the merits, upon specific written request therefor and payment of the inter-
national-type search report fee set forth in ? 1.21(e). The Patent and Trade-
mark Office does not require that a formal report of an international-type 
search be prepared in order to obtain a search fee refund in a later filed 
international application.

*****

PCT Rule 41 provides that the applicant may request in a 
later filed international application that the report of the 
results of the international-type search, i.e., a search similar 
to an international search, but carried out on a national 
application (37 CFR 1.104(a)(3) and (a)(4)), be used in 
establishing an international search report on such interna-
tional application. An international-type search is con-
ducted on all U.S. national nonprovisional applications 
filed after June 1, 1978. Upon specific request, at the time 
of the examination of a U.S. national nonprovisional appli-
cation and provided that the payment of the appropriate 
international-type search report fee has been made (37 CFR 
1.21(e)) an international-type search report Form PCT/ISA/
201 will also be prepared.

1853	Amendment Under PCT Article 19

PCT Article 19.

Amendment of the Claims before the  International Bureau

(1)	The applicant shall, after having received the international 
search report, be entitled to one opportunity to amend the claims of the 
international application by filing amendments with the International 
Bureau within the prescribed time limit. He may, at the same time, file a 
brief statement, as provided in the Regulations, explaining the amend-
ments and indicating any impact that such amendments might have on the 
description and the drawings.

(2)	The amendments shall not go beyond the disclosure in the inter-
national application as filed.

(3)	If the national law of any designated State permits amendments 
to go beyond the said disclosure, failure to comply with paragraph (2) 
shall have no consequence in that State.

PCT Rule 46.

Amendment of Claims before the International Bureau

46.1.Time Limit

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

46.2.Where to file

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

46.3.Language of Amendments

If the international application has been filed in a language other than 
the language in which it is published, any amendment made under Article 
19 shall be in the language of publication.

46.4.Statement

(a)	The statement referred to in Article 19(1) shall be in the lan-
guage in which the international application is published and shall not 
exceed 500 words if in the English language or if translated into that lan-
guage. The statement shall be identified as such by a heading, preferably 
by using the words "Statement under Article 19(1)" or their equivalent in 
the language of the statement.

(b)	The statement shall contain no disparaging comments on the 
international search report or the relevance of citations contained in that 
report. Reference to citations, relevant to a given claim, contained in the 
international search report may be made only in connection with an 
amendment of that claim.

46.5.Form of Amendments

The applicant shall be required to submit a replacement sheet for every 
sheet of the claims which, on account of an amendment or amendments 
under Article 19, differs from the sheet originally filed. The letter accom-
panying the replacement sheets shall draw attention to the differences 
between the replaced sheets and the replacement sheets. To the extent that 
any amendment results in the cancellation of an entire sheet, that amend-
ment shall be communicated in a letter.

(b)	and (c)   [Deleted]

37 CFR 1.415.  The International Bureau.

(a)	The International Bureau is the World Intellectual Property 
Organization located at Geneva, Switzerland. It is the international inter-
governmental organization which acts as the coordinating body under the 
Treaty and the Regulations (PCT Art. 2 (xix) and  35 U.S.C. 351(h)).

(b)	The major functions of the International Bureau include:

(1)	Publishing of international applications and the International 
Gazette;

(2)	Transmitting copies of international applications to Desig-
nated  Offices;

(3)	Storing and maintaining record copies; and

(4)	Transmitting information to authorities pertinent to the pro-
cessing of specific international applications.

PCT Administrative Instruction Section 205.

Numbering and Identification of Claims Upon Amendment

(a)	Amendments to the claims under Article 19 or Article 34(2)(b) 
may be made either by cancelling one or more entire claims, by adding 
one or more new claims or by amending the text of one or more of the 
claims as filed. All the claims appearing on a replacement sheet shall be 
numbered in Arabic numerals. Where a claim is cancelled, no renumber-
ing of the other claims shall be required. In all cases where claims are 
renumbered, they shall be renumbered consecutively.

(b)	The applicant shall, in the letter referred to in the second and 
third sentences of Rule 46.5(a) or in the second and fourth sentences of 
Rule 66.8(a), indicate the differences between the claims as filed and the 
claims as amended. He shall, in particular, indicate in the said letter, in 
connection with each claim appearing in the international application (it 
being understood that identical indications concerning several claims may 
be grouped), whether:

(i)	the claim is unchanged;

(ii)	the claim is cancelled;

(iii)	the claim is new;

(iv)	the claim replaces one or more claims as filed;

(v)	the claim is the result of the division of a claim as filed.

The applicant has only one opportunity to amend the 
claims only of the international application after issuance 
of the Search Report. The amendments to the claims must 
be filed directly with the International Bureau, usually 
within 2 months of the date of mailing of the Search 
Report. If the amendments to the claims are timely received 
by the International Bureau, such amendments will be pub-
lished as part of the pamphlet directly following the claims 
as filed. Article 19 offers applicants the opportunity to gen-
erally amend the claims before entering the designated 
Offices. The national laws of some designated Offices may  
grant provisional protection on the invention from the date 
of publication of the claims. Therefore, some applicants 
take advantage of the opportunity under Article 19 to polish  
the claims anticipating provisional protection. See PCT 
Rule 46.5.

1857	International Publication

PCT Article 21.

International Publication

(1)	The International Bureau shall publish international applica-
tions.

(2)(a)	Subject to the exceptions provided for in subparagraph (b) and 
in Article 64(3), the international publication of the international applica-
tion shall be effected promptly after the expiration of 18 months from the 
priority date of that application.

(b)	The applicant may ask the International Bureau to publish 
his international application any time before the expiration of the time 
limit referred to in subparagraph (a). The International Bureau shall pro-
ceed accordingly, as provided in the Regulations.

(3)	The international search report or the declaration referred to in 
Article 17(2)(a) shall be published as prescribed in the Regulations.

(4)	The language and form of the international publication and 
other details are governed by the Regulations.

(5)	There shall be no international publication if the  international 
application is withdrawn or is considered withdrawn before the technical 
preparations for publication have been completed.

(6)	If the international application contains expressions or drawings 
which, in the opinion of the International Bureau, are contrary to morality 
or public order, or if, in its opinion, the international application contains 
disparaging statements as defined in the Regulations, it may omit such 
expressions, drawings, and statements, from its publications, indicating 
the place and number of words or drawings omitted, and furnishing, upon 
request, individual copies of the passages omitted.

PCT Article 29.

Effects of the International Publication

(1)	As far as the protection of any rights of the applicant in a desig-
nated State is concerned, the effects, in that State, of the international pub-
lication of an international application shall, subject to the provisions of 
paragraphs (2) to (4), be the same as those which the national law of the 
designated State provides for the compulsory national publication of unex-
amined national applications as such.

(2)	If the language in which the international publication has been 
effected is different from the language in which publications under the 
national law are effected in the designated State, the said national law may 
provide that the effects provided for in paragraph (1) shall be applicable 
only from such time as:

(i)	a translation into the latter language has been published as 
provided by the national law, or

(ii)	a translation into the latter language has been made available 
to the public, by laying open for public inspection as provided by the 
national law, or

(iii)	a translation into the latter language has been transmitted by 
the applicant to the actual or prospective unauthorized user of the inven-
tion claimed in the international application, or

(iv)	both the acts described in (i) and (iii), or both the acts 
described in (ii) and (iii), have taken place.

(3)	The national law of any designated State may provide that, 
where the international publication has been effected, on the request of the 
applicant, before the expiration of 18 months from the priority date, the 
effects provided for in paragraph (1) shall be applicable only from the 
expiration of 18 months from the priority date.

(4)	The national law of any designated State may provide that the 
effects provided for in paragraph (1) shall be applicable only from the date 
on which a copy of the international application as published under Article 
21 has been received in the national Office of or acting for such State. The 
said Office shall publish the date of receipt in its gazette as soon as possi-
ble.

PCT Administrative Instruction Section 404.

 International Publication Number of International Application

The International Bureau shall assign to each published international 
application an international publication number which shall be different 
from the international application number. The international publication 
number shall be used on the pamphlet and in the Gazette entry. It shall 
consist of the two-letter code WO followed by a two-digit designation of 
the last two numbers of the year of publication, a slant, and a serial num-
ber consisting of five digits (e.g., WO78/12345).

35 U.S.C. 374.  Publication of international application: Effect.

The publication under the treaty of an international application shall 
confer no rights and shall have no effect under this title other than that of a 
printed publication.

The publication of international applications currently 
occurs every other Thursday. Under PCT Article 20 the 
International Bureau sends copies of published applications 
to each of the designated Offices on the day of publication. 
Until October 1, 1995, as a PCT member country, the U.S. 
Patent and Trademark Office received copies of all pub-
lished international applications in printed form for inclu-
sion in the examiner search files.  The U.S. Patent and 
Trademark Office now receives the published international 
applications on CD-ROM disks.  For information on 
obtaining copies of these applications, see  
MPEP ? 901.05(c). 

1859	Withdrawal of International  
Application or Designations

PCT Administrative Instruction Section 326.

Withdrawal by Applicant under Rule 90bis.1, 90bis.2 or 90bis.3

(a)	The receiving Office shall promptly transmit to the International 
Bureau any notice from the applicant effecting withdrawal of the interna-
tional application under Rule 90bis.1, of a designation under Rule 90bis.2 
or of a priority claim under Rule 90bis.3 which has been filed with it 
together with an indication of the date of receipt of the notice.  If the 
record copy has not yet been sent to the International Bureau, the receiv-
ing Office shall transmit the said notice together with the record copy.

(b)	If the search copy has already been sent to the International 
Searching Authority and the international application is withdrawn under 
Rule 90bis.1 or a priority claim is withdrawn under Rule 90bis.3, the 
receiving Office shall promptly transmit a copy of the notice effecting 
withdrawal to the International Searching Authority.

(c)	If the search copy has not yet been sent to the International 
Searching Authority and the international application is withdrawn under 
Rule 90bis.1, the receiving Office shall not send the search copy to the 
International Searching Authority and shall, subject to Section 322, refund 
the search fee to the applicant unless it has already been transferred to the 
International Searching Authority.  If the search fee has already been 
transferred to the International Searching Authority, the receiving Office 
shall send a copy of the request and of the notice effecting withdrawal to 
that Authority.

(d)	If the search copy has not yet been sent to the International 
Searching Authority and a priority claim is withdrawn under Rule 90bis.3, 
the receiving Office shall transmit a copy of the notice effecting with-
drawal to the International Searching Authority together with the search 
copy.

PCT Administrative Instruction Section 414.

Notification to the International Preliminary Examining Authority 
Where the International Application or the Designations of All 
Elected States Are Considered Withdrawn

If a demand has been submitted and the international application or the 
designations of all designated States which have been elected are consid-
ered withdrawn under Article 14(1), (3) or (4), the International Bureau 
shall promptly notify the International Preliminary Examining Authority, 
unless the international preliminary examination report has already issued.

The applicant may withdraw the international applica-
tion by a notice addressed to the International Bureau or to 
the receiving Office and received before the expiration of 
20 months from the priority date. Where a Demand for 
international preliminary examination has been filed before 
the expiration of 19 months from the priority date, the 
international application may be withdrawn by a notice 
addressed to the International Bureau or to the International 
Preliminary Examining Authority and received before the 
expiration of 30 months from the priority date. Any such 
withdrawal is free of charge. A notice of withdrawal must 
be signed by all the applicants. An appointed agent or 
appointed common representative may sign such a notice 
on behalf of the applicant or applicants who appointed him, 
but an applicant who is considered to be the common repre-
sentative may not sign such a notice on behalf of the other 
applicants. As to the case where an applicant inventor for 
the United States of America refuses to sign or cannot be 
found or reached see PCT Rule 90bis.5(b).

The applicant may prevent international publication by 
withdrawing the international application, provided that the 
notice of withdrawal reaches the International Bureau 
before the completion of technical preparations for that 
publication. The notice of withdrawal may state that the 
withdrawal is to be effective only on the condition that 
international publication can still be prevented. In such a 
case the withdrawal is not effective if the condition on 
which it was made cannot be met that is, if the technical 
preparations for international publication have already been 
completed. International publication may be postponed  by 
withdrawing the priority claim.

The applicant may withdraw the designation of any State 
by a notice addressed to the International Bureau or to the 
receiving Office and received before the expiration of 20 
months from the priority date. Where a Demand for inter-
national preliminary examination has been filed before the 
expiration of 19 months from the priority date, the designa-
tion of any elected State may be withdrawn by a notice 
addressed to the International Preliminary Examining 
Authority and received before the expiration of 30 months 
from the priority date. Any such withdrawal is free of 
charge.  A notice of withdrawal must be signed by all the 
applicants. An appointed agent or appointed common rep-
resentative may sign such a notice on behalf of the appli-
cant or applicants who appointed him, but an applicant who 
is considered to be the common representative may not sign 
such a notice on behalf of the other applicants. If all desig-
nations are withdrawn, the international application will be 
treated as withdrawn.

The applicant may withdraw a priority claim made in the 
international application by a notice addressed to the Inter-
national Bureau or to the receiving Office and received 
before the expiration of 20 months from the priority date. 
Where a Demand for international preliminary examination 
has been filed before the expiration of 19 months from the 
priority date, the notice must be received before the expira-
tion of 30 months from the priority date. In the latter case, 
the notice may also be addressed to the International Pre-
liminary Examining Authority. Any or all of the priority 
claims may be so withdrawn. Any such withdrawal is free 
of charge. A notice of withdrawal must be signed by all the 
applicants. An appointed agent or appointed common rep-
resentative may sign such a notice on behalf of the appli-
cant or applicants who appointed him, but an applicant who 
is considered to be the common representative may not sign 
such a notice on behalf of the other applicants.

Where the withdrawal of a priority claim causes a 
change in the priority date of the international application, 
any time limit which is computed from the original priority 
date and which has not yet expired-for example, the time 
limit before which processing in the national phase cannot 
start-is computed from the priority date resulting from the 
change. (It is not possible to extend the time limit con-
cerned if it has already expired when the priority claim is 
withdrawn.) However, if the notice of withdrawal reaches 
the International Bureau after the completion of the techni-
cal preparations for international publication, the Interna-
tional Bureau may proceed with the international 
publication on the basis of the time limit for international 
publication as computed from the original priority date.

1860	International Preliminary 
Examination

EXAMINATION PROCEDURE

The International Preliminary Examination is to be car-
ried out in accordance with PCT Article 34 and PCT Rule 
66. After the Demand is checked for compliance with PCT 
Rules 53 - 55, 57 and 58, the first step of the examiner is to 
study the description, the drawings (if any), and the claims 
of the international application and the documents describ-
ing the prior art as cited in the International Search Report.

A Written Opinion must be prepared if the examiner:

(A)	Considers that the international application has 
any of the defects described in PCT Article 34(4) concern-
ing subject matter which is not required to be examined or 
which is unclear or inadequately supported;

(B)	Considers that the report should be negative 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);

(C)	Notices any defects in the form or contents of the 
international application;

(D)	Considers that any amendment goes beyond the 
disclosure in the international application as originally 
filed;

(E)	Wishes to make an observation on the clarity of 
the claims, the description, the drawings or to the question 
whether the claims are fully supported by the description 
(PCT Rule 66.2);

(F)	Decides not to carry out the international prelimi-
nary examination on a claim for which no International 
Search Report was issued; or

(G)	Considers that no acceptable amino acid sequence 
listing is available in a form that would allow a meaningful 
international preliminary examination to be carried out.

The Written Opinion is prepared on form PCT/IPEA/408  
to notify applicant of the defects found in the international 
application. The examiner is further required to fully state 
the reasons for his/her opinion (PCT Rule 66.2(b)) and 
invite a written reply, with amendments where appropriate 
(PCT Rule 66.2(c)), normally setting a 2 month time limit 
for the reply.

The applicant may reply to the invitation by making 
amendments or, if applicant disagrees with the opinion of 
the examiner, by submitting arguments, as the case may be, 
or both.

The U.S. Rules of Practice pertaining to international 
preliminary examination of international applications per-
mit a second Written Opinion in those cases where suffi-
cient time is available. Normally only one Written Opinion 
will be issued. Any reply received after the expiration of 
the set time limit will not normally be considered in prepar-
ing the International Preliminary Examination Report. In 
situations, however, where the examiner has requested an 
amendment or where a later amendment places the applica-
tion in better condition for examination, the amendment 
may be considered by the examiner.

If the applicant does not reply to the Written Opinion 
within the set time period, the International Preliminary 
Examination Report will be prepared after expiration of the 
time limit plus sufficient time to have any reply clear the 
Mail Center.

If, after initial examination of the international applica-
tion, there is no negative statement or comment to be made, 
then only the International Preliminary Examination Report 
will issue without a Written Opinion having been issued.

1861	Chapter II Basic Flow

1862	Agreement with the International 
Bureau To Serve as an International 
Preliminary Examination Authority

PCT Article 32.

The International Preliminary Examining Authority

(1)	International preliminary examination shall be carried out by the 
International Preliminary Examining Authority.

(2)	In the case of demands referred to in Article 31(2)(a), the receiv-
ing Office, and, in the case of demands referred to in Article 31(2)(b), the 
Assembly, shall, in accordance with the applicable agreement between the 
interested International Preliminary Examining Authority or Authorities 
and the International Bureau, specify the International Preliminary Exam-
ining Authority or Authorities competent for the preliminary examination.

(3)	The provisions of Article 16(3) shall apply, mutatis mutandis, in 
respect of the International Preliminary Examining Authorities.

PCT Article 34.

 Procedure before the International Preliminary Examining 
Authority

(1)	Procedure before the International Preliminary Examining 
Authority shall be governed by the provisions of this Treaty, the Regula-
tions, and the agreement which the International Bureau shall conclude, 
subject to this Treaty and the Regulations, with the said Authority.

*****

37 CFR 1.416.  The United States International Preliminary 
Examining Authority.

(a)	Pursuant to appointment by the Assembly, the United States 
Patent and Trademark Office will act as an International Preliminary 
Examining Authority for international applications filed in the United 
States Receiving Office and in other Receiving Offices as may be agreed 
upon by the Commissioner, in accordance with agreement between the 
Patent and Trademark Office and the International Bureau.

(b)	The United States Patent and Trademark Office, when acting as 
an International Preliminary Examining Authority, will be identified by 
the full title "United States International Preliminary Examining Author-
ity" or by the abbreviation "IPEA/US." 

(c)	The major functions of the International Preliminary Examining 
Authority include:

(1)	Receiving and checking for defects in the Demand;

(2)	Forwarding Demands in accordance with PCT Rule 59.3;

(3)	Collecting the handling fee for the International Bureau and 
the preliminary examination fee for the United States International Prelim-
inary Examining Authority;

(4)	Informing applicant of receipt of the Demand;

(5)	Considering the matter of unity of invention;

(6)	Providing an international preliminary examination report 
which is a nonbinding opinion on the questions whether the claimed 
invention appears to be novel, to involve inventive step (to be nonobvi-
ous), and to be industrially applicable; and

(7)	Transmitting the international preliminary examination 
report to applicant and the International Bureau. 

An agreement was concluded between the United States 
Patent and Trademark Office (USPTO) and the Interna-
tional Bureau under which the USPTO agreed to serve as 
an International Preliminary Examining Authority for those 
applications filed in the USPTO as a Receiving Office and 
for those international applications filed in other receiving 
Offices for which the USPTO has served as an International 
Searching Authority.

The agreement is provided for in PCT Articles 32(2) & 
(3) and 34(1), and in PCT Rules 59.1, 63.1, 72.1, and 
77.1(a). Authority is given in  35 U.S.C. 361(c), 362(a) & 
(b) and in 364(a). 37 CFR 1.416(a) and PCT Administra-
tive Instructions Section 103(c) are also relevant.

1864	The Demand and Preparation for 
Filing of Demand

37 CFR 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 prelimi-
nary examination fee (?1.482(a)(1)) and the handling fee (?1.482(b)) shall 
be due at the time of filing of the Demand.

(b)	The Demand shall be made on a standardized form. Copies of 
printed Demand forms are available from the Patent and Trademark 
Office. Letters requesting printed Demand forms should be marked Box 
PCT .

(c)	If the Demand is made prior to the expiration of the 19th month 
from the priority date and the United States of America is elected, the pro-
visions of ?1.495 shall apply rather than ?1.494.

(d)	Withdrawal of a proper Demand prior to the start of the interna-
tional preliminary examination will entitle applicant to a refund of the pre-
liminary examination fee minus the amount of the transmittal fee set forth 
in ?1.445(a)(1).

Once applicant has requested the filing of an interna-
tional application under Chapter I which affords applicants 
the benefit of an international search, applicant has the right 
to file a Demand for preliminary examination. The use of 
the term "Demand" distinguishes Chapter II from the 
"Request" under Chapter I. Applicants who timely and 
properly file a Demand for preliminary examination are 
able to defer or delay the time for entry into the national 
stage from 20 months (under Chapter I) to 30 months from 
the earliest priority date. It is not possible to file a Demand 
unless a proper Chapter I "Request" for an international 
application has been filed.

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

1864.01	Amendments Filed with Demand

PCT Rule 66.

Procedure before the International Preliminary Examining 
Authority

*****

66.8.Form of Amendments

(a)	Subject to paragraph (b), the applicant shall be required to sub-
mit 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 para-
graph (a) may be a copy of the relevant sheet of the international applica-
tion 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.

*****

37 CFR 1.485.  Amendments by applicant during international 
preliminary examination.

(a)	The applicant may make amendments at the time of filing of 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 amend-
ments 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.

Amendments may be filed with the Demand (PCT Arti-
cle 34) if desired to place the application claims in better 
condition for international preliminary examination. Such 
amendments, however, may not include new matter and 
must be accompanied by a description of how the replace-
ment sheet differs from the replaced sheet.

Amendments filed after the Demand cannot be assured 
of consideration since the examiner will be taking up the 
application to draft the written opinion rather promptly 
because of the short examination period.

1864.02	Applicant's Right to File a Demand 
[R-1]

PCT Article 31.

Demand for International Preliminary Examination

*****

(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 inter-
national application has been filed with the receiving Office of or acting 
for such State, may make a demand for international preliminary examina-
tion.

*****

PCT Rule 54.

The Applicant Entitled to Make a Demand

54.1.Residence and Nationality

The residence or nationality of the applicant shall, for the purposes of 
Article 31(2), be determined according to Rules 18.1 and 18.2.

*****

54.2.Right to Make a Demand

The right to make a demand under Article 31(2) shall exist if the appli-
cant 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 Chap-
ter 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 act-
ing 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 submit-
ted.

**

If there is a sole applicant, he 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 appli-
cant is not indicated in the Demand.

If the recording of a change in the name or person has  
been requested under PCT Rule 92bis.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

PCT Article 31.

Demand for International Preliminary Examination

*****

(4)(a)	The demand shall indicate the Contracting State or States in 
which the applicant intends to use the results of the international prelimi-
nary examination ("elected States"). Additional Contracting States may be 
elected later. Election may relate only to Contracting States already desig-
nated under Article 4.

(b)	Applicants referred to in paragraph (2)(a) may elect any Con-
tracting 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.

*****

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 

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

If for any reason, the examiner needs to question the 
right of an attorney or agent to practice before the Interna-
tional Preliminary Examining Authority, 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.

1865	Filing of Demand [R-1]

PCT Article 31.

Demand for International Preliminary Examination

(1)	On the demand of the applicant, his international application 
shall be the subject of an international preliminary examination as pro-
vided in the following provisions and the Regulations.

*****

(3)	The demand for international preliminary examination shall be 
made separately from the international application. The demand shall con-
tain the prescribed particulars and shall be in the prescribed language and 
form.

*****

(6)(a)	The demand shall be submitted to the competent International 
Preliminary Examining Authority referred to in Article 32.

*****

Applicants should mail the Demand and appropriate fees 
directly to the International Preliminary Examining 
Authority they desire to prepare the International Prelimi-
nary Examination Report. U.S. applicants who have had the 
international search prepared by the European Patent Office 
may also request the European Patent Office to act as the 
International Preliminary Examining Authority.

Demands filed in the European Patent Office should be 
addressed to:

European Patent Office

Erhardstrasse 27

D-80331 Munich

Federal Republic of Germany.

Demands directed to the United States Patent and Trade-
mark Office should be addressed to:

Assistant Commissioner for Patents

Box PCT

Washington, D.C. 20231.

The "Express Mail" provisions of  37 CFR 1.10 may be 
used to file a Demand under Chapter II in the USPTO.  
Applicants are advised that failure to comply with the pro-
visions of  37 CFR 1.10 will result in the paper or fee being 
accorded the date of receipt and not the date of deposit.  
See  MPEP ? 513.

Demand for international preliminary examination may 
be submitted to the USPTO via facsimile. The Certificate of 
Mailing or Transmission practice under  37 CFR 1.8 CAN-
NOT be used to file a Demand if the date of deposit is 
desired. If used, the date of the Demand will be the date of 
receipt in the USPTO. See  MPEP ? 513,  ? 1834, and  
? 1834.01.

All Demands filed in the USPTO must be in the English 
language.

PCT Rule 59.3 was amended July 1, 1998 to provide a 
safeguard in the case of a Demand filed with the USPTO 
which is not competent as the International Preliminary 
Examining Authority.  The USPTO may forward the 
Demand to the International Bureau and the International 
Bureau will forward the Demand to a competent Interna-
tional Preliminary Examining Authority pursuant to PCT 
Rule 59.3(c).  The competent International Preliminary 
Examining Authority will process the Demand based on the 
date of receipt in the USPTO.  See **  37 CFR 1.416(c)(2).

CHOICE OF EXAMINING AUTHORITY

U.S. residents and nationals may choose to have the 
International Preliminary Examination done either by the 
IPEA/EP or the IPEA/US. The IPEA/EP has agreed that it 
would act as International Preliminary Examining Author-
ity for any Chapter II case in which it served as the ISA. 
The IPEA/US will serve as International Preliminary 
Examining Authority for U.S. residents and nationals if the 
U.S. or EPO served  as ISA.

The IPEA/US will also serve as International Prelimi-
nary Examining Authority for residents or nationals of 
Mexico, Trinidad and Tobago, Brazil, Barbados, Israel, and 
New Zealand if the U.S. was the International Searching 
Authority.

Form PCT/IPEA/401

1866	Filling in of Headings on Chapter II 
Forms

The examiner will encounter several different forms for 
use in the Chapter II preliminary examination phase and 
most of the forms will have the same "header" information 
to be provided.

The notes below list the common identifying informa-
tion requested on the top of the first page of most of the 
forms:

Applicant's mailing address - this is usually the attor-
ney's address taken from the file wrapper.

Applicant's or Agent's File Reference - this is the appli-
cant's or agent's application reference (or docket number) 
which is composed of either letters or numbers, or both, 
provided this reference does not exceed twelve characters. 
This reference may be found in the upper right hand box on 
the first sheet of the Demand, Form PCT/IPEA/401. See 
Administrative Instructions Section 109.

International Application Number - this is the 14 digit 
PCT application number as stamped and typed on the inter-
national application file wrapper and may also be found on 
the first page of the Demand, Form PCT/IPEA/401.

International Filing Date - this is the filing date printed 
on the international application file wrapper and may also 
be found on the first page of the Demand, Form PCT/IPEA/
401.

Applicant (Name) - the first named applicant as set forth 
on the international application file wrapper and may also 
be found in box II of the Demand, Form PCT/IPEA/401.

1867	Preliminary Examination Fees   [R-1]

37 CFR 1.481.  Payment of international preliminary examination 
fees.

(a)	The handling and preliminary examination fees shall be paid 
within the time period set in PCT Rule 57.3. The handling fee or prelimi-
nary examination fee payable is the handling fee or preliminary examina-
tion fee in effect on the date of receipt of the Demand except under PCT 
Rule 59.3(a) where the fee payable is the fee in effect on the date of arrival 
of the Demand at the United States International Preliminary Examining 
Authority.

(1)	If the handling and preliminary fees are not paid within the 
time period set in PCT Rule 57.3, applicant will be notified and given one 
month within which to pay the deficient fees plus a late payment fee equal 
to the greater of:

(i)	Fifty percent of the amount of the deficient fees, but not 
exceeding an amount equal to double the handling fee; or

(ii)	An amount equal to the handling fee (PCT Rule 58bis.2).

(2)	The one-month time limit set in this paragraph to pay defi-
cient fees may not be extended.

(b)	If the payment needed to cover the handling and preliminary 
examination fees, pursuant to paragraph (a) of this section, is not timely 
made in accordance with PCT Rule 58bis.1(d), the United States Interna-
tional Preliminary Examination Authority will declare the Demand to be 
considered as if it had not been submitted.

The preliminary examination fee is for the benefit of the 
International Preliminary Examining Authority and the 
amount for the U.S. doing the preliminary examination is 
specified in  37 CFR 1.482. The fee is somewhat higher if 
the international search was performed by an authority 
other than the USPTO.

The handling fee is a fee for the benefit of the Interna-
tional Bureau and is collected by the International Prelimi-
nary Examining Authority. The amount of the handling fee 
is set out in the PCT schedule of fees which is annexed to 
the PCT Regulations.

The current amount of both the preliminary examination 
fee and the handling fee can be found in each weekly issue 
of the Official Gazette. Since supplements to the handling 
fee were deleted, no additional Chapter II fees are required 
other than any additional preliminary examination fee 
where additional inventions are determined to be present. 
The amount of this fee is also specified in  37 CFR 1.482 
and in the weekly issues of the Official Gazette. See also 
PCT Rules 57 and 58.

The time limit for paying the preliminary examination 
fee and the handling fee is set forth in PCT Rules 57.3 and 
58.1(b).  **  37 CFR 1.481(a) provides that the preliminary 
examination fee or handling fee payable is the preliminary 
examination fee or handling fee in effect on the date of 
receipt of the Demand in the United States International 
Preliminary Examining Authority.  Effective July 1, 1998, 
PCT Rule 58bis.1(c) was added to consider the preliminary 
examination fee and handling fee to have been received 
before the expiration of the time limit set in PCT Rule 57.3 
if the fees were submitted prior to the sending of an invita-
tion to pay the fees.

Effective July 1, 1998, PCT Rule 58bis.1(a) was added 
to permit the International Preliminary Examining Author-
ity to collect a late payment fee set forth in PCT Rule 
58bis.2 if the fees for preliminary examination are not paid 
prior to the sending of the invitation to pay the fees.  If the 
preliminary examination fee and handling fee are not paid 
within the time set in PCT Rule 57.3, applicants will be 
notified and given 1 month within which to pay the defi-
cient fees plus a late payment fee equal to the greater of : 
(1) 50% of the amount of the deficient fees, but not exceed-
ing an amount equal to double the handling fee; or (2) an 
amount equal to the handling fee.  See **  37 CFR 
1.481(a)(1)(i) and (ii).  The 1 month time limit set forth in 
**  37 CFR 1.481(a)(1) to pay deficient fees may not be 
extended.  See **  37 CFR 1.481(a)(2)

If the payment needed to cover the preliminary examina-
tion fee and handling fee is not timely made in accordance 
with PCT Rule 58bis.1(d), the United States International 
Preliminary Examining Authority will declare the Demand 
to be considered as if it had not been submitted.  In this 
regard, where the Authority sends a notification that the 
Demand is considered not to have been made and appli-
cant's payment is received, both on that same date, the fee 
is considered to be late and the notification remains effec-
tive.  The fee must antedate the notice in order for the 
notice not to be effective.  See **  37 CFR 1.481(b).

1868	Correction of Defects in the Demand

PCT Rule 60.

Certain Defects in the Demand or Elections

60.1.Defects in the Demand

(a)	If the demand does not comply with the requirements specified 
in Rules 53.1, 53.2(a)(i) to (iv), 53.2(b), 53.3 to 53.8 and 55.1, the Interna-
tional Preliminary Examining Authority shall invite the applicant to cor-
rect the defects within a time limit which shall be reasonable under the 
circumstances.  That time limit shall not be less than one month from the 
date of the invitation. It may be extended by the International Preliminary 
Examining Authority at any time before a decision is taken.

(b)	If the applicant complies with the invitation within the time 
limit under paragraph (a), the demand shall be considered as if it had been 
received on the actual filing date, provided that the demand as submitted 
contained at least one election and permitted the international application 
to be identified;  otherwise, the demand shall be considered as if it had 
been received on the date on which the International Preliminary Examin-
ing Authority receives the correction.

(c)	Subject to paragraph (d), if the applicant does not comply with 
the invitation within the time limit under paragraph (a), the demand shall 
be considered as if it had not been submitted and the International Prelim-
inary Examining Authority shall so declare.

(d)	Where, after the expiration of the time limit under paragraph (a), 
a signature required under Rule 53.8 or a prescribed indication is lacking 
in respect of an applicant for a certain elected State, the election of that 
State shall be considered as if it had not been made.

(e)	If the defect is noticed by the International Bureau, it shall bring 
the defect to the attention of the International Preliminary Examining 
Authority, which shall then proceed as provided in paragraphs (a) to (d).

(f)	If the demand does not contain a statement concerning amend-
ments, the International Preliminary Examining Authority shall proceed as 
provided for in Rules 66.1 and 69.1(a) or (b).

(g)	Where the statement concerning amendments contains an indi-
cation that amendments under Article 34 are submitted with the demand 
(Rule 53.9(c)) but no such amendments are, in fact, submitted, the Interna-
tional Preliminary Examining Authority shall invite the applicant to sub-
mit the amendments within a time limit fixed in the invitation and shall 
proceed as provided for in Rule 69.1(e).

60.2.Defects in Later Elections

(a)	If the notice effecting a later election does not comply with the 
requirements of Rule 56, the International Bureau shall invite the appli-
cant to correct the defects within a time limit which shall be reasonable 
under the circumstances. That time limit shall not be less than one month 
from the date of the invitation.  It may be extended by the International 
Bureau at any time before a decision is taken.

(b)	If the applicant complies with the invitation within the time 
limit under paragraph (a), the notice shall be considered as if it had been 
received on the actual filing date, provided that the notice as submitted 
contained at least one election and permitted the international application 
to be identified;  otherwise, the notice shall be considered as if it had been 
received on the date on which the International Bureau receives the cor-
rection.

(c)	Subject to paragraph (d), if the applicant does not comply with 
the invitation within the time limit under paragraph (a), the notice shall be 
considered as if it had not been submitted and the International Prelimi-
nary Examining Authority shall so declare.

(d)	Where, in respect of an applicant for a certain elected State, the 
signature required under Rule 56.1(b) and (c) or the name or address is 
lacking after the expiration of the time limit under paragraph (a), the later 
election of that State shall be considered as if it had not been made.

Defects in the Demand may be corrected. The type of 
correction determines whether the filing date of the 
Demand must be changed. The most common defects 
which result in the mailing of an invitation to correct are 
found in PCT Rules 53, 55 and 57.4.  If the applicant com-
plies with the invitation, the Demand is considered as if it 
had been received on the actual filing date, i.e., the original 
date of receipt. See PCT Rule 60.1(b). 

1869	Notification to International Bureau of 
Demand 

PCT Article 31.

Demand for International Preliminary Examination

*****

(7)	Each elected Office shall be notified of its election.

The International Preliminary Examining Authority, pur-
suant to PCT Rule 61, promptly notifies the International 
Bureau and the applicant of the filing of any Demand. The 
International Bureau in turn notifies each elected Office of 
their election and also notifies the applicant that such noti-
fication has been made.

1870	Priority Document and Translation 
Thereof

PCT Rule 66.

Procedure before the International Preliminary Examining 
Authority

*****

66.7.Priority Document

(a)	If the International Preliminary Examining Authority needs a 
copy of the application whose priority is claimed in the international appli-
cation, the International Bureau shall, on request, promptly furnish such 
copy. If that copy is not furnished to the International Preliminary Examin-
ing Authority because the applicant failed to comply with the require-
ments of Rule 17.1, the international preliminary examination report may 
be established as if the priority had not been claimed.

(b)	If the application whose priority is claimed in the 
international application is in a language other than the language or one of 
the languages of the International Preliminary Examining Authority, that 
Authority may invite the applicant to furnish a translation in the said lan-
guage or one of the said languages within two months from the date of the 
invitation. If the translation is not furnished within that time limit, the 
international preliminary examination report may be established as if the 
priority had not been claimed.

*****

A copy of the priority document may be required by the 
examiner if necessary because of an intervening reference, 
and a translation thereof, if the priority document is not in 
English. 

1871	Processing Amendments Filed Under 
Article 19 and Article 34 Prior to or at 
the Start of International Preliminary 
Examination

PCT Rule 62.

Copy  of Amendments under Article 19 for the International Pre-
liminary Examining Authority

62.1.Amendments Made before the Demand is Filed

Upon receipt of a demand, or a copy thereof,  from the International 
Preliminary Examining Authority, the International Bureau shall promptly 
transmit a copy of any amendments under Article 19, and any statement 
referred to in that Article, to that Authority, unless that Authority has indi-
cated that it has already received such a copy.

62.2.Amendments Made after the Demand is Filed

If, at the time of filing any amendments under Article 19, a demand has 
already been submitted, the applicant shall preferably, at the same time as 
he files the amendments with the International Bureau, also file  with the 
International Preliminary Examining Authority a copy of such amend-
ments and any statement referred to in that article. In any case, the Interna-
tional Bureau shall promptly transmit a copy of such amendments and 
statement to that Authority.

(b)	[Deleted]

The documents making up the international application 
may include amendments of the claims filed by the appli-
cant under PCT Article 19.  PCT Article 19 amendments 
are exclusively amendments to the claims and these amend-
ments can only be made after the search report has been 
established. PCT Article 19 amendments will be transmit-
ted to the International Preliminary Examining Authority 
by the International Bureau. If a Demand for international 
preliminary examination has already been submitted, the 
applicant should preferably, at the time he files the PCT 
Article 19 amendments, also file a copy of the amendments 
with the International Preliminary Examining Authority. In 
the event that the time limit for filing amendments under 
PCT Article 19, as provided in PCT Rule 46.1, has not 
expired and the Demand includes a statement that the start 
of the international preliminary examination is to be post-
poned under PCT Rule 53.9(b), the international prelimi-
nary examination should not start before the examiner 
receives a copy of any amendments made under PCT Arti-
cle 19 or a notice from the applicant that he does not wish 
to make amendments under PCT Article 19, or before the 
expiration of 20 months from the priority date, whichever 
occurs first.

The applicant has the right to amend the claims, the 
description, and the drawings, in the prescribed manner and 
before the start of international preliminary examination. 
The amendment must not go beyond the disclosure in the 
international application as filed. These amendments are 
referred to as PCT Article 34(2)(b) amendments. It should 
be noted that PCT Article 19 amendments are strictly 
amendments to the claims made during the Chapter I search 
phase while PCT Article 34(2)(b) amendments to the 
description, claims, and drawings are made during the 
Chapter II examination phase.

When amendments to the description, claims, or draw-
ings are made under PCT Rule 66.8, they may be accompa-
nied by an explanation.  These amendments may have been 
submitted to avoid possible objections as to lack of novelty 
or lack of inventive step in view of the citations listed in the 
international search report; to meet any objections noted by 
the International Searching Authority under PCT Article 
17(2)(a)(ii) (i.e., that all or at least some claims do not per-
mit a meaningful search) or under PCT Rule 13 (i.e., that 
there is a lack of unity of invention); or to meet objections 
that may be raised for some other reason, e.g., to remedy 
some obscurity which the applicant himself/herself has 
noted in the original documents.

The amendments are made by the applicant of his/her 
own volition. This means that the applicant is not restricted 
to amendments necessary to remedy a defect in his/her 
international application. It does not, however, mean that 
the applicant should be regarded as free to amend in any 
way he/she chooses. Any amendment must not add subject 
matter which goes beyond the disclosure of the interna-
tional application as originally filed. Furthermore, it should 
not itself cause the international application as amended to 
be  objectionable under the PCT, e.g., the amendment 
should not introduce obscurity.

As a matter of policy and to ensure consistency in han-
dling amendments filed under PCT Articles 19 and 34 of 
the PCT, the following guidelines for processing these 
amendments have been established:

(A)	Any amendment which complies with  37 CFR 
1.485(a) will be considered;

(B)	Amendments filed after the Demand

(1)	will be considered if filed before the application 
is docketed to the examiner,

(2)	may be considered if filed after docketing. The 
examiner has discretion to consider such amendments if 
the examiner determines that the amendment places the 
application in better condition for examination or the exam-
iner determines that the amendment should otherwise be 
entered;

(C)	Amendments filed after expiration of the period 
for response to the written opinion

(1)	will be considered if the amendment was 
requested by the examiner,

(2)	may be considered if the examiner determines 
that the amendment places the application in better condi-
tion for examination or the examiner determines that the 
amendment should otherwise be entered.

It is expected, due to the relatively short time period for 
completion of preliminary examination, that the Chapter II 
application will be taken up for preparation of the written 
opinion promptly after docketing to the examiner and taken 
up for preparation of the final report promptly after the time 
expires for response to the written opinion (i.e., after allow-
ing for mail processing). The examiner is not obliged to 
consider amendments or arguments which are filed after 
he/she has taken up the case for preparation of the written 
opinion or the final report.

Amendments timely filed but misdirected or are other-
wise late reaching the examiner will be considered as in the 
case of regular domestic applications and may require a 
supplemental written opinion and/or final report.

Clearly, these guidelines offer the examiner flexibility. 
The examiner should be guided by the overriding principle 
that the final report (the PCT/IPEA/409) should be estab-
lished with as few written opinions as possible and resolu-
tion of as many issues as possible consistent with the goal 
of a timely and quality report.

See also Administrative Instructions Section 602 regard-
ing processing of amendments by the International Prelimi-
nary Examining Authority.

1872	Transmittal of Demand to the 
Examining Corps

PCT Administrative Instruction Section 605.

File to be used for International Preliminary Examination

Where the International Preliminary Examining Authority is part of the 
same national Office or intergovernmental organization as the Interna-
tional Searching Authority, the same file shall serve the purposes of inter-
national search and international preliminary examination.

When the PCT International Application Processing 
Division has finished processing of the papers and fees 
filed with a complete Demand, a copy of the Demand and 
other papers are forwarded to the appropriate examining 
group for examination. The documents will be placed in the 
Search Copy file wrapper when forwarded to the examin-
ing corps.

1873	Later Election of States 

PCT Article 31.

Demand for International Preliminary Examination

*****

(6)(b)	Any later election shall be submitted to the International 
Bureau.

*****

PCT Rule 56.

Later Elections

56.1.Elections Submitted Later Than the Demand

(a)	The election of States subsequent to the submission of the 
demand ("later election") shall be effected by a notice submitted to the 
International Bureau. The notice shall identify the international applica-
tion and the demand, and shall include an indication as referred to in Rule 
53.7(b)(ii).

(b)	Subject to paragraph (c), the notice referred to in paragraph (a) 
shall be signed by the applicant for the elected States concerned or, if there 
is more than one applicant for those States, by all of them.

(c)	Where two or more applicants file a notice effecting a later elec-
tion of a State whose national law requires that national applications be 
filed by the inventor and where an applicant for that elected State who is 
an inventor refused to sign the notice or could not be found or reached 
after diligent effort, the notice need not be signed by that applicant ("the 
applicant concerned") if it is signed by at least one applicant and

(i)	a statement is furnished explaining, to the satisfaction of the 
International Bureau, the lack of signature of the applicant concerned, or

(ii)	the applicant concerned did not sign the request but the 
requirements of Rule 4.15(b) were complied with, or did not sign the 
demand but the requirements of Rule 53.8(b) were complied with.

(d)	An applicant for a State elected by a later election need not 
have been indicated as an applicant in the demand.

(e)	If a notice effecting a later election is submitted after the expira-
tion of 19 months from the priority date, the International Bureau shall 
notify the applicant that the election does not have the effect provided for 
under Article 39(1)(a) and that the acts referred to in Article 22 must be 
performed in respect of the elected Office concerned within the time limit 
applicable under Article 22.

(f)	If, notwithstanding paragraph (a), a notice effecting a later elec-
tion is submitted by the applicant to the International Preliminary Examin-
ing Authority rather than the International Bureau, that Authority shall 
mark the date of receipt on the notice and transmit it promptly to the Inter-
national Bureau.  The notice shall be considered to have been submitted to 
the International Bureau on the date marked.

56.2.Identification of the International Application

The international application shall be identified as provided in Rule 
53.6.

56.3.Identification of the Demand

The demand shall be identified by the date on which it was submitted 
and by the name of the International Preliminary Examining Authority to 
which it was submitted.

56.4.Form of Later Elections

The notice effecting the later election shall preferably be worded as 
follows: "In relation to the international application filed with ... on ... 
under No. ... by ...(applicant) (and the demand for international prelimi-
nary examination submitted on ... to ...), the undersigned elects the follow-
ing additional State(s) under Article 31 of the Patent Cooperation Treaty: 
..." 

56.5.Language of Later Elections

The later election shall be in the language of the demand.

Applicants may, after filing of the Demand, later, but 
still within 19 months of the priority date, elect additional 
States which have been previously designated and obtain 
the benefit of delaying the national stage until 30 months 
after the priority date in the additional elected States.  All 
such later elections must be filed directly with the Interna-
tional Bureau and not the International Preliminary Exam-
ining Authority. Elections received after 19 months will not 
delay the time for entry into the national stage from 20 to 
30 months.

1874	Determination if International 
Preliminary Examination Is Required 
and Possible 

PCT Article 34.

 Procedure before the International Preliminary  Examining 
Authority

*****

(4)(a)	If the International Preliminary Examining Authority considers

(i)	that the international application relates to a subject matter 
on which the International Preliminary Examining Authority is not 
required, under the Regulations, to carry out an international preliminary 
examination, and in the particular case decides not to carry out such exam-
ination, or

(ii)	that the description, the claims, or the drawings, are so 
unclear, or the claims are so inadequately supported by the description, 
that no meaningful opinion can be formed on the novelty, inventive step 
(non-obviousness), or industrial applicability, of the claimed invention, the 
said authority shall not go into the questions referred to in Article 33(1) 
and shall inform the applicant of this opinion and the reasons therefor.

(b)	If any of the situations referred to in subparagraph (a) is 
found to exist in, or in connection with, certain claims only, the provisions 
of that subparagraph shall apply only to the said claims.

There are instances where international preliminary 
examination is not required because of the nature of the 
subject matter claimed and also because the claims are so 
indefinite that no examination is possible. Such instances 
should seldom occur, especially since most problems of 
this nature would have already been discovered and indi-
cated at the time of the international search.

If it is found that certain claims of an international appli-
cation relate to subject matter for which no international 
preliminary examination is required, on Form PCT/IPEA/
408, check the appropriate box. It should be noted that sub-
ject matter which is normally examined under U.S. national 
procedure should also be examined as an International Pre-
liminary Examining Authority.

The examiner should check the appropriate box if it is 
found that the description, claims or drawings are so 
unclear, or the claims are so inadequately supported by the 
description that no opinion could be formed as to the nov-
elty, inventive step (nonobviousness) and industrial appli-
cability of the claimed invention.

Subject matter not searched under Chapter I will not be 
the subject of a preliminary examination under Chapter II. 
This is so even if claims which were not searched under 
Chapter I are modified to be acceptable for examination.

1875	Unity of Invention Before the 
International Preliminary Examining 
Authority 

PCT Article 34.

Procedure before the International Preliminary Examining 
Authority

*****

(3)(a)	If the International Preliminary Examining Authority considers 
that the international application does not comply with the requirement of 
unity of invention as set forth in the Regulations, it may invite the appli-
cant, at his option, to restrict the claims so as to comply with the require-
ment or to pay additional fees.

*****

(c)	If the applicant does not comply with the invitation referred to 
in subparagraph (a) within the prescribed time limit, the International Pre-
liminary Examining Authority shall establish an international preliminary 
examination report on those parts of the international application which 
relate to what appears to be the main invention and shall indicate the rele-
vant facts in the said report. The national law of any elected State may pro-
vide that, where its national Office finds the invitation of the International 
Preliminary Examining Authority justified, those parts of the international 
application which do not relate to the main invention shall, as far as effects 
in that State are concerned, be considered withdrawn unless a special fee is 
paid by the applicant to that Office.

*****

37 CFR 1.488.  Determination of unity of invention before the 
International Preliminary Examining Authority.

(a)	Before establishing any written opinion or the international pre-
liminary examination report, the  International Preliminary Examining 
Authority will determine whether the international application complies 
with the requirement of unity of invention as set forth in ? 1.475.

(b)	If the International Preliminary Examining Authority considers 
that the international application does not comply with the requirement of 
unity of invention, it may:

(1)	Issue a written opinion and/or an international preliminary 
examination report, in respect of the entire international application and 
indicate that unity of invention is lacking and specify the reasons therefor 
without extending an invitation to restrict or pay additional fees. No inter-
national preliminary examination will be conducted on inventions not pre-
viously searched by an International Searching Authority.

(2)	Invite the applicant to restrict the claims or pay additional 
fees, pointing out the categories of the invention found, within a set time 
limit which will not be extended. No international preliminary examina-
tion will be conducted on inventions not previously searched by an Inter-
national Searching Authority, or

(3)	If applicant fails to restrict the claims or pay additional fees 
within the time limit set for reply, the International Preliminary Examining 
Authority will issue a written opinion and/or establish an international pre-
liminary examination report on the main invention and shall indicate the 
relevant facts in the said report. In case of any doubt as to which invention 
is the main invention, the invention first mentioned in the claims and pre-
viously searched by an International Searching Authority shall be consid-
ered the main invention.

(c)	Lack of unity of invention may be directly evident before con-
sidering the claims in relation to any prior art, or after taking the prior art 
into consideration, as where a document discovered during the search 
shows the invention claimed in a generic or linking claim lacks novelty or 
is clearly obvious, leaving two or more claims joined thereby without a 
common inventive concept. In such a case the International Preliminary 
Examining Authority may raise the objection of lack of unity of invention.

The examiner will usually begin the preliminary exami-
nation by checking the international application for unity of 
invention. The international preliminary examination will 
only be directed to inventions which have been searched by 
the International Searching Authority.  All claims directed 
to inventions which have not been searched by the Interna-
tional Searching Authority will not be considered by the 
International Preliminary Examining Authority. If the 
examiner in the International Preliminary Examining 
Authority finds lack of unity of invention in the claims to 
be examined, an invitation is normally prepared and sent to 
the applicant requesting the payment of additional fees or 
the restriction of the claims on Form PCT/IPEA/405. Such 
an invitation will include the identification of what the 
examiner considers to be the "main invention" which will 
be examined if no additional fees are paid or restriction is 
made by the applicant.

The procedure before the International Preliminary 
Examining Authority regarding lack of unity of invention is 
governed by PCT Article 34(3)(a) through (c), PCT Rule 
68 (see also PCT Rule 70.13), and  37 CFR 1.475 and 
1.488.  It should be noted that in most instances lack of 
unity of invention will have been noted and reported upon 
by the International Searching Authority which will have 
drawn up an International Search Report based on those 
parts of the international application relating to the inven-
tion, or unified linked group of inventions, first mentioned 
in the claims ("main invention").  If the applicant has paid 
additional search fees, additional inventions would also 
have been searched.  No international preliminary examina-
tion will be conducted on inventions not previously 
searched by an International Searching Authority (37 CFR 
1.488(b)(2)).

Unity of invention must be addressed within 7 days from 
the date the PCT application is charged to the examining 
group from PCT International Application Processing Divi-
sion. This simply means that a determination must be made 
as to whether or not the international application relates to 
one invention or to a group of inventions so linked as to 
form a single general inventive concept.

If it is determined that the international application does 
meet the requirements for unity of invention and no addi-
tional fees will be requested, the international application 
must be returned to the Paralegal Specialist in the examin-
ing group so that an indication to that effect may be made 
on the PALM System which monitors deadlines such as the 
deadline for checking unity of invention.

If the examiner determines that unity of invention is 
lacking, there are two options:

(A)	The examiner may conduct an international pre-
liminary examination covering all the claimed and previ-
ously searched inventions and indicate that unity of 
invention is lacking and specify the reasons therefor with-
out extending an invitation to restrict or pay additional fees 
(PCT Rule 68.1), or

(B)	The examiner may invite the applicant to restrict 
the claims, so as to comply with the requirement, or pay 
additional fees, pointing out the categories of invention 
found. The invitation to restrict or pay additional fees shall 
state the reasons for which the international application is 
considered as not complying with the requirement of unity 
of invention. (PCT Rule 68.2). Inventions not previously 
searched will not be considered or included in the invita-
tion.

The Written Opinion, if any, and the International Pre-
liminary Examination Report must be established on all 
inventions for which examination fees have been paid.

If the applicant fails to reply to the invitation to restrict 
the claims or pay additional examination fees due to lack of 
unity of invention, the Written Opinion and Report must be 
established on the claims directed to what  appears to be the 
main invention (PCT Article 34(3)(c)).  The main inven-
tion, in case of doubt, is the first claimed invention for 
which an International Search Report has been issued by 
the International Searching Authority.  The main invention, 
as viewed by the examiner, must be set forth on Form PCT/
IPEA/405.

Whether or not the question of unity of invention has 
been raised by the International Searching Authority, it may 
be considered by the examiner when serving as an autho-
rized officer of the International Preliminary Examining 
Authority. In the examiner's consideration, all documents 
cited by the International Searching Authority should be 
taken into account and any additional relevant documents 
considered. However, there are cases of lack of unity of 
invention, where, compared with the procedure of inviting 
the applicant to restrict the international application or pay 
additional fees (PCT Rule 68.2), little or no additional 
effort is involved in establishing the Written Opinion and 
the International Preliminary Examination Report for the 
entire international application. Then reasons of economy 
may make it advisable for the examiner to use the option 
referred to in PCT Rule 68.1 by choosing not to invite the 
applicant to restrict the claims or to pay additional fees.

Unity of invention is defined by  37 CFR 1.475 which 
describes the circumstances in which the requirement of 
unity of invention is considered fulfilled.

1875.01	Preparation of Invitation 
Concerning  Unity

The "Invitation to restrict or pay additional fees" Form 
PCT/IPEA/405 is used to invite the applicant, at his/her 
option, to restrict the claims to comply with the require-
ments of unity of invention or to pay additional examina-
tion fees. In addition, the examiner must explain the 
reasons why the international application is not considered 
to comply with the requirement of unity of invention. The 
examiner must also specify, on Form PCT/IPEA/405, at 
least one group or groups of claims which, if elected, would 
comply with the requirement for unity of invention.

INVITATION

In the space provided on form PCT/IPEA/405, the exam-
iner should identify the disclosed inventions by claim 
numerals and indicate which disclosed inventions are so 
linked as to form a single general inventive concept, 
thereby complying with the requirement of unity of inven-
tion. For example, claims to different categories of inven-
tion such as a product, claims to a process specifically 
adapted for the manufacture of the product and a claim for 
a use of the product would be considered related inventions 
which comply with the unity of invention requirement, 
whereas a claim to an apparatus for making the product in 
the same application  would be considered a second inven-
tion for which additional fees would be required.  The rea-
sons for holding that unity of invention is lacking must be 
specified.  See  37 CFR 1.475 and Annex B of the Adminis-
trative Instructions.

Also, the examiner should specify the main invention 
and claims directed thereto which will be examined if the 
applicant fails to restrict or pay additional fees. The main 
invention, in case of doubt, is the first claimed invention or 
related invention before the International Preliminary 
Examining Authority for which a search fee has been paid 
and an International Search Report has been prepared.

The examiner should indicate the total amount of addi-
tional fees required for examination of all claimed inven-
tions.

In the box provided at the top of the form, the time limit 
for response is set according to PCT Rule 68.2, normally a 
1 month time limit. Extensions of time are not permitted.

Since the space provided on Form PCT/IPEA/405 is lim-
ited, supplemental attachment sheets, supplied by the 
examiner, with reference back to the specific section, 
should be incorporated whenever necessary.

AUTHORIZED OFFICER

Form PCT/IPEA/405 must be signed by an examiner 
with at least partial signatory authority.

TELEPHONIC RESTRICTION PRACTICE

Telephone practice may be used in certain cases to allow 
applicants to elect an invention to be examined or to pay 
additional fees. Additional fees may be charged to a deposit 
account using the telephone practice only if:

(A)	The Demand for International Preliminary Exami-
nation included an authorization to charge additional fees 
to a deposit account,

(B)	Applicant or the legal representative or agent 
orally agrees to charge the additional fees to the account, 
and

(C)	A complete record of the telephone conversation 
is included with the Written Opinion including:

(1)	Examiner's name;

(2)	Authorizing attorney's name;

(3)	Date of conversation;

(4)	Invention elected and/or inventions for which 
additional fees paid; and

(5)	Deposit account number and amount to be 
charged.

If applicant or the legal representative or agent refuses to 
either restrict the claims to one invention or authorize pay-
ment of additional fees, Form PCT/IPEA/499 should be 
prepared and mailed to applicant.

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

The examiner must further orally advise applicant that 
any protest to the holding of lack of unity or the amount of 
additional fee required must be filed in writing no later than 
one month from the mailing date of the Written Opinion or 
the International Preliminary Examination Report if the 
lack of unity holding is first mailed with the IPER because 
there was no Written Opinion. The examiner should fill in 
the information on Form PCT/IPEA/499 "Chapter II PCT 
Telephone Memorandum for Lack of Unity" as a record of 
the telephonic holding of lack of unity.

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

(a)	An international and a national stage application shall relate to 
one invention only or to a group of inventions so linked as to form a single 
general inventive concept ("requirement of unity of invention"). Where a 
group of inventions is claimed in an application, the requirement of unity 
of invention shall be fulfilled only when there is a technical relationship 
among those inventions involving one or more of the same or correspond-
ing special technical features. The expression "special technical features" 
shall mean those technical features that define a contribution which each 
of the claimed inventions, considered as a whole, makes over the prior art.

(b)	An international or a national stage application  containing 
claims to different categories of invention will be considered to have unity 
of invention if the claims are drawn only to one of the following combina-
tions of categories:

(1)	A product and a process specially adapted for the manufac-
ture of said product; or

(2)	A product and a process of use of said product; or

(3)	A product, a process specially adapted for the manufacture 
of the said product, and a use of the said product; or

(4)	A process and an apparatus or means specifically designed 
for carrying out the said process; or

(5)	A product, a process specially adapted for the manufacture 
of the said product, and an apparatus or means specifically designed for 
carrying out the said process.

(c)	If an application contains claims to more or less than one of the 
combinations of categories of invention set forth in paragraph (b) of this 
section, unity of invention might not be present.

(d)	If multiple products, processes of manufacture or uses are 
claimed, the first invention of the category first mentioned in the claims of 
the application and the first recited invention of each of the other catego-
ries related thereto will be considered as the main invention in the claims, 
see PCT Article 17(3)(a) and ? 1.476(c).

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

?  18.05 Heading for Lack of Unity Action (Not Involving Species)

This application contains the following inventions or groups of inven-
tions which are not so linked as to form a single general inventive concept 
under PCT Rule 13.1.  In order for all inventions to be examined, the 
appropriate additional examination fees must be paid.

Examiner Note:

Begin all Lack of Unity actions with this heading.

?  18.06 Lack of Unity - Three Groups of Claims

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

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

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

Examiner Note:

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

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

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

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

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

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

Examiner Note:

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

?  18.06.02 Lack of Unity - One Additional Group of Claims

Group [1], claim  [2], drawn to [3].

Examiner Note:

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

?  18.07 Lack of Unity - Reasons Why Inventions Lack Unity

The inventions listed as Groups [1] do not relate to a single general 
inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, 
they lack the same or corresponding special technical features for the fol-
lowing reasons: [2]

Examiner Note:

1.	In bracket 1, insert appropriate Roman numerals for Groups 
involved.

2.	In bracket 2, insert reasoning.

?  18.16 Lack of Unity - Species - Heading

This application contains claims directed to more than one species of 
the generic invention.  These species are deemed to lack unity of invention 
because they are not so linked as to form a single general inventive con-
cept under PCT Rule 13.1.  

In order for more than one species to be examined, the appropriate 
additional examination fees must be paid. The species are as follows: 

[1]

Examiner Note:

In bracket 1, list each species by Fig. No. or embodiment.

?  18.17 Lack of Unity - Species - Correspondence of the Claims 
to the Species

The claims are deemed to correspond to the species listed above in the 
following manner:

[1]

The following claim(s) are generic: [2]

Examiner Note:

1.	This form paragraph is to be used immediately following 18.16.

2.	In bracket 1, for each species, list the claims, e.g., Fig.1 - claims 1, 3 
and 6.

3.	In bracket 2, identify each generic claim by number or insert the 
word --NONE--.

?  18.18 Lack of Unity - Species - Reasons Why Unity Is Lacking

The species listed above do not relate to a single general inventive con-
cept under PCT Rule 13.1 because, under PCT Rule 13.2, the species lack 
the same or corresponding special technical features for the following rea-
sons: [1]

Examiner Note:

1.	This form paragraph is to be used immediately following form para-
graph 18.17.

2.	In bracket 1, insert reasoning.

?  18.19 National Stage Restriction in 35 U.S.C. 371 Applications

Restriction is required under  35 U.S.C. 121 and 372.

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

In accordance with  37 CFR 1.499, applicant is required, in reply to 
this action, to elect a single invention to which the claims must be 
restricted.

Examiner Note:

1.	This form paragraph is to be used when making a restriction require-
ment in an application filed under the provisions of  35 U.S.C. 371.

2.	This form paragraph is to be followed by form paragraphs 18.06 
through 18.06.02, as appropriate, and by form paragraph 18.07.

?  18.20 National Stage Election of Species in 35 U.S.C. 371 
Applications

This application contains claims directed to more than one species of 
the generic invention. These species are deemed to lack unity of invention 
because they are not so linked as to form a single general inventive con-
cept under PCT Rule 13.1. 

The species are as follows: 

[1] 

Applicant is required, in reply to this action, to elect a single species to 
which the claims shall be restricted if no generic claim is finally held to be 
allowable.  The reply must also identify the claims readable on the elected 
species, including any claims subsequently added.  An argument that a 
claim is allowable or that all claims are generic is considered non-respon-
sive unless accompanied by an election.

Upon the allowance of a generic claim, applicant will be entitled to 
consideration of claims to additional species which are written in depen-
dent form or otherwise include all the limitations of an allowed generic 
claim as provided by  37 CFR 1.141.  If claims are added after the elec-
tion, applicant must indicate which are readable upon the elected species. 
MPEP ? 809.02(a).

Examiner Note:

1.	This form paragraph is to be used when making an election of spe-
cies requirement in an application filed under the provisions of  35 U.S.C. 
371.

2.	In bracket 1, list each species by Fig. No. or embodiment.

3.	This form paragraph is to be followed by form paragraphs 18.17 and 
18.18.

?  18.21 National Stage Election by Original Presentation in 
35 U.S.C. 371 Applications

Newly submitted claim  [1] directed to an invention that lacks unity 
with the invention originally claimed for the following reasons: [2] 

Since applicant has received an action on the merits for the originally 
presented invention, this invention has been constructively elected by 
original presentation for prosecution on the merits. Accordingly, claim  [3] 
withdrawn from consideration as being directed to a nonelected invention.  
See  37 CFR 1.142(b) and  MPEP ? 821.03.

1875.02	Reply to Invitation Concerning 
Lack of Unity of Invention 

PCT Administrative Instruction Section 603.

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

The International Preliminary Examining Authority shall transmit to 
the applicant, at the latest together with the international preliminary 
examination report, any decision which it has taken under Rule 68.3(c) on 
the protest of the applicant against payment of the additional fee where the 
international application is considered to lack unity of invention. At the 
same time, it shall transmit to the International Bureau a copy of both the 
protest and the decision thereon, as well as any request by the applicant to 
forward the texts of both the protest and the decision thereon to the elected 
Offices.

37 CFR 1.489.  Protest to lack of unity of invention before the 
International Preliminary Examining Authority.

(a)	If the applicant disagrees with the holding of lack of unity of 
invention by the International Preliminary Examining Authority, addi-
tional fees may be paid under protest, accompanied by a request for refund 
and a statement setting forth reasons for disagreement or why the required 
additional fees are considered excessive, or both.

(b)	Protest under paragraph (a) of this section will be examined by 
the Commissioner or the Commissioner's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees or a 
portion thereof will be refunded.

(c)	An applicant who desires that a copy of the protest and the deci-
sion thereon accompany the international preliminary examination report 
when forwarded to the Elected Offices, may notify the International Pre-
liminary Examining Authority to that effect any time prior to the issuance 
of the international preliminary examination report. Thereafter, such noti-
fication should be directed to the International Bureau.

Applicant may reply by paying some or all addition al 
fees or by restricting the claims to one invention. If appli-
cant makes no reply within the set time limit, the interna-
tional preliminary examination will proceed on the basis of 
the main invention only.

If applicant has paid an additional fee or fees, a protest to 
the holding of lack of unity of invention may be filed with 
the International Preliminary Examining Authority.

 NOTIFICATION OF DECISION ON PROTEST

Form PCT/IPEA/420 is used by the examining group  to 
inform the applicant of the decision regarding applicant's 
protest on the payment of additional fees concerning unity 
of invention.

NOTIFICATION

The examining group checks the appropriate box; i.e., 1 
or 2.  If box 2 is checked, a clear and concise explanation as 
to why the protest concerning the unity of invention was 
found to be unjustified must be given.

Since the space is limited, supplemental attachment 
sheet(s) should be incorporated whenever necessary.

AUTHORIZED OFFICER

Form PCT/IPEA/420 must be signed by a Group Direc-
tor.

1876	Notation of Errors and Informalities 
by the Examiner [R-1]

PCT Administrative Instruction Section 607.

Rectifications of Obvious Errors under Rule 91.1

**

>Where the International Preliminary Examining Authority authorizes 
a rectification of an obvious error under Rule 91.1 , Rule 70.1 6 and Sec-
tion 602(a) and (b) shall apply mutatis mutandis, provided that, where a 
sheet is marked as indicated in Section 602, the words "RECTIFIED 
SHEET (RULE 91 )" shall be used.

Where the International Preliminary Examining Authority authorizes a 
rectification of an obvious error under Rule 91.1 , Rule 70.1 6 and Section 
602(a) and (b) shall apply mutatis mutandis.<

 Although the examiner is not responsible for discover-
ing errors in the international application, if any errors 
come to the attention of the examiner, they should be noted 
and called to the applicant's attention. The examiner may 
invite applicant to rectify obvious errors using Form PCT/
IPEA/411. Errors that are not obvious may be called to 
applicant's attention in item VII of PCT/IPEA/408.

AUTHORIZED OFFICER

 Form PCT/IPEA/408 and 411 must be signed by an 
examiner having at least partial signatory authority.

1876.01	Request for Rectification and 
Notification of Action Thereon 

NOTIFICATION OF DECISION CONCERNING 
REQUEST FOR RECTIFICATION

The rectification of obvious errors is governed by PCT 
Rules 91.1 and 66.5.

NOTIFICATION

If the applicant requests correction of any obvious errors 
in the international application or in any paper submitted to 
the International Preliminary Examining Authority, other 
than in the request, any acceptable correction should be 
authorized by using Form PCT/IPEA/412.

The procedure governing the rectification of obvious 
errors is set forth in PCT rules 91.1(d) and 26.4(a).  Rectifi-
cation may be made on the request of the applicant. Any 
rectification offered to the international preliminary exam-
ining authority may be stated in a letter addressed to the 
international preliminary examining authority if the rectifi-
cation is of such a nature that it can be transferred from the 
letter to the international application without adversely 
affecting the clarity and direct reproducibility of the sheet 
on to which the rectification is to be transferred; otherwise, 
the applicant is required to submit a replacement sheet 
embodying the rectification and the letter accompanying 
the replacement sheet must draw attention to the differ-
ences between the replaced sheet and the replacement 
sheet.

The examiner after fully considering applicant's Request 
for Rectification of an obvious error, will notify applicant 
of the action taken on Form PCT/IPEA/412. Since the 
space provided is limited, supplemental sheet(s) should be 
incorporated whenever necessary.

AUTHORIZED OFFICER

Form PCT/IPEA/412 must be signed by an examiner 
having at least partial signatory authority.

1877	Nucleotide and/or Amino Acid 
Sequence Listings During the 
International Preliminary 
Examination 

If the International Preliminary Examining Authority 
finds that the international application contains disclosure 
of one or more nucleotide and/or amino acid sequences but 
(A) the international application does not contain a 
sequence listing complying with the standard provided for 
in the Administrative Instructions, or (B) applicant has not 
furnished a sequence listing in computer readable form 
complying with the standard provided for in the Adminis-
trative Instructions, the International Preliminary Examin-
ing Authority may request the applicant to furnish such 
sequence listing or listing in computer readable form in 
accordance with the Administrative Instructions.  PCT Rule 
13ter.1(e)

1878	Preparation of the Written Opinion 

PCT Article 34.

Procedure before the International Preliminary Examining 
Authority

*****

(2)(c)	The applicant shall receive at least one written opinion from 
the International Preliminary Examining Authority unless such Authority 
considers that all of the following conditions are fulfilled:

(i)	the invention satisfies the criteria set forth in Article 33(1),

(ii)	the international application complies with the requirements 
of this Treaty and the Regulations in so far as checked by that Authority,

(iii)	no observations are intended to be made under Article 35(2), 
last sentence.

*****

37 CFR 1.484.  Conduct of international preliminary 
examination.

(a)	An international preliminary examination will be conducted to 
formulate a non-binding opinion as to whether the claimed invention has 
novelty, involves an inventive step (is non-obvious) and is industrially 
applicable.

(b)	International preliminary examination will begin promptly upon 
receipt of a proper Demand  in an application for which the United States 
International Preliminary Examining Authority is competent, for which 
the fees for international preliminary examination (? 1.482) have been 
paid, and which requests examination based on the application as filed or 
as amended by an amendment which has been received by the United 
States International Preliminary Examining Authority. Where a Demand 
requests examination based on a PCT Article 19 amendment which has 
not been received, examination may begin at 20 months without receipt of 
a PCT Article 19 amendment. Where a Demand requests 
examination based on a PCT Article 34 amendment which has not been 
received, applicant will be notified and given a time period within which 
to submit the amendment.

(1)	Examination will begin after the earliest of:

(i)	Receipt of the amendment;

(ii)	Receipt of applicant's statement that no amendment will be 
made; or

(iii)	Expiration of the time period set in the notification.

(2)	No international preliminary examination report will be estab-
lished prior to issuance of an international search report.

(c)	No international preliminary examination  will be conducted on 
inventions not previously searched by an International Searching Author-
ity.

(d)	The International Preliminary Examining Authority will estab-
lish a written opinion if any defect exists or if the claimed invention lacks 
novelty, inventive step or industrial applicability and will set a non-
extendable time limit in the written opinion for the applicant to reply.

(e)	If no written opinion under paragraph (d) of this section is nec-
essary, or after any written opinion and the reply thereto or the expiration 
of the time limit for reply to such written opinion, an international prelim-
inary examination report will be established by the International Prelimi-
nary Examining Authority. One copy will be submitted to the International 
Bureau and one copy will be submitted to the applicant.

(f)	An applicant will be permitted a personal or telephone interview 
with the examiner, which must be conducted during the non-extendable 
time limit for reply by the applicant to a written opinion.  Additional inter-
views may be conducted where the examiner determines that such addi-
tional interviews may be helpful to advancing the international 
preliminary examination procedure.  A summary of any such personal or 
telephone interview must be filed by the applicant as a part of the reply to 
the written opinion or, if applicant files no reply, be made of record in the 
file by the examiner.

A Written Opinion must be prepared if the examiner:

(A)	Considers that the international application has 
any of the defects described in PCT Article 34(4);

(B)	Considers that the report should be negative with 
respect to any of the claims because of a lack of novelty, 
inventive step (non-obviousness) or industrial applicability;

(C)	Notices any defects in the form or contents of the 
international application under the PCT;

(D)	Considers that any amendment goes beyond the 
disclosure in the international application as originally 
filed;

(E)	Wishes to make an observation on the clarity of 
the claims, the description, the drawings or to question 
whether the claims are fully supported by the description;

(F)	Decides not to carry out the international prelimi-
nary examination on a claim for which no International 
Search Report was issued; or

(G)	Considers that no acceptable amino acid sequence 
listing is available in a form that would allow a meaningful 
international preliminary examination to be carried out.

The applicant must be notified on Form PCT/IPEA/408 
of the defects found in the application. The examiner is fur-
ther required to fully state the reasons for his/her opinion 
(PCT Rule 66.2(b)) and invite a written reply, with amend-
ments where appropriate (PCT Rule 66.2(c)), setting a time 
limit for the reply of normally 2 months.

The examiner should insert the words "first" or "sec-
ond", as the case may be, in the space provided on page 1 
of the Written Opinion.

ITEM I.	BASIS OF OPINION

Applicant has two opportunities to amend the interna-
tional application prior to international preliminary exami-
nation. Under PCT Article 19, the applicant is entitled to 
one opportunity to amend the claims of the international 
application by filing amendments with the International 
Bureau within 2 months of the mailing of the International 
Search Report. See PCT Rule 46.1. Applicant is also per-
mitted to make amendments before the International Pre-
liminary Examining Authority under PCT Article 34(2)(b) 
and PCT Rule 66.1. Any amendment, however, that does 
not accompany the filing of the Demand but is filed later 
may not be considered unless it reaches the examiner 
before he/she takes up the application for examination.

For the purpose of completing Box I, Item 1, of Form 
PCT/IPEA/408, substitute and/or rectified sheets of the 
specification and drawings filed during Chapter I proceed-
ings are considered to be originally filed pages/sheets and 
should be listed as originally filed pages/sheets. Only those 
amendments or rectifications to the specification and draw-
ings filed on the date of Demand or after the filing of a 
Demand should be listed as later filed pages/sheets. Substi-
tute and/or rectified sheets of claims filed during the Chap-
ter I proceedings are also considered to be originally filed 
pages/sheets and should be listed as originally filed pages/
sheets. However, amended sheets of claims filed under 
Article 19 in response to the international search report are 
to be indicated as pages/sheets as amended under Article 
19.  Only those amendments, or rectifications to the claims 
filed on the date of Demand or after the filing of a Demand 
should be listed as later filed pages/sheets. All claims 
present on a sheet stamped AMENDED SHEET are listed 
as amended irrespective of which of the claims present on 
that sheet were actually amended. If a claim is made up of 
sheets filed on different dates, the latest date is the date that 
should be used for the claim.

ITEM II.	PRIORITY

Item II of Form PCT/IPEA/408 is to inform applicant of 
non-establishment of a request for priority.

If applicant fails to furnish a copy or translation of the 
earlier application, whose priority has been claimed, within 
the time limit set by the examiner pursuant to PCT Rule 
66.7, check box No. 1 and then check the first box of the 
subsection if applicant failed to furnish a copy of the earlier 
application whose priority has been claimed, and check the 
second box in the subsection if applicant failed to furnish a 
translation of the earlier application whose priority has 
been claimed.

When the claim for priority has been found invalid (e.g., 
the claimed priority date is more than one year prior to the 
international filing date and the notification under PCT 
Rule 4.10(d) has been provided or all claims are directed to 
inventions which were not described and enabled by the 
earlier application), check box No. 2 of Item II and indicate 
why the claim for priority has been found invalid following 
No. 3 "Additional observations".  The examiner is 
reminded that when some claims in an international appli-
cation are directed to an invention which was disclosed in 
the earlier application, the priority claim is valid provided 
that a copy and/or translation of the earlier application 
have/has been filed and the filing date of the earlier appli-
cation is one year or less from the filing date of the interna-
tional application.

ITEM  III.	NON-ESTABLISHMENT OF OPINION ON 
NOVELTY, INVENTIVE STEP AND INDUSTRIAL 
APPLICABILITY

Item III of Form PCT/IPEA/408 is intended to cover sit-
uations where some or all claims of an application are so 
unclear or inadequately supported by the description that 
the question of novelty, inventive step (nonobviousness), 
and industrial applicability cannot be considered, or where 
the international application or claims thereof relate to sub-
ject matter which does not require international preliminary 
examination, or where no international search report has 
been established for the claims.

If some or all of claims of an application relate to subject 
matter which does not require international preliminary 
examination, check the appropriate box, indicate which 
claims relate to that subject matter and specify the reasons.

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

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

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

ITEM IV.	LACK OF UNITY OF INVENTION

Item IV of Form PCT/IPEA/408 should be used by the 
examiner to notify applicant that lack of unity of invention 
has been found.

If in reply to an invitation to restrict, applicant restricted 
the claims to a particular group, check the first box under 
subsection 1.

If applicant paid additional fees for examination of addi-
tional invention, check the second box under subsection 1.

If the additional fees were paid under protest, check the 
third box under subsection 1.

If applicant neither restricted nor paid additional fees in 
reply to the objection of lack of unity of invention, check 
the fourth box under subsection 1.

Subsection 2 of Item IV is to be completed if the exam-
iner determines that unity of invention is lacking but 
chooses not to invite the applicant to restrict or pay addi-
tional fees.

Subsection 3 of Item IV is to be completed to indicate 
which claims were the subject of international preliminary 
examination.

If all claims are to be examined, check the first box 
under subsection 3.

If only some of the claims were the subject of interna-
tional preliminary examination, check the second box 
under subsection 3 and identify the claim numbers.

ITEM V.	REASONED STATEMENT WITH REGARD 
TO NOVELTY, INVENTIVE STEP, AND 
INDUSTRIAL APPLICABILITY OF CLAIMS

In Item V, the examiner must list in summary form all  
claims with regard to the criteria of novelty (N), inventive 
step (IS), and industrial applicability (IA).

Item V is the main purpose of the Written Opinion. All 
claims without fatal defects are treated on the merits in 
Item V as to novelty, inventive step (nonobviousness) and 
industrial applicability.

The treatment of claims in Item V is similar in format to 
an Office action in a U.S. national patent application except 
that the words "rejection" and "patentability" are never 
used in a Written Opinion. On the international level, all 
Written Opinions are nonbinding and a patent does not 
issue; what does issue is an International Preliminary 
Examination Report (IPER), which is nonbinding on the 
Elected States.

Examiner statements in Item V can be positive and/or 
negative. If, for example, claims define over the prior art 
and meet the test of novelty, inventive step (nonobvious-
ness) and industrial applicability, a statement equivalent to 
detailed reasons for allowance in a corresponding U.S. 
application, indicating how the claims meet the tests of 
novelty, inventive step and industrial applicability is suffi-
cient. If on the other hand it is the opinion of the examiner 
that some or all claims lack novelty, inventive step, and/or 
industrial applicability, specific reasons for the opinion 
employing PCT form paragraphs, if appropriate, must be 
given similar to those used in U.S. national applications 
including a statement of motivation to combine references 
cited regarding negative statements of inventive step.

Form paragraphs to be used by the examiners appear in 
the relevant sections of this Manual. All examiners are 
expected to use the PCT form paragraphs in formulating 
any negative statements listed in Item V.

Examiners are encouraged to indicate any amendments 
which applicant could present which would avoid a nega-
tive statement in the International Preliminary Examination 
Report.

All international applications where an examination has 
been demanded should be searched by the examiner at least 
to the point of bringing the previous search up to date. Prior 
art discovered in a search and applied in an Item V state-
ment must be made of record in Item V.  Prior art already 
cited on the International Search Report need not again be 
cited on the Written Opinion or International Preliminary 
Examination Report. The subsequently discovered prior art 
is to be cited in compliance with PCT Rule 43.5 and 
Administrative Instructions Section 503 using the same 
citation format used on the International Search Report.

?  18.01 Lacks Novelty

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

Examiner Note:

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

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

?  18.02 Lacks Inventive Step -  One Reference

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

Examiner Note:

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

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

3.	In bracket 3, add reasoning.

?  18.02.01 Lacks Inventive Step - Two References

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

Examiner Note:

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

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

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

4.	In bracket 4, add reasoning.

?  18.02.02 Lacks Inventive Step - Additional Reference

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

Examiner Note:

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

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

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

4.	In bracket 3, add reasoning.

?  18.03 Lacks Industrial Applicability

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

Examiner Note:

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

2.	In bracket 2, add reasoning.

?  18.04 Meets Novelty, Inventive Step and Industrial Applicability

Claim  [1] the criteria set out in PCT Article 33(2)-(4), because the 
prior art does not teach or fairly suggest [2].

Examiner Note:

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

2.	In bracket 2, insert patentable subject matter.

ITEM VI.	CERTAIN  DOCUMENTS  CITED

Item VI provides a convenient manner of listing two dif-
ferent types of documents:

(A)	Published documents - by the application number 
or patent number as well as the publication date, filing date 
and priority date; and

(B)	Nonwritten disclosure - by the kind of disclosure, 
date of the disclosure and the date of the written disclosure 
referring to the nonwritten disclosure.

ITEM  VII.	CERTAIN  DEFECTS  IN THE 
INTERNATIONAL APPLICATION

In Item VII, defects in the form and content of the inter-
national application are identified.

Examples of defects that would be listed in Item VII are:

(A)	Informalities such as misplaced and/or omitted 
drawing numerals, misspelled words, grammatical errors, 
etc.

(B)	An amendment to the drawings, description or 
claims which was not timely filed.

(C)	Improper multiple-dependent claims (PCT Rule 
6.4) if not indicated under Item III.

The following form paragraphs are used in Box VII of 
PCT/IPEA/408 or PCT/IPEA/409 "Certain defects in the 
international application" for noting technical defects.

?  18.08 Drawing Objections - Defects

The drawings are objected to under PCT Rule 66.2(a)(iii) as containing 
the following defect(s) in the form or content thereof: [1] 

Examiner Note:

In bracket 1, insert identification of defects in drawings.

?  18.08.01 Drawing Is Required

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

?  18.09 Description Defective

The description is objected to as containing the following defect(s) 
under PCT Rule 66.2(a)(iii) in the form or contents thereof: [1]

Examiner Note:

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

?  18.10 Claims Defective

Claim  [1] objected to under PCT Rule 66.2(a)(iii) as containing the 
following defect(s) in the form or contents thereof: [2]

Examiner Note:

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

2.	In bracket 2, identify the technical deficiency. 

ITEM VIII.	CERTAIN OBSERVATIONS ON THE 
INTERNATIONAL APPLICATION

In Item VIII, the examiner notifies the applicant of 
observations made as to the clarity of the claims, the 
description, the drawings, or on the question whether the 
claims are fully supported by the description.

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

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

If the lack of clarity of the claims, the description, or the 
drawings is of such a nature that it is possible to form a 
meaningful opinion on the claimed subject matter, then it is 
required that the examiner consider the claims and render a 
Written Opinion on novelty, inventive step, and industrial 
applicability in Item V of Form PCT/IPEA/408.

Since the claims of an international application are not 
subject to a rejection on either art or indefiniteness consis-
tent with U.S. practice, observations by the examiner  with 
regard to clarity of the claims, the description and the draw-
ings will be treated in the form of an objection in the Writ-
ten Opinion in Item VIII.

The following form paragraphs are used in Box VIII 
"Certain observations on the international application" of 
PCT/IPEA/408 and PCT/IPEA/409 for noting objections 
which are substantive rather than merely technical in 
nature.

?  18.11 Drawing Objections - Lack Clarity

The drawings are objected to under PCT Rule 66.2(a)(v) as lacking 
clarity under PCT Article 7 because: [1] 

Examiner Note:

In bracket 1, insert reasons why the drawings lack clarity, e.g., inaccu-
rate showing.

?  18.12 Description Defective - Lacks Written Description

The description is objected to under PCT Rule 66.2(a)(v) as lacking 
clarity under PCT Article 5 because it fails to contain an adequate written 
description of [1].  The description is inadequate because: [2]

Examiner Note:

1.	In bracket 1, identify the subject matter not described in the descrip-
tion.

2.	In bracket 2, insert reasons.

?  18.12.01 Claims Objectionable - Inadequate Written 
Description

Claim  [1] objected to as lacking clarity under PCT Rule 66.2(a)(v) 
because practice of the claimed invention is not adequately described in 
writing, as required under PCT Rule 5.1(a)(iii), for the reasons set forth in 
the immediately preceding paragraph.

Examiner Note:

1.	This form paragraph is to be used immediately after form paragraph 
18.12.

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

?  18.13 Description Defective - Not Enabling

The description is objected to under PCT Rule 66.2(a)(v) as lacking 
clarity under PCT Article 5 because it fails to adequately enable practice 
of the claimed invention because: [1] 

Examiner Note:

In bracket 1, insert objection and reasons.

?  18.13.01 Claims Objectionable - Non-Enabling Disclosure

Claim  [1] objected to as lacking clarity under PCT Rule 66.2(a)(v) 
because practice of the claimed invention is not enabled as required under 
PCT Rule 5.1(a) for the reasons set forth in the immediately preceding 
paragraph.

Examiner Note:

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

2.	This form paragraph is to be used immediately after form paragraph 
18.13.

?  18.14 Description Defective - No Best Mode

The description is objected to under PCT Rule 66.2(a)(v) as lacking 
clarity for failing to describe the best mode for practicing the claimed sub-
ject matter as required by PCT Rule 5.1(a)(v).  The best mode is not 
described because: [1]

Examiner Note:

In bracket 1, insert objection and reasons.

?  18.14.01 Claims Objectionable - Lack of Best Mode

Claim  [1] objected to under PCT Rule 66.2(a)(v) as lacking clarity 
because the claim  [2] based on a description which fails to describe the 
best mode for carrying out the invention under PCT Rule 5.1(a)(v) for the 
reasons set forth in the immediately preceding paragraph.

Examiner Note:

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

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

3.	This form paragraph is to be used immediately following form para-
graph 18.14.

?  18.15 Claims Objectionable - Indefiniteness

Claim  [1] objected to under PCT Rule 66.2(a)(v) as lacking clarity 
under PCT Article 6 because claim  [2] indefinite for the following rea-
son(s): [3]

Examiner Note:

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

2.	In bracket 3, insert reasons.

TIME TO REPLY

An invitation by the International Preliminary Examin-
ing Authority (IPEA) to applicant to reply to the examiner's 
Written Opinion will normally set a 2-month time limit to 
reply.

The time may be as short as 1 month or as long as 3 
months dependent upon the time remaining before the 
International Preliminary Examination Report is due.

AUTHORIZED OFFICER

Every Written Opinion must be signed by an examiner 
having at least partial signatory authority.

The first document prepared by the examiner in most 
international applications during the international prelimi-
nary examination proceedings will be the Written Opinion. 
Normally only in those international applications where all 
the formal matters are proper and the claims are directed to 
inventions which have novelty, inventive step and indus-
trial applicability will an International Preliminary Exami-
nation Report be established without a Written Opinion 
having been issued first.

1878.01	

1878.01(a)	Prior Art Under Chapter II 

PCT Article 33.

The International Preliminary Examination

*****

(6)	The international preliminary examination shall take into con-
sideration all the documents cited in the international search report. It may 
take into consideration any additional documents considered to be relevant 
in the particular case.

PCT Rule 64.

Prior Art for International Preliminary Examination

64.1.Prior Art

(a)	For the purposes of Article 33(2) and (3), everything made 
available to the public anywhere in the world by means of written disclo-
sure (including drawings and other illustrations) shall be considered prior 
art provided that such making available occurred prior to the relevant date.

(b)	For the purposes of paragraph (a), the relevant date will be:

(i)	subject to item (ii), the international filing date of the inter-
national application under international  preliminary examination;

(ii)	where the international application under international pre-
liminary examination validly claims the priority of an earlier application, 
the filing date of such earlier application.

64.2.Non-Written Disclosures

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

64.3.Certain Published Documents

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

The relevant date for the purpose of considering prior art 
is defined in PCT Rule 64.1(b) as the international filing 
date or, where the international application contains a valid 
claim for priority, that date of priority.

In cases where any application or any patent which 
would constitute prior art for the purpose of international 
preliminary examination as to novelty and inventive step 
(nonobviousness) was published on or after the relevant 
date of the international application under consideration but 
was filed earlier than the relevant date or claimed the prior-
ity of an earlier application which was filed prior to the rel-
evant date, the published application or patent is not to be 
considered part of the prior art for the purpose of interna-
tional preliminary examination as to novelty and inventive 
step. Nevertheless, these documents are to be listed on 
Form PCT/IPEA/409 under the heading "CERTAIN PUB-
LISHED DOCUMENTS".

In determining whether there is inventive step, account 
should be taken of what the applicant acknowledges in his/
her description as known. Such acknowledged prior art 
should be regarded as correct and used during preliminary 
examination where appropriate.

For oral or nonwritten disclosure, see PCT Rules 64.2 
and 70.9.

1878.01(a)(1)	Novelty Under Chapter II 

Novelty is defined in PCT Article 33(2).

PCT Article 33.

The International Preliminary Examination

*****

(2)	For the purposes of the international preliminary examination, a 
claimed invention shall be considered novel if it is not anticipated by the 
prior art as defined in the Regulations.

*****

1878.01(a)(2)	Inventive Step Under Chapter II 

Inventive step is defined in PCT Article 33(3).

PCT Article 33.

The International Preliminary Examination

*****

(3)	For purposes of the international preliminary examination, a 
claimed invention shall be considered to involve an inventive step if, hav-
ing regard to the prior art as defined in the Regulations, it is not, at the pre-
scribed relevant date, obvious to a person skilled in the art.

*****

PCT Rule 65.

  Inventive Step or Non-Obviousness

65.1.Approach to Prior Art

For the purposes of Article 33(3), the international preliminary exami-
nation shall take into consideration the relation of any particular claim to 
the prior art as a whole. It shall take into consideration the claim's relation 
not only to individual documents or parts thereof taken separately but also 
its relation to combinations of such documents or parts of documents, 
where such combinations are obvious to a person skilled in the art.

65.2.Relevant Date

For the purposes of Article 33(3), the relevant date for the consider-
ation of inventive step (non-obviousness) is the date prescribed in Rule 
64.1.

1878.01(a)(3)	Industrial Applicability Under 
Chapter  II 

Industrial applicability is defined in PCT Article 33(4).

PCT Article 33.

The International Preliminary Examination

*****

(4)	For the purposes of the international preliminary examination, a 
claimed invention shall be considered industrially applicable if, according 
to its nature, it can be made or used (in the technological sense) in any 
kind of industry.  Industry  shall be understood in its broadest sense, as in 
the Paris Convention for the Protection of Industrial Property.

*****

1878.02	Reply to the Written Opinion 

PCT Article 34.

Procedure before the International Preliminary Examining 
Authority

*****

(2)(a)	The applicant shall have a right to communicate orally and in 
writing with the International Preliminary Examining Authority.

(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.

*****

(d)	The applicant may respond to the written opinion.

*****

PCT Rule 66.

Procedure before the International Preliminary Examining 
Authority

*****

66.3.Formal Response to the International Preliminary Examin-
ing Authority

(a)	The applicant may respond to the invitation referred to in Rule 
66.2(c) of the International Preliminary Examining Authority by making 
amendments or  if he disagrees with the opinion of that Authority by sub-
mitting arguments, as the case may be, or do both.

(b)	Any response shall be submitted directly to the International 
Preliminary Examining Authority.

*****

66.5.Amendment

Any change, other than the rectification of obvious errors, in the 
claims, the description, or the drawings, including cancellation of claims, 
omission of passages in the description, or omission of certain drawings, 
shall be considered an amendment.

66.6.Informal Communications with the Applicant

The International Preliminary Examining Authority may, at any time, 
communicate informally, over the telephone, in writing, or through per-
sonal interviews, with the applicant. The said Authority shall, at its discre-
tion, decide whether it wishes to grant more than one personal interview if 
so requested by the applicant, or whether it wishes to reply to any informal 
written communication from the applicant.

*****

66.8.Form of Amendments

(a)	Subject to paragraph (b), the applicant shall be required to sub-
mit 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 para-
graph (a) may be a copy of the relevant sheet of the international applica-
tion 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.

66.9.Language of Amendments

(a)	Subject to paragraphs (b) and (c), if the international application 
has been filed in a language other than the language in which it is pub-
lished, any amendment, as well as any letter referred to in Rule 66.8, shall 
be submitted in the language of publication.

(b)	If the international preliminary examination is carried out, pur-
suant to Rule 55.2, on the basis of a translation of the international appli-
cation, any amendment, as well as any letter referred to in paragraph (a), 
shall be submitted in the language of that translation.

(c)	Subject to Rule 55.3, if an amendment or letter is not submitted 
in a language as required under paragraphs (a) or (b), the International  
Preliminary Examining Authority shall, if practicable having regard to the 
time limit for establishing the international preliminary examination 
report, invite the applicant to furnish the amendment or letter in the 
required language within a time limit which shall be reasonable under the 
circumstances.

(d)	If the applicant fails to comply, within the time limit under para-
graph (c), with the invitation to furnish an amendment in the required lan-
guage, the amendment shall not be taken into account for the purposes of 
the international preliminary examination. If the applicant fails to comply, 
within the time limit under paragraph (c), with the invitation to furnish a 
letter referred to in paragraph (a) in the required language, the amendment 
concerned need not be taken into account for the purposes of the interna-
tional preliminary examination.

37 CFR 1.485.  Amendments by applicant during international 
preliminary examination.

(a)	The applicant may make amendments at the time of filing of 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 amend-
ments 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.

All amendments in reply to a Written Opinion must be 
received within the time limit set for reply in order to be 
assured of consideration in the International Preliminary 
Examination Report. Amendments filed at or before expira-
tion of the period for reply will be considered. Since the 
examiner will begin to draw up the final report rather 
promptly after the time period expires, amendments filed 
after expiration of the reply period may not be considered. 
In view of the short time period for completion of prelimi-
nary examination, applicants are strongly encouraged to 
file any amendments promptly.  37 CFR 1.484(d) does not 
allow for extensions of time to reply to a Written Opinion.  
The policy of not allowing extensions of time is to ensure 
that the USPTO can meet its treaty deadline for transmis-
sion of the final report.

Any change, other than the rectification of obvious 
errors in the claims, the description, or the drawings, 
including the cancellation of claims, omission of passages 
in the description or omission of certain drawings will be 
considered an amendment (PCT Rule 66.5). The Patent and 
Trademark Office when acting as the International Prelimi-
nary Examining Authority will not accept any non-English 
applications or amendments.

Any amendments to the claims, the description, and the 
drawings in reply to a Written Opinion must (1) be made by 
submitting a replacement sheet for every sheet of the appli-
cation 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 
in accordance with PCT Rule 66.8.

In the particular case where the amendment cancels 
claims, passages in the description or certain drawings 
resulting in the cancellation of an entire sheet, the amend-
ment must be submitted in the form of a letter cancelling 
the sheet (PCT Rule 66.8(a)).

Replacement sheets must be in typed form.

Any paper submitted by the applicant, if not in the form 
of a letter, must be accompanied by a letter signed by the 
applicant or agent (PCT Rule 92.1). The letter must draw 
attention to the differences between the replaced sheet and 
the replacement sheet.

The examiner should make sure that amendments filed 
in accordance with the PCT, which are necessary to correct 
any deficiencies notified to the applicant, do not go beyond 
the disclosure of the international application as filed, thus 
violating PCT Article 34(2)(b). In other words, no amend-
ment should contain matter that cannot be substantiated by 
the application as originally filed. In a situation where new 
matter is introduced by amendment in reply to a Written 
Opinion, the International Preliminary Examination Report 
will be established as if the amendment had not been made, 
and the report should so indicate. It shall also indicate the 
reasons why the amendment goes beyond the disclosure 
(PCT Rule 70.2(c)).

INTERVIEWS

The examiner or applicant may, during the time limit for 
reply to the Written Opinion, request a telephone or per-
sonal interview. Only one interview is a matter of right, 
whether by telephone or in person. Additional interviews 
may be authorized by the examiner in a particular interna-
tional application where such additional interview may be 
helpful to advance the international preliminary examina-
tion procedure.

All interviews of substance must be made of record by 
using PCT/IPEA/428 Notice on Informal Communication 
with the Applicant.

When an interview is arranged, whether by telephone or 
in writing, and whether by the examiner or by the applicant, 
the matters for discussion should be stated.

The records of interviews or telephone conversations 
should indicate, where appropriate, whether a reply is due 
from the applicant or agent or whether the examiner wishes 
to issue an additional written opinion or establish the Inter-
national Preliminary Examination Report.

If the applicant desires to reply to the Written Opinion, 
such reply must be filed within the time limit set for reply 
in order to assure consideration. No extensions to the time 
limit will be considered or granted. If no timely reply is 
received from the applicant, the International Preliminary 
Examination Report will be established by the examiner, 
treating each claim substantially as it was treated in the 
Written Opinion. Replies to the Written Opinion which are 
not filed within the time limit set but which reach the exam-
iner before the examiner takes up the application for prepa-
ration of the final report may be considered. Thus, only 
timely replies can be assured of consideration.

The applicant may reply to the invitation referred to in 
Rule 66.2(c) by making amendments or, if the applicant 
disagrees with the opinion of the authority, by submitting 
arguments, as the case may be, or both (PCT Rule 66.3).

The United States rules pertaining to international pre-
liminary examination of international applications do not 
provide for any extension of time to reply to a first Written 
Opinion.

If applicant does not reply to the Written Opinion, the 
International Preliminary Examination Report will be pre-
pared in time for forwarding to the International Division in 
finished form by 27 months from the priority date.

1879	Preparation of the International Pre- 
liminary Examination Report [R-1]

PCT Article 35.

The International Preliminary Examination Report

(1)	The international preliminary examination report shall be estab-
lished within the prescribed time limit and in the prescribed form.

(2)	The international preliminary examination report shall not con-
tain any statement on the question whether the claimed invention is or 
seems to be patentable or unpatentable according to any national law. It 
shall state, subject to the provisions of paragraph (3), in relation to each 
claim, whether the claim appears to satisfy the criteria of novelty, inven-
tive step (non-obviousness), and industrial applicability, as defined for the 
purposes of the international preliminary examination in Article 33(1) to 
(4). The statement shall be accompanied by the citation of the documents 
believed to support the stated conclusion with such explanations as the cir-
cumstances of the case may require. The statement shall also be accompa-
nied by such other observations as the Regulations provide for.

(3)(a)	If, at the time of establishing the international preliminary 
examination report, the International Preliminary Examining Authority 
considers that any of the situations referred to in Article 34(4)(a) exists, 
that report shall state this opinion and the reasons therefor. It shall not con-
tain any statement as provided in paragraph (2).

(b)	If a situation under Article 34(4)(b) is found to exist, the 
international preliminary examination report shall, in relation to the claims 
in question, contain the statement as provided in subparagraph (a), 
whereas, in relation to the other claims, it shall contain the statement as 
provided in paragraph (2).

PCT Administrative Instruction Section 604.

Guidelines for Explanations Contained in the International Pre-
liminary Examination Report

(a)	Explanations under Rule 70.8 shall clearly point out to which of 
the three criteria of novelty, inventive step (nonobviousness) and industrial 
applicability referred to in Article 35(2), taken separately, any cited docu-
ment is applicable and shall clearly describe, with reference to the cited 
documents, the reasons supporting the conclusion that any of the said cri-
teria is or is not satisfied.

(b)	Explanations under Article 35(2) shall be concise and preferably 
in the form of short sentences.

After examination of the international application, if 
there are no negative statements and/or negative comments 
for Form PCT/IPEA/408, then the only statement that will 
issue from the International Preliminary Examining 
Authority will be the International Preliminary Examina-
tion Report (IPER).

The International Preliminary Examination Report is 
established on Form PCT/IPEA/409.

The International Preliminary Examination Report must 
be established within 28 months from the priority date if 
the Demand was filed prior to the expiration of 19 months 
from the priority date; otherwise, the time limit is 9 months 
from the start of the international preliminary examination. 
To meet this 28-month date for establishing the report, 
Office practice is to complete internal processing by 27 
months from the priority date in order to provide adequate 
time for reviewing, final processing and mailing. Thus, 
under normal circumstances, the applicant receives the 
report, at the latest, 2 months before national processing at 
the elected Offices may start.  This ensures that he/she has 
time to consider whether, and in which elected Offices, he/
she wants to enter the national stage and to take the neces-
sary action.

The International Preliminary Examination Report con-
tains, among other things, a statement (in the form of sim-
ple "yes" or "no"), in relation to each claim which has been 
examined, on whether the claim appears to satisfy the crite-
ria of novelty, inventive step (non-obviousness) and indus-
trial applicability. The statement is, where appropriate, 
accompanied by the citation of relevant documents together 
with concise explanations pointing out the criteria to which 
the cited documents are applicable and giving reasons 
for the International Preliminary Examining Authority's 
conclusions. Where applicable, the report also includes 
remarks relating to the question of unity of invention.

The International Preliminary Examination Report iden-
tifies the basis on which it is established, that is, whether, 
and if so, which amendments have been taken into account. 
Replacement sheets containing amendments under PCT 
Article 19 and/or Article 34 which have been taken into 
account are attached as "annexes" to the International Pre-
liminary Examination Report. Amendments under PCT 
Article 19 which have been considered as reversed by an 
amendment under PCT Article 34 or which have been 
superseded by later replacement sheets are not annexed to 
the report; neither are the letters which accompany replace-
ment sheets.

The International Preliminary Examination Report may 
not express a view on the patentability of the invention.  
PCT Article 35(2) expressly states that "the international 
preliminary examination report shall not contain any state-
ment on the question whether the claimed invention is or 
seems to be patentable or unpatentable according to any 
national law."

CLASSIFICATION OF SUBJECT MATTER

The classification of the subject matter shall be either (1) 
that given by the International Searching Authority under 
PCT Rule 43.3, if the examiner agrees with such classifica-
tion, or (2) shall be that which the examiner considers to be 
correct, if the examiner does not agree with that classifica-
tion. Both the International Patent Classification (IPC) and 
the U.S. classification should be given. This classification 
is placed on the first sheet of the report.

ITEM I.	BASIS OF REPORT

The International Preliminary Examination Report will 
be established on the basis of any amendments, rectifica-
tions, priority and/or unity of invention holdings and shall 
answer the questions concerning novelty, inventive step, 
and industrial applicability for each of the claims under 
examination.

In completing Form PCT/IPEA/409, the examiner 
should first indicate any amendments and/or rectifications 
of obvious  errors taken into account in establishing the 
International Preliminary Examination Report. The amend-
ments and/or rectifications should be indicated by refer-
ences to the dates on which the amendments and/or 
rectifications were filed. 

For the purpose of completing Box I, item 1, substitute 
and/or rectified sheets of the specification and drawings 
filed during Chapter I proceedings are considered to be 
originally filed pages/sheets and should be listed as origi-
nally filed pages/sheets. Only those amendments or rectifi-
cations to the specification and drawings filed on the date 
of Demand or after the filing of a Demand should be listed 
as later filed pages/sheets. 

Substitute and/or rectified sheets of claims filed during 
the Chapter I proceedings are also  considered to be origi-
nally filed claims and should be listed as originally filed 
claims. However, amended sheets of claims filed under 
Article 19 in response to the international search report are 
to be indicated as claims as amended under Article 19. 
Applicant's submission of a timely amendment to the 
claims alleged to be under Article 19 is accepted under 
Article 34 (not Article 19) unless the International Bureau 
has indicated the amendments were accepted under Article 
19. Only those amendments, or rectifications to the claims 
filed on the date of Demand or after the filing of a Demand 
should be listed as later filed claims. All claims present on 
a sheet stamped AMENDED SHEET are listed as amended 
irrespective of which of the claims present on that sheet 
were actually amended.  If a claim is made up of sheets 
filed on different dates, the latest date is the date that should 
be used for the claim.

Amendments and/or rectifications filed but not taken 
into account in the establishment of the report (e.g., an 
amendment not taken into account because the amendment 
went beyond the disclosure of the international application 
as filed or a rectification that is not considered to be merely 
a correction of an obvious error) are then indicated sepa-
rately. The replacement sheets (but not replacement sheets 
superseded by later replacement sheets) or letters cancel-
ling sheets under PCT Rule 66.8(a) are included as an 
annex to the report.

The final report package when sent to * the International 
Application Processing Division for mailing must include 
copies of all amendments and rectifications entered and any 
cover letters to those amendments.

ITEM II.	PRIORITY

Item II of Form PCT/IPEA/409 is to inform applicant of 
non-establishment of a request for priority.  If the report is 
established as if the priority claim contained in the Request 
of the international application had not been made, it shall 
so indicate.  This will occur in the event that the applicant 
has failed to comply with the invitation to furnish either 

(A)	a copy of the earlier application whose priority is 
claimed, or 

(B)	a translation of the earlier application, or 

(C)	where the priority claim is found invalid, e.g., the 
claimed priority date is more than one year prior to the 
international filing date (PCT Rule 17) or all claims are 
directed to inventions which were not described and 
enabled by the earlier application (PCT Rule 64.1), or

(D)	where the priority claim has been withdrawn.

ITEM III.	NON-ESTABLISHMENT OF OPINION 
WITH REGARD TO NOVELTY, INVENTIVE 
STEP OR INDUSTRIAL APPLICABILITY

Indications that a report has not been established on the 
questions of novelty, inventive step or industrial applicabil-
ity, either as to some claims or as to all claims, are given in 
Item III on the Report. The examiner must specify that the 
report has not been established because:

(A)	the application relates to subject matter which 
does not require international preliminary examination;

(B)	the description, claims or drawings are so unclear 
that no meaningful opinion could be formed;

(C)	the claims are so inadequately supported by the 
description that no meaningful opinion could be formed.

Where the report has not been established in relation to 
certain claims only, the claims affected must be specified.

ITEM IV.	LACK OF UNITY OF INVENTION

If the applicant has paid additional fees or has restricted 
the claims in response to an invitation to do so or if the 
applicant has failed to respond to the invitation to pay addi-
tional fees or restrict the claims, the International Prelimi-
nary Examination Report shall so indicate. The examiner 
should indicate whether:

(A)	the claims have been restricted;

(B)	additional fees have been paid without protest;

(C)	additional fees have been paid by the applicant 
under protest;

(D)	the applicant has neither restricted the claims nor 
paid additional fees;

(E)	the examiner was of the opinion that the interna-
tional application did not comply with the requirement of 
unity of invention but decided not to issue an invitation to 
restrict the claims or pay additional fees.

In addition, if the examiner is examining less than all the 
claims, the examiner must indicate which parts of the inter-
national application were, and which parts were not, the 
subject of international preliminary examination.

In the case where additional fees were paid under pro-
test, the text of the protest, together with the decision 
thereon, must be annexed to the report by International 
Application Processing Division IPEA personnel if the 
applicant has so requested.

Where an indication has been given under item (E) 
above, the examiner must also specify the reasons for 
which the international application was not considered as 
complying with the requirement of unity of invention.

ITEM V.	REASONED STATEMENT UNDER 
ARTICLE 35(2) WITH REGARD TO 
NOVELTY, INVENTIVE STEP, AND 
INDUSTRIAL APPLICABILITY; AND 
CITATIONS AND EXPLANATIONS 
SUPPORTING SUCH STATEMENT

The examiner must indicate whether each claim appears 
to satisfy the criteria of novelty, inventive step (nonobvi-
ousness), and industrial applicability. The determination or 
statement should be made on each of the three criteria taken 
separately. The determination as to any criteria should be 
negative if the criteria as to the particular claim is not satis-
fied. The examiner should always cite documents believed 
to support any negative determination as to novelty and 
inventive step. Any negative holding as to lack of industrial 
applicability must be fully explained. See the discussion 
under  MPEP ? 1878, Item V.  The citation of documents 
should be in accordance with Administrative Instructions 
Sections 503 and 611. The procedure is the same as the pro-
cedure for search report citations. Explanations should 
clearly indicate, with reference to the cited documents, the 
reasons supporting the conclusions  that any of the said cri-
teria is or is not satisfied, unless the statement is positive 
and the reason for citing any document is easy to under-
stand when consulting the document. If only certain pas-
sages of the cited documents are relevant, the examiner 
should identify them, for example, by indicating the page, 
column, or the lines where such passages appear.  Prefera-
bly, a reasoned statement should be provided in all 
instances.

ITEM VI.	CERTAIN DOCUMENTS CITED

If the examiner has discovered, or the International 
Search Report has cited, a relevant document which refers 
to a nonwritten disclosure, and the document was only pub-
lished on or after the relevant date of the international 
application, the examiner must indicate on the International 
Preliminary Examination Report:

(A)	the date on which the document was made avail-
able to the public;

(B)	the date on which the non-written public disclo-
sure occurred.

The examiner should also identify any published appli-
cation or patent and should provide for each such published 
application or patent the following indications:

(A)	its date of publication;

(B)	its filing date, and its claimed priority date (if 
any).

The Report may also indicate that, in the opinion of the 
International Preliminary Examining Authority, the priority  
date of the document cited has not been validly claimed 
(PCT Rule 70.10).

Guidelines explaining to the examiner the manner of 
indicating certain special categories of documents as well 
as the manner of indicating the claims to which the docu-
ments cited in such report are relevant are set forth in 
Administrative Instructions Sections 507(c), (d), and (e) 
and 508.

ITEM VII.	CERTAIN DEFECTS IN THE 
INTERNATIONAL APPLICATION

  If, in the opinion of the examiner, defects existing in the 
form or contents of the international application have not 
been suitably solved at the prescribed time limit for estab-
lishing the Preliminary Examination Report, the examiner 
may include this opinion in the report, and if included, must 
also indicate the reasons therefor. See the discussion under  
MPEP ? 1878, Item VII.

ITEM VIII.	CERTAIN OBSERVATIONS ON THE 
INTERNATIONAL APPLICATION

  If, in the opinion of the examiner, the clarity of claims, 
the description, and the drawings, or the question as to 
whether the claims are fully supported by the description 
have not been suitably solved at the prescribed time limit 
for establishing the Preliminary Examination Report, the 
examiner may include this opinion in the report, and if 
included, must also indicate the reasons therefor. See the 
discussion under  MPEP ? 1878, Item VIII.

CERTIFICATION

When completing the certification of the report, the  
examiner must indicate the date on which the Demand for 
International Preliminary Examination was submitted and 
the date on which the examiner completed the report and 
the name and mailing address of the International Prelimi-
nary Examining Authority.

These last mentioned items may either be completed 
when including the other data or when completing the certi-
fication. Every International Preliminary Examination 
Report must be signed by a primary examiner.

Form PCT/IPEA/409. International Preliminary Examination Report

1879.01	Time Limit for Preparing Report 

PCT Rule 69.

Start of and Time Limit for International Preliminary Examination

69.1.Start of International Preliminary Examination

(a)	Subject to paragraphs (b) to (e), the International Preliminary 
Examining Authority shall start the international preliminary examination 
when it is in possession both of the demand and of either the international 
search report or a notice of the declaration by the International Searching 
Authority under Article 17(2)(a) that no international search report will be 
established.

(b)	If the competent International Preliminary Examining Authority 
is part of the same national Office or intergovernmental organization as 
the competent International Searching Authority, the international prelimi-
nary examination may, if the International Preliminary Examining Author-
ity so wishes and subject to paragraph (d), start at the same time as the 
international search.

(c)	Where the statement concerning amendments contains an indi-
cation that amendments under Article 19 are to be taken into account 
(Rule 53.9(a)(i)), the International Preliminary Examining Authority shall 
not start the international preliminary examination before it has received a 
copy of the amendments concerned.

(d)	Where the statement concerning amendments contains an indi-
cation that the start of the international preliminary examination is to be 
postponed (Rule 53.9(b)), the International Preliminary Examining 
Authority shall not start the international preliminary examination before

(i)	it has received a copy of any amendments made under Arti-
cle 19,

(ii)	it has received a notice from the applicant that he does not 
wish to make amendments under Article 19, or

(iii)	the expiration of 20 months from the priority date, 

whichever occurs first.

(e)	Where the statement concerning amendments contains an indi-
cation that amendments under Article 34 are submitted with the demand 
(Rule 53.9(c)) but no such amendments are, in fact, submitted, the Interna-
tional Preliminary Examining Authority shall not start the international 
preliminary examination before it has received the amendments or before  
the time limit fixed in the invitation referred to in Rule 60.1(g) has 
expired, whichever occurs first.

69.2.Time Limit for International Preliminary Examination

The time limit for establishing the international preliminary examina-
tion report shall be:

(i)	28 months from the priority date, or

(ii)	eight months from the date of payment of the fees referred to 
in Rules 57.1 and 58.1(a), or

(iii)	eight months from the date of receipt by the International Pre-
liminary Examining Authority of the translation furnished under Rule 
55.2, whichever expires last.

PCT Rule 69.2 was amended July 1, 1998.  The time 
limit for preparing the International Preliminary Examina-
tion Report is 28 months from the priority date, or 8 months 
from the date of payment of the fees referred to in PCT 
Rules 57.1 and 58.1(a), or 8 months from the date of receipt 
by the International Preliminary Examining Authority of 
the translation furnished under PCT Rule 55.2, whichever 
expires first. This time limit is 27 months internally to 
ensure sufficient time to process, review and mail the report 
in sufficient time to reach the International Bureau by 28 
months from the earliest priority date.

1879.02	Transmittal of the International  
Preliminary Examination Report 

PCT Article 36.

Transmittal, Translation, and Communication of the International 
Preliminary Examination Report

(1)	The international preliminary examination report, together with 
the prescribed annexes, shall be transmitted to the applicant and to the 
International Bureau.

*****

PCT Rule 71.

Transmittal of the International Preliminary Examination Report

71.1.Recipients

The International Preliminary Examining Authority shall, on the same 
day, transmit one copy of the international preliminary examination report 
and its annexes, if any, to the International Bureau, and one copy to the 
applicant.

71.2.Copies of Cited Documents

(a)	The request under Article 36(4) may be presented any time dur-
ing seven years from the international filing date of the international appli-
cation to which the report relates.

(b)	The International Preliminary Examining Authority may require 
that the party (applicant or elected Office) presenting the request pay to it 
the cost of preparing and mailing the copies. The level of the cost of pre-
paring copies shall be provided for in the agreements referred to in Article 
32(2) between the International Preliminary Examining Authorities and 
the International Bureau.

(c)		[Deleted]

(d)	Any International Preliminary Examining Authority may per-
form the obligations referred to in paragraphs (a) and (b) through another 
agency responsible to it.

The International Preliminary Examination Report is 
transmitted to the International Bureau using a transmittal 
Form PCT/IPEA/416. Every effort is made to ensure that 
the transmittal is effected in sufficient time to reach the 
International Bureau by 28 months from the earliest prior-
ity date.

AUTHORIZED OFFICER

Form PCT/IPEA/416 must be signed by a primary exam-
iner.

1879.03	Translations 

PCT Article 36.

Transmittal, Translation, and Communication of the International 
Preliminary Examination Report

*****

(2)(a)	The international preliminary examination report and its 
annexes shall be translated into the prescribed languages.

(b)	Any translation of the said report shall be prepared by or 
under the responsibility of the International Bureau, whereas any transla-
tion of the said annexes shall be prepared by the applicant.

*****

PCT Rule 72.

Translation of the International Preliminary Examination Report

72.1.Languages

(a)	Any elected State may require that the international preliminary 
examination report, established in any language other than the official lan-
guage, or one of the official languages, of its national Office, be translated 
into English.

(b)	Any such requirement shall be notified to the International 
Bureau, which shall promptly publish it in the Gazette.

72.2.Copy of Translation for the Applicant

The International Bureau shall transmit a copy of the translation 
referred to in Rule 72.1(a) of the international preliminary examination 
report to the applicant at the same time as it communicates such transla-
tion to the interested elected Office or Offices.

72.3.Observations on the Translation

The applicant may make written observations on what, in his opinion, 
are errors of translation in the translation of the international preliminary 
examination report and shall send a copy of any such observations to each 
of the interested elected Offices and a copy to the International Bureau.

The International Preliminary Examination Report and 
any annexes are established in Chinese, English, French, 
German, Japanese, Russian or Spanish, if the international 
application was filed in one of those languages, or in 
English if the international application was filed in another 
language. Each elected State may require that the report, if 
it is not in (one of) the official language(s) of its national 
Office, be translated into English. In that case, the transla-
tion of the body of the report is prepared by International 
Bureau, which transmits copies to the applicant and to each 
interested elected Office. If any elected Office requires a 
translation of annexes to the report, the preparation and fur-
nishing of that translation is the responsibility of the appli-
cant.

The U.S. requires the final report and the annexes thereto 
to be in English. Translation of the annexes for national 
stage purposes is required pursuant to  35 U.S.C. 371(c)(5) 
and  37 CFR 1.495(e). Failure to timely provide such trans-
lation results in cancellation of the annexes.

1879.04	Confidential Nature of the Report 

PCT Article 38.

Confidential Nature of the International Preliminary Examination

(1)	Neither the International Bureau nor the International Prelimi-
nary Examining Authority shall, unless requested or authorized by the 
applicant, allow access within the meaning, and with the proviso, of Arti-
cle 30(4) to the file of the international preliminary examination by any 
person or authority at any time, except by the elected Offices once the 
international preliminary examination report has been established.

(2)	Subject to the provisions of paragraph (1) and Articles 36(1) and 
(3) and 37(3)(b), neither the International Bureau nor the International 
Preliminary Examining Authority shall, unless requested or authorized by 
the applicant, give information on the issuance or non-issuance of an inter-
national preliminary examination report and on the withdrawal or non-
withdrawal of the demand or of any election.

1880	Withdrawal of Demand or Election 

PCT Article 37.

Withdrawal of Demand or Election

(1)	The applicant may withdraw any or all elections.

(2)	If the election of all elected States is withdrawn, the demand 
shall be considered withdrawn.

(3)(a)	Any withdrawal shall be notified to the International Bureau.

(b)	The elected Offices concerned and the International Prelimi-
nary Examining Authority concerned shall be notified accordingly by the 
International Bureau.

(4)(a)	Subject to the provisions of subparagraph (b), withdrawal of 
the demand or of the election of a Contracting State shall, unless the 
national law of that State provides otherwise, be considered to be with-
drawal of the international application as far as that State is concerned.

(b)	Withdrawal of the demand or of the election shall not be 
considered to be withdrawal of the international application if such with-
drawal is effected prior to the expiration of the applicable time limit under 
Article 22; however, any Contracting State may provide in its national law 
that the aforesaid shall apply only if its national Office has received, 
within the said time limit, a copy of the international application, together 
with a translation (as prescribed), and the national fee.

PCT Rule 90bis.

Withdrawals

*****

90bis.4.Withdrawal of the Demand, or of Elections

(a)	The applicant may withdraw the demand or any or all elections 
at any time prior to the expiration of 30 months from the priority date.

(b)	Withdrawal shall be effective upon receipt of a notice addressed 
by the applicant to the International Bureau.

(c)	If the notice of withdrawal is submitted by the applicant to the 
International Preliminary Examining Authority, that Authority shall mark 
the date of receipt on the notice and transmit it promptly to the Interna-
tional Bureau. The notice shall be considered to have been submitted to 
the International Bureau on the date marked.

*****

PCT Administrative Instruction Section 606.

Cancellation of Elections

The International Preliminary Examining Authority shall, if the elec-
tion is in the demand, cancel ex officio the election of any State which is 
not a designated State or which is not bound by Chapter II of the Treaty, 
shall enclose that election within square brackets, shall draw a line 
between the square brackets while still leaving the election legible and 
shall enter, in the margin, the words "CANCELLED EX OFFICIO BY 
IPEA" or their equivalent in the language of the demand, and shall notify 
the applicant accordingly.

Any withdrawal of the Demand or any election must be 
sent to the International Bureau. Withdrawal, if timely, is 
effective upon receipt by the International Bureau.

1881	Receipt of Notice of Election by the 
Patent and Trademark Office 

PCT Rule 61.

Notification of the Demand and Elections

*****

61.2.Notification to the Elected Offices

(a)	The notification provided for in Article 31(7) shall be effected 
by the International Bureau.

(b)	The notification shall indicate the number and filing date of the 
international application, the name of the applicant, the filing date of the 
application whose priority is claimed (where priority is claimed), the date 
of receipt by the International Preliminary Examining Authority of the 
demand, and - in the case of a later election- the date of receipt of the 
notice effecting the later election.  The latter date shall be the actual date 
of receipt by the International Bureau or, where applicable, the date 
referred to in Rule 56.1(f) or 60.2(b).

(c)	The notification shall be sent to the elected Office together with 
the communication provided for in Article 20.  Elections effected after 
such communication shall be notified promptly after they have been made.

(d)	Where the applicant makes an express request to an elected 
Office under Article 40(2) before the communication provided for in Arti-
cle 20 has taken place, the International Bureau shall, upon request of the 
applicant or the elected Office, promptly effect that communication to that 
Office.

61.3.Information for the Applicant

The International Bureau shall inform the applicant in writing of the 
notification referred to in Rule 61.2 and of the elected Offices notified 
under Article 31(7).

*****

All notices of election are received by the PCT Interna-
tional Division from the International Bureau. The PCT 
International Division prepares the appropriate records of 
the election and places the paper in storage with the com-
municated copy of the international application until the 
national stage is entered.

1890	Receipt of Notice of Designation 

After publication of the international application, 
between about 18 and 19 months from the priority date, the 
International Bureau notifies each national Office that it 
has been designated and at the same time forwards to each 
designated Office a copy of the international application, a 
copy of the search report (an English translation is sent to 
the U.S. if the search report was not in English), a copy of 
any amendment under PCT Article 19, and a copy of any 
priority document (PCT Rule 47).  Thus, the U.S. as a des-
ignated Office first becomes aware of the fact of its desig-
nation at about 18 to 19 months from the priority date and 
may begin a national stage application file from the papers 
forwarded by the International Bureau. See PCT Rule 
24.2(b). Contracting States have the option of being noti-
fied of their designation earlier. The U.S. did not choose to 
be notified earlier.

The national stage papers sent by the International 
Bureau are received in the Designated/Elected Office (DO/
EO) Section of the International Division of the USPTO. 
The papers are matched with applicant's submission for 
entry into the national stage in the U.S. and together make 
up the U.S. national stage application file. The DO/EO 
checks the national stage papers to be sure all necessary 
parts have been received from applicant and from the Inter-
national Bureau. When the application is complete, a notice 
of acceptance is mailed to applicant and the application is 
forwarded to the Office of Initial Patent Examination for 
mailing of a filing receipt and final processing before for-
warding to the appropriate examining group. 

1891	Receipt of Notice of Election and 
Preliminary Examination Report 

If the U.S. is elected in a Demand for preliminary exam-
ination prior to 19 months from the priority date, applicant 
may postpone the steps needed for entry into the national 
stage from 20 to 30 months from the priority date. The 
USPTO will hold the national stage papers sent by the 
International Bureau awaiting applicant's submissions for 
entry into the national stage. The international application 
is examined and the results (the International Preliminary 
Examination Report) are received by the USPTO for inclu-
sion into the national stage file. The examination report is 
communicated to the elected Offices by the International 
Bureau.

The notice of election is communicated to the elected 
Office along with the PCT Article 20 communication or as 
soon thereafter as the International Bureau receives notice 
of the election. Election of a Contracting State, of course, is 
not possible unless that state was designated. 

1893	National Stage (U.S. National  
Application Filed Under  35 U.S.C. 
371) [R-1]

**>

37 CFR 1.9.  Definitions.<

(a)(1)	A national application as used in this chapter means a U.S. 
application for patent which was either filed in the Office under 35 U.S.C. 
111, or which entered the national stage from an international application 
after compliance with  35 U.S.C. 371.

(2)	A provisional application as used in this chapter means a U.S. 
national application for patent filed in the Office under  35 U.S.C. 111(b).

(3)	A nonprovisional application as used in this chapter means  a 
U.S. national application for patent which was either filed in the Office 
under  35 U.S.C. 111(a), or which entered the national stage from an inter-
national application after compliance with  35 U.S.C. 371.

*****

Thus, there are three types of U.S. national applications: 
a national stage application under the PCT (filed under  
35 U.S.C. 371), a regular domestic national application 
filed under  35 U.S.C. 111(a), and a provisional application 
filed under  35 U.S.C. 111(b). 

An applicant who uses the Patent Cooperation Treaty 
gains the benefit of

(A)	a delay in the time when papers must be submitted 
to the national offices;

(B)	an international search (to judge the level of the 
relevant prior art) before having to expend resources for fil-
ing fees, translations and other costs;

(C)	a delay in the expenditure of fees;

(D)	additional time for research;

(E)	additional time to evaluate financial, marketing, 
commercial and other considerations.

The time delay is, however, the benefit most often recog-
nized as primary. Ultimately, applicant might choose to 
submit the national stage application. The national stage is 
unique compared to a domestic national application in that

(A)	it is submitted later (i.e., normally 20 or 30 months 
or more from a claimed priority date as compared to 12 
months for a domestic application claiming priority).

(B)	the status of the prior art is generally known 
before the national stage begins and this is not necessarily 
so in a domestic national application.

(C)	any patent issuing on the basis of the national 
stage application may be used as a reference from its  
35 U.S.C. 102(e) date, i.e., it has a prior art effect from its  
35 U.S.C. 102(e) date.

Since the Treaty does not preclude establishing a date for 
prior art purposes which is or can be as early as the interna-
tional filing date (i.e., by paying the basic fee, providing a 
copy of the application, any translation thereof, and an oath 
or declaration at time of filing the international applica-
tion), the national stage seems to offer benefits that make 
its use desirable.

IDENTIFICATION OF THE NATIONAL STAGE 
APPLICATION

Once the national stage application has been accorded an 
application number (the two digit series code followed by a 
six digit serial number), that number as well as the interna-
tional application number should be used whenever papers 
or other communications are directed to the PTO regarding 
the national stage application. The national stage applica-
tion is tracked through the PALM locator system by the 
eight digit U.S. application  number. Therefore, process-
ing  is expedited if the U.S. application number is indi-
cated. The international application number is helpful for 
identification purposes and can be used to cross-check a 
possibly erroneous U.S. application number. Of course, the 
international filing date and the national stage entry date 
under  35 U.S.C. 371 should also be provided.  See  37 CFR 
1.5(a).

1893.01	Commencement and Entry 

35 U.S.C. 371.  National stage: Commencement.

(a)	Receipt from the International Bureau of copies of international 
applications with any amendments to the claims, international search 
reports, and international preliminary examination reports including any 
annexes thereto may be required in the case of international applications 
designating or electing the United States.

(b)	Subject to subsection (f) of this section, the national stage shall 
commence with the expiration of the applicable time limit under article 22 
(1) or (2), or under article 39(1)(a) of the treaty.

(c)	The applicant shall file in the Patent and Trademark Office  

(1)	the national fee provided in section 41(a) of this title;

(2)	a copy of the international application, unless not required 
under subsection (a) of this section or already communicated by the Inter-
national Bureau, and a translation into the English language of the interna-
tional application, if it was filed in another language;

(3)	amendments, if any, to the claims in the international appli-
cation, made under article 19 of the treaty, unless such amendments have 
been communicated to the Patent and Trademark Office by the Interna-
tional Bureau, and a translation into the English language if such amend-
ments were made in another language;

(4)	an oath or declaration of the inventor (or other person autho-
rized under chapter 11 of this title) complying with the requirements of 
section 115 of this title and with regulations prescribed for oaths or decla-
rations of applicants;

(5)	a translation into the English language of any annexes to the 
international preliminary examination report, if such annexes were made 
in another language.

(d)	The requirements with respect to the national fee referred to in 
subsection (c)(1), the translation referred to in subsection (c)(2), and the 
oath or declaration referred to in subsection (c)(4) of this section shall be 
complied with by the date of the commencement of the national stage or 
by such later time as may be fixed by the Commissioner. The copy of the 
international application referred to in subsection (c)(2) shall be submitted 
by the date of the commencement of the national stage. Failure to comply 
with these requirements shall be regarded as abandonment of the applica-
tion by the parties thereof,  unless it be shown to the satisfaction of the 
Commissioner that such failure to comply was unavoidable. The payment 
of a surcharge may be required as a condition of accepting the national fee 
referred to in subsection (c)(1) or the oath or declaration referred to in sub-
section (c)(4) of this section if these requirements are not met by the date 
of the commencement of the national stage. The requirements of sub sec-
tion (c)(3) of this section shall be complied with by the date of the com-
mencement of the national stage, and failure to do so shall be regarded as a 
cancellation of the amendments to the claims in the international applica-
tion made under article 19 of the treaty. The requirement of subsection 
(c)(5) shall be complied with at such time as may be fixed by the Commis-
sioner and failure to do so shall be regarded as cancellation of the amend-
ments made under article 4(2)(b) of the treaty.

(e)	After an international application has entered the national stage,  
no patent may be granted or refused thereon before the expiration of the 
applicable time limit under article 28 or article 41 of the treaty, except with 
the express consent of the applicant. The applicant may present amend-
ments to the specification, claims and drawings of the application after the 
national stage has commenced.

(f)	At the express request of the applicant, the national stage of pro-
cessing may be commenced at any time at which the application is in order 
for such purpose and the applicable requirements of subsection (c) of this 
section have been complied with.

37 CFR 1.491.  Entry into the national stage.

An international application enters the national stage when the appli-
cant has filed the documents and fees required by  35 U.S.C. 371(c) within 
the periods set in ? 1.494 or ? 1.495.

Commencement of the national stage occurs upon expi-
ration of the time limit, as stated in  35 U.S.C. 371(b).

Entry into the national stage occurs upon completion of 
certain acts, as stated in  37 CFR 1.491.

1893.01(a)	Entry via the U.S. Designated 
Office

37 CFR 1.494.  Entering the national stage in the United States of 
America as a Designated Office.

(a)	Where the United States of America has not been elected by the 
expiration of 19 months from the priority date (see ? 1.495), the applicant 
must fulfill the requirements of PCT Article 22 and  35 U.S.C. 371 within 
the time periods set forth in paragraphs (b) and (c) of this  section in order 
to prevent the abandonment of the international application as to the 
United States of America. International applications for which those 
requirements are timely fulfilled will enter the national stage and obtain an 
examination as to the patentability of the invention in the United States of 
America.

(b)	To avoid abandonment of the application, the applicant shall 
furnish to the United States Patent and Trademark Office not later than the 
expiration of 20 months from the priority date:

(1)	A copy of the international application, unless it has been 
previously communicated by the International Bureau or unless it was 
originally filed in the United States Patent and Trademark Office; and

(2)	The basic national fee (see ? 1.492(a)). The 20-month time 
limit may not be extended.

(c)	If applicant complies with paragraph (b) of this section before 
expiration of 20 months from the priority date but omits:

(1)	A translation of the international application, as filed, into 
the English language, if it was originally filed in another language 
(35 U.S.C. 371(c)(2)); and/or

(2)	The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see ? 1.497), applicant will be so notified and given a period of time 
within which to file the translation and/or oath or declaration in order to 
prevent abandonment of the application. The payment of the processing 
fee set forth in  ? 1.492(f) is required for acceptance of an English transla-
tion later than the expiration of 20 months after the priority date. The pay-
ment of the surcharge set forth in ? 1.492(e) is required for acceptance of 
the oath or declaration of the inventor later than the expiration of 20 
months after the priority date.  A "Sequence Listing" need not be trans-
lated if the "Sequence Listing" complies with PCT Rule 12.1(d) and the 
description complies with PCT Rule 5.2(b).

(d)	A copy of any amendments to the claims made under PCT Arti-
cle 19, and a translation of those amendments into English, if they were 
made in another language, must be furnished not later than the expiration 
of 20 months from the priority date. Amendments under PCT Article 19 
which are not received by the expiration of 20 months from the priority 
date will be considered to be cancelled. The 20-month time limit may not 
be extended.

(e)	Verification of the translation of the international application or 
any other document pertaining to an international application may be 
required where it is considered necessary, if the international application 
or other document was filed in a language other than English.

(f)	The documents and fees submitted under paragraphs (b) and (c) 
of this section must be clearly identified as a submission to enter the 
national stage under  35 U.S.C. 371, otherwise the submission will be con-
sidered as being made under  35 U.S.C. 111.

(g)	An international application becomes abandoned as to the 
United States 20 months from the priority date if the requirements of para-
graph (b) of this section have not been  complied with within 20 months 
from the priority date where the United States has been designated but not 
elected by the expiration of 19 months from the priority date. If the 
requirements of paragraph (b) of this section are complied with within 20 
months from the priority date but any required translation of the interna-
tional application as filed and/or the oath or declaration are not timely 
filed, an international application will become abandoned as to the United 
States upon expiration of the time period set pursuant to paragraph (c) of 
this section.

An international application designating the U.S. will 
enter the national stage via the U.S. Designated Office 
unless a Demand electing the U.S. is filed prior to the expi-
ration of 19 months from the priority date whereupon entry 
will be via the U.S. Elected Office.  The procedure for entry 
via the U.S. Designated Office is as prescribed in  37 CFR 
1.494.

1893.01(a)(1)	Submissions Required by 20 
Months From the Priority Date  
[R-1]

To begin entry into the national stage, applicant is 
required to comply with  37 CFR 1.494(b) within 20 
months from the priority date unless election of the U.S. 
under Chapter II of the PCT has been made prior to 19 
months from the priority date (see  MPEP ? 1893.01(b)).  
Thus, applicant must pay the basic national fee on or before 
20 months from the priority date and be sure that a copy of 
the international application has been received by the U.S. 
Designated Office prior to expiration of 20 months from 
the priority date. The notice referred to in PCT Rule 47.1(c) 
constitutes conclusive evidence of transmission of the 
international application. Payment of the basic national fee 
will indicate applicant's intention to enter the national stage 
and will provide a U.S. correspondence address in most 
instances. 

Facsimile transmission is not acceptable for submission 
of the basic national fee and/or the copy of the international 
application.  See  37 CFR 1.6(d).  Likewise, the certificate 
of mailing procedures of  37 CFR 1.8 do not apply to the 
filing of the copy of the international application and pay-
ment of the basic national fee. See  37 CFR 1.8(a)(2)(i)(F).

Applicants cannot pay the basic national fee with a sur-
charge after the 20 month deadline.  Failure to pay the basic 
national fee within 20 months from the priority date will 
result in abandonment of the application. The time for pay-
ment of the basic fee is not extendable.

Similarly, the copy of the international application is 
required to be provided within 20 months from the priority 
date. A copy of the international application is provided to 
the U.S. Designated Office by the International Bureau (the 
copy is ordinarily received shortly after publication at 
about 18 months from the priority date). The International 
Bureau also mails a confirmation (Form IB/308) to appli-
cant upon which applicant can rely that the copy has been 
provided, see PCT Rule 47.1(c).  The copy is placed in a 
file to await applicant's submission of the basic national fee 
and other national stage requirements.  

If the basic national fee has been paid by expiration of 20 
months from the priority date, but the required oath, decla-
ration or translation has not been filed within 20 months 
from the priority date, as appropriate, the Office will send 
applicant a notice and provide a period of time to supply 
the deficiency as set forth in  37 CFR 1.494(c).  The time 
period usually set is 1 month from the date of notification 
by the Office or 21 months from the priority date, which-
ever is later. This period may be extended pursuant to the 
provisions of  37 CFR 1.136(a). Thus, payment of the basic 
national fee on or before 20 months from the priority date 
will (1) cause the Office, after a check of the national stage 
papers at 20 months, to mail a notice identifying any defi-
ciencies and affording applicant a period for correction of 
those deficiencies, and (2) as in national practice under  37 
CFR 1.53, enable applicants to extend the period of time 
under  37 CFR 1.136(a) for submission of a proper oath, 
declaration or translation. The international application 
enters the national stage under  35 U.S.C. 371 and  37 CFR 
1.491 when the last of the items indicated in  35 U.S.C. 
371(c) is timely received by the office.

An international application becomes abandoned if the 
copy of the international application or the filing fee have 
not been received by the U.S. Designated Office prior to 
expiration of 20 months from the priority date.  A notifica-
tion of any missing parts pursuant to  37 CFR 1.494(c) will 
only be mailed in those instances where the applicant has 
paid the basic national fee within 20 months from the prior-
ity date. 

The notice of missing requirements lists several items 
which  37 CFR  1.497(a) and (b) require and all  of those 
items will have to be satisfied before the oath or declaration 
is considered accepted. Similarly, the translation must be a 
translation of the international application. A translation of 
less than all of the international application (e.g., untrans-
lated words in the drawings or translations of those untrans-
lated words in a different part of the document) or a 
translation that includes modification, e.g., the insertion of 
headings, is unacceptable.  "Sequence Listing" need not be 
translated if the "Sequence Listing" complies with PCT 
Rule 12.1(d) and the description complies with PCT Rule 
5.2(b). See **  37 CFR 1.494(c).

1893.01(a)(2)	Article 19 Amendment (Filed 
With the International Bureau) 

The international application may be amended under 
Article 19 after issuance of the search report. The amend-
ment is forwarded to the U. S. Designated Office by the 
International Bureau for inclusion in the U.S. national stage 
application. Article 19 amendments which were made in 
English will be entered by substituting each page of amend-
ment for the corresponding English language page of 
claims of the international application.  If the Article 19 
amendments were made in a language other than English, 
applicant must provide an English translation for the U.S.  
national stage application.  The English translation of the 
amendment(s) must be submitted by 20 months from the 
priority date, unless the U.S. was elected by 19 months 
from the priority date in which case the English translation 
must be filed by 30 months, or the amendment(s) will be 
considered to be canceled,  35 U.S.C. 371(d). Where appli-
cant elects to request early processing of the national stage 
application under  35 U.S.C. 371(f), subsequently received 
amendments made in the international stage (and English 
translations thereof) will not become part of the U.S. 
national stage application file.  If such amendments are 
desired, they should be offered under  37 CFR 1.121 as a 
preliminary amendment or a responsive amendment under  
37 CFR 1.111.

Applicants entering the national stage in the U.S. are 
encouraged to submit an amendment in accordance with  
37 CFR 1.121 rather than an English translation of an Arti-
cle 19 amendment. Sometimes when an Article 19 amend-
ment is translated into English, it cannot be entered. That 
is, each page of an Article 19 amendment must be entered 
by substituting a page of amendment for the corresponding 
page of claims of the international application. After trans-
lation of a page, the translated page may no longer corre-
spond to a page of the claims of the international 
application such that the amendment is capable of entry by 
substituting the page of English translation (of the amend-
ment) for the corresponding page of claims of the interna-
tional application without leaving an inconsistency. Where 
applicant chooses to submit an English translation of the 
Article 19 amendment, applicant should check to be sure 
that the English translation can be entered by substituting 
the pages of translation for corresponding pages of the 
claims of the international application without leaving an 
inconsistency.  If entry of the page of translation causes 
inconsistencies in the claims of the international applica-
tion the translation will not be entered. For example, if the 
translation of the originally filed application has a page 
which begins with claim 1 and ends with a first part of 
claim 2 with the remainder of claim 2 on the next page then 
translation of the Article 19 amendment to only claim 1 
must include a substitute page or pages beginning with the 
changes to claim 1 and ending with the last of the exact 
same first part of claim 2.  This enables the original trans-
lated first page of claims to be replaced by the translation of 
the amendment without changing the subsequent 
unamended page(s). Alternatively, applicant may submit a 
preliminary amendment in accordance with  37 CFR 1.121.

1893.01(b)	Entry via the U.S. Elected Office

37 CFR 1.495.  Entering the national stage in the United States of 
America as an Elected Office.

(a)	Where the United States of America has been elected by  the 
expiration of 19 months from the priority date, the applicant must fulfill 
the requirements of  35 U.S.C. 371 within the time periods set forth in 
paragraphs (b) and (c) of this section in order to prevent the abandonment 
of the international application as to the United States of America. Interna-
tional applications for which those requirements are timely fulfilled will 
enter the national stage and obtain an examination as to the patentability of 
the invention in the United States of America.

(b)	To avoid abandonment of the application, the applicant shall 
furnish to the United States Patent and Trademark Office not later than the 
expiration of 30 months from the priority date:

(1)	A copy of the international application, unless it has been 
previously communicated by the International Bureau or unless it was 
originally filed in the United States Patent and Trademark Office; and

(2)	The basic national fee (see ? 1.492(a)). The 30-month time 
limit may not be extended.

(c)	If applicant complies with paragraph (b) of this section before 
expiration of 30 months from the priority date but omits:

(1)	A translation of the international application, as filed, into 
the English language, if it was originally filed in another language 
(35 U.S.C. 371(c)(2)); and/or

(2)	The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see ? 1.497), applicant will be so notified and given a period of time 
within which to file the translation and/or oath or declaration in order to 
prevent abandonment of the application. The payment of the processing 
fee set forth in ? 1.492(f) is required for acceptance of an English transla-
tion later than the expiration of 30 months after the priority date. The pay-
ment of the surcharge set forth in ? 1.492(e) is required for acceptance of 
the oath or declaration of the inventor later than the expiration of 30 
months after the priority date.  

A "Sequence Listing" need not be translated if the "Sequence Listing" 
complies with PCT Rule 12.1(d) and the description complies with PCT 
Rule 5.2(b). 

(d)	A copy of any amendments to the claims made under PCT Arti-
cle 19, and a translation of those amendments into English, if they were 
made in another language, must be furnished not later than the expiration 
of 30 months from the priority date.  Amendments under PCT Article 19 
which are not received by the expiration of 30 months from the priority 
date will be considered to be cancelled.  The 30-month time limit may not 
be extended.

(e)	A translation into English of any annexes to the international 
preliminary examination report, if the annexes were made in another lan-
guage, must be furnished not later than the expiration of 30 months from 
the priority date. Translations of the annexes which are not received by the 
expiration of 30 months from the priority date may be submitted within 
any period set pursuant to paragraph (c) of this section accompanied by 
the processing fee set forth in ? 1.492(f). Annexes for which translations 
are not timely received will be considered cancelled. The 30-month time 
limit may not be extended.

(f)	Verification of the translation of the international application or 
any other document pertaining to an international application may be 
required where it is considered necessary, if the international application 
or other document was filed in a language other than English.

(g)	The documents submitted under paragraphs (b) and (c) of this 
section must be clearly identified as a submission to enter the national 
stage under  35 U.S.C. 371, otherwise the submission will be considered 
as being made under  35 U.S.C. 111.

(h)	An international application becomes abandoned as to the 
United States 30 months from the priority date if the requirements of para-
graph (b) of this section have not been complied with within 30 months 
from the priority date and the United States has been elected by the expira-
tion of 19 months from the priority date. If the requirements of paragraph 
(b) of this section are complied with within 30 months from the priority 
date but any required translation of the international application as filed 
and/or the oath or declaration are not timely filed, an international applica-
tion will become abandoned as to the United States upon expiration of the 
time period set pursuant to paragraph (c) of this section.

An international application designating the U.S. will 
enter the national stage via the U.S. Elected Office if a 
Demand electing the U.S. is filed prior to the expiration of 
19 months from the priority date. The procedure for entry 
via the U.S. Elected Office is as prescribed in  37 CFR 
1.495.

1893.01(b)(1)	Submissions Required by 30 
Months From the Priority Date 
[R-1]

To begin entry into the national stage, where election of 
the U.S. under Chapter II of the PCT has been made prior 
to 19 months from the priority date, applicant is required to 
comply with  37 CFR 1.495(b) within 30 months from the 
priority date. Thus, applicant must pay the basic national 
fee on or before 30 months from the priority date and be 
sure that a copy of the international application has been 
received by the U.S. Designated Office prior to expiration 
of 30 months from the penalty date.  The notice referred to 
in PCT Rule 47.1(c) constitutes conclusive evidence of 
transmission of the international application.  Payment of 
the basic national fee will indicate applicant's intention to 
enter the national stage and will provide a U.S. correspon-
dence address in most instances.

Facsimile transmission is not acceptable for submission 
of the basic national fee and/or the copy of the international 
application.  See  37 CFR 1.6(d).  Likewise, the certificate 
of mailing procedures of  37 CFR 1.8 do not apply to the 
filing of the copy of the international application and pay-
ment of the basic national fee. See  37 CFR 1.8(a)(2)(i)(F).

  Applicants cannot pay the basic national fee with a sur-
charge after the 30 months deadline. Failure to pay the 
basic national fee within 30 months from the priority date 
will result in abandonment of the application. The time for 
payment of the basic fee is not extendable.

  Similarly, the copy of the international application is  
required to be provided within 30 months from the priority 
date. A copy of the international application is provided to 
the U.S. Designated Office by the International Bureau (the 
copy is ordinarily received shortly after publication at 
about 18 months from the priority date).  The International 
Bureau also mails a confirmation (Form IB/308) to appli-
cant upon which applicant can rely that the copy has been 
provided.  See PCT Rule 47.1(c).  The copy is placed in a 
file to await applicant's submission of the basic national fee 
and other national stage requirements. 

  If the basic national fee has been paid by expiration of 
30 months from the priority date but the required oath, dec-
laration, or translation has not been filed within 30 months 
from the priority date, as appropriate, the Office will send 
applicant a notice and provide a period of time to supply 
the deficiency as set forth in  37 CFR 1.495(c).  The time 
period usually set is 1 month from the date of the notifica-
tion by the Office or 31 months from the priority date, 
whichever is later. This period may be extended pursuant to 
the provisions of  37 CFR 1.136(a). Thus, payment of the 
basic national fee on or before 30 months from the priority 
date will (1) cause the Office, after a check of the national 
stage papers at 30 months, to mail a notice identifying any 
deficiencies and affording applicant a period for correction 
of those deficiencies, and (2) as in national practice under  
37 CFR 1.53, enable applicants to extend the period of time 
under  37 CFR 1.136(a) for submission of a proper oath, 
declaration, or translation. The international application 
enters the national stage under  35 U.S.C. 371 when the last 
of the items indicated in  35 U.S.C. 371(c) and  37 CFR 
1.491 is timely received by the office.

An international application becomes abandoned if the 
copy of the international application or the basic national 
fee has not been received by the U.S. Designated Office 
prior to expiration of 30 months from the priority date. A 
notification of any missing requirements pursuant to  
37 CFR 1.495 will only be mailed in those instances where 
the applicant has paid the basic national fee within 30 
months from the priority date.

The notice of missing requirements lists several items 
which  37 CFR 1.497(a) and (b) require and all of those 
items will have to be satisfied before the oath or declaration 
is considered accepted. Similarly, the translation must be a 
translation of the international application. A translation of 
less than all of the international application (e.g., untrans-
lated words in the drawings or translations of those untrans-
lated words in a different part of the document) or a 
translation that includes modifications, e.g., the insertion of 
headings, is unacceptable.  "Sequence Listing" need not be 
translated if the "Sequence Listing" complies with PCT 
Rule 12.1(d) and the description complies with PCT Rule 
5.2(b).  See**  37 CFR 1.495(c).

1893.01(b)(2)	Article 19 and Article 34  
Amendments (Filed With the  
International Preliminary  
Examining Authority) [R-1]

Paragraph (d) of  37 CFR 1.495 states that if an Article 
19 amendment is not received before expiration of 30 
months from the priority date, it is considered to be can-
celed.  Nevertheless, applicant may submit a preliminary 
amendment in accordance with  37 CFR 1.121 adding the 
substance of the Article 19 amendment to the national stage 
application.  In some instances, entry of the subject matter 
via an amendment under  37 CFR 1.121 may be preferable 
to entry via Article 19. For example, where the Article 19 
amendment was not filed in English the amendment would 
have to be translated into English in order that it be submit-
ted for entry into the national stage. The translation must be 
submitted before expiration of 30 months from the priority 
date and the substitute pages must be capable of insertion 
into the text of the international application. Thus, where an 
Article 19 amendment was made in the international stage 
the same amendment may be entered for the national stage 
either in accordance with  35 U.S.C. 371(c)(3) or the 
amendments may be added via a preliminary amendment in 
accordance with  37 CFR 1.121.

TRANSLATION OF AN ANNEX TO THE 
INTERNATIONAL PRELIMINARY EXAMINATION 
REPORT

The translation of an Annex to the international prelimi-
nary examination report must be submitted so that the 
translation of the originally filed application can be 
changed by replacing the originally filed application 
page(s) (of translation) with substitute page(s) of transla-
tion of the annex. >Where applicant chooses to submit an 
English translation of the annex, applicant should check to 
be sure that the English translation can be entered by sub-
stituting the pages of translation for corresponding pages of 
the claims of the international application without leaving 
an inconsistency. If entry of the page of translation causes 
inconsistencies in the specification or claims of the interna-
tional application the translation will not be entered< For 
example, if the translation of the originally filed application 
has a page which begins with claim 1 and ends with a first 
part of claim 2 with the remainder of claim 2 on the next 
page then translation of the annex to only claim 1 must 
include a substitute page or pages beginning with the 
changes to claim 1 and ending with the last of the 
exact same first part of claim 2. This enables the original 
translated first page of claims to be replaced by the transla-
tion of the annex without changing the subsequent 
unamended page(s). Alternatively applicant may submit a 
preliminary amendment in accordance with  37 CFR 1.121.

1893.01(c)	Fees 

Because the national stage fees are subject to change, 
applicants and examiners should always consult the   Offi-
cial Gazette for the current fee listing.

Applicants are cautioned that national stage fees are spe-
cifically provided for in  37 CFR 1.492 and authorizations 
to charge fees under  37 CFR 1.16 do not constitute a spe-
cific authorization to charge national stage fees.

1893.01(d)	Translation  [R-1]

Applicants entering the national stage in the U.S. are 
required to file a translation of the international application 
(if the international application was filed in another lan-
guage).  35 U.S.C. 371(c)(2).  "Sequence Listing" need not 
be translated if the "Sequence Listing" complies with PCT 
Rule 12.1(d) and the description complies with PCT Rule 
5.2(b).  See **  37 CFR 1.495(c).  The translation must be a 
translation of the international application as filed with any 
changes which have been properly accepted under PCT 
Rule 26 or any rectifications which have been properly 
accepted under PCT Rule 91. Amendments, even those 
considered to be minor or to not include new matter, may 
not be incorporated into the translation. If an amendment to 
the international application as filed is desired for the 
national stage, it may be submitted in accordance with  
37 CFR 1.121.  An amendment filed under  37 CFR 1.121 
should be submitted within 1 month after completion of the  
35 U.S.C. 371(c) requirements and entry into the national 
stage. See  37 CFR 1.496(a).  If applicant has timely paid 
the basic national fee but the translation is missing or is 
defective, a notice of Missing Requirements will be sent to 
applicant setting a period to correct any missing or defec-
tive requirements. The time period is 21 months or 31 
months from the priority date, as appropriate, or 1 month 
from the date of the notice, whichever expires later. The 
time period is subject to the provisions of  37 CFR 
1.136(a).

1893.01(e)	Oath/Declaration

37 CFR 1.497.  Oath or declaration under 35 U.S.C. 371(c)(4).

(a)	When an applicant of an international application desires to 
enter the national stage under  35 U.S.C. 371 pursuant to ?? 1.494 or 
1.495, he or she must file an oath or declaration that:

(1)	Is executed in accordance with either ?? 1.66 or 1.68;

(2)	Identifies the specification to which it is directed;

(3)	Identifies each inventor and the country of citizenship of 
each inventor; and

(4)	States that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor or 
inventors of the subject matter which is claimed and for which a patent is 
sought.

(b)(1)	The oath or declaration must be made by all of the actual 
inventors except as provided for in ?? 1.42, 1.43 or 1.47.

(2)	If the person making the oath or declaration is not the inven-
tor, the oath or declaration shall state the relationship of the person to the 
inventor, the facts required by ?? 1.42, 1.43 or 1.47, and, upon information 
and belief, the facts which the inventor would have been required to state.

(c)	If the oath or declaration meets the requirements of paragraphs 
(a) and (b) of this section, the oath or declaration will be accepted as com-
plying with  35 U.S.C. 371(c)(4) and ?? 1.494(c) or 1.495(c).  However, if 
the oath or declaration does not also meet the requirements of ? 1.63, a 
supplemental oath or declaration in compliance with ? 1.63 will be 
required in accordance with ? 1.67.

Applicants entering the national stage in the U.S. are 
required to file an oath or declaration of the inventor in 
accordance with  37 CFR 1.497(a) and (b). If the basic 
national fee has been paid by the expiration of 20 or 30 
months from the priority date as appropriate, but the 
required oath or declaration has not been filed, the Office 
will send applicant a notice of Missing Requirements set-
ting a time period to correct any missing or defective 
requirements. The time period is 21 months or 31 months 
from the priority date, as appropriate, or 1 month from the 
date of the notice, whichever expires later. The time period 
is subject to the provisions of  37 CFR 1.136(a). The oath 
or declaration must comply with the requirements of  
35 U.S.C. 115 and with the regulations prescribed for oaths 
and declarations. See especially  37 CFR 1.497(a) and (b). 
Further, pursuant to  37 CFR 1.497(c), to avoid the need to 
submit a supplemental oath or declaration, the oath or dec-
laration must comply with  37 CFR 1.63.

If an inventor refuses to execute the oath or declaration 
or is unavailable, applicant must file an oath or declaration 
and a petition in accordance with  37 CFR 1.47.  Similarly, 
where an inventor is deceased or legally incapacitated, an 
oath or declaration in accordance with the provisions of  
37 CFR 1.42 or 1.43 must be provided. To avoid abandon-
ment the oath or declaration and petition (under  37 CFR 
1.42, 1.43 and/or 1.47, as appropriate) must be filed either 
before expiration of 20 or 30 months from the priority date, 
as appropriate, or, where a notification of deficiency of the 
oath/declaration has been mailed, within the time for reply 
to that notification. 

If applicant has filed an oath or declaration and petition 
under  37 CFR 1.42, but has not provided proof of authority 
of the legal representative as required by  37 CFR 1.44, the 
application papers will be provisionally accepted for entry 
into the national stage and forwarded for further processing 
and examination on the merits. However, if sufficient proof 
of authority of the person(s) signing as legal representative 
of the deceased inventor is not provided before mailing of 
the notice of allowance, the application should be for-
warded to the PCT Legal Office. If proof of authority is not 
filed, the application will be held not to have entered the 
national stage for failure to provide an oath or declaration 
as required by  35 U.S.C. 371(c)(4) and will be held aban-
doned in accordance with  37 CFR 1.494(g) or 1.495(h). 
Under such circumstances the date of abandonment will be 
the date of expiration of 20 months from the priority date 
or, where a notification of deficiency of the oath/declara-
tion has been mailed, the date of expiration of the time for 
reply to that notification or as extended by any extension 
fee timely paid under  37 CFR 1.136(a).

1893.02	Abandonment

If the requirements of  35 U.S.C. 371(c) are not com-
plied with by the time period set in  37 CFR 1.494(b) and 
(c) or  37 CFR 1.495(b) and (c), as appropriate, the applica-
tion is considered to be abandoned, see  37 CFR 1.494(g) 
and  37 CFR 1.495(h).

Examiners and applicants should be aware that some-
times papers filed for the national stage are deficient and 
abandonment results. For example, if the fee submitted 
does not include at least the amount of the basic national 
fee that is due, the application becomes abandoned.

Applicant may file a petition to revive an abandoned 
application in accordance with the provisions of  37 CFR 
1.137.  See  MPEP ? 711.03(c).

1893.03	Prosecution of U.S. National Stage 
Applications Before the Examiner 

An international application which enters the national 
stage will be forwarded to the appropriate examining group 
for examination in turn based on the  35 U.S.C. 371(c) date 
of the application. Once the application is forwarded to the 
examiner, prosecution proceeds in the same manner as for a 
domestic application with the exceptions that (1) the inter-
national filing date is the date to keep in mind when search-
ing the prior art and (2) unity of invention proceeds as 
under  37 CFR 1.475.

1893.03(a)	How To Identify That an 
Application Is a U.S. National 
Stage Application

Applicant's initially deposited application must indicate 
that treatment as a national stage application (filed under  
35 U.S.C. 371) is requested (see  37 CFR 1.494(f) and  
37 CFR 1.495(g)).  Otherwise, the application will be 
treated as an application filed under  35 U.S.C. 111(a). 

That is, if applicant wishes the application to be filed 
under  35 U.S.C. 111(a), applicant's originally filed applica-
tion papers need indicate simply that the papers are for a 
new U.S. patent application.  If, however, applicant is filing 
papers for entry into the national stage of a PCT applica-
tion, applicant must so state.  37 CFR 1.494(f) and 1.495(g) 
require that applicant's application papers  must be clearly 
identified as a submission to enter the national stage under  
35 U.S.C. 371; otherwise the submission will be considered 
as being made under  35 U.S.C. 111(a). Examination of the 
originally filed application papers occurs in either the 
Office of Initial Patent Examination or in the National 
Stage Processing Division of the Office of PCT Operations 
where it is determined whether applicant has asked that the 
papers be treated as a national stage filing under  35 U.S.C. 
371. If the application is accepted for entry into the national 
stage, the National Stage Processing Division will fill out 
and mail Form PCT/DO/EO/903 indicating acceptance of 
the application as a national stage filing under  35 U.S.C. 
371 and will stamp the face of the file with an indication 
that the application is filed under  35 U.S.C. 371. Accord-
ingly, the three key indicators which reflect that an applica-
tion is filed under  35 U.S.C. 371 are 

(A)	The file face indication of a filing under  
35 U.S.C. 371; 

(B)	The Form PCT/DO/EO/903 indicating accep-
tance of the application as a national stage filing under  
35 U.S.C. 371; and 

(C)	Applicant's statement (or the equivalent) in the 
originally filed application papers that the application is a 
national stage filing under  35 U.S.C. 371. Applicants who 
use transmittal Form PCT/DO/EO/1390 will satisfy the 
requirement for such a statement since the form includes an 
indication that the application is a national stage filing 
under  35 U.S.C. 371. 

Initially, the examiner should inspect the face of the file 
wrapper and/or the PALM bib-data sheet  for an indication 
that it is filed under  35 U.S.C. 371 and should also check 
the application papers for the presence of Form PCT/DO/
EO/903. If neither of these indications are present the appli-
cation may, in the absence of evidence to the contrary 
(there is an indication in the originally filed application 
papers that processing as a national stage is desired), be 
treated as a filing under  35 U.S.C. 111(a). Thus, if both 
indications are present, the application should be treated as 
a filing under  35 U.S.C. 371.  If the face of the file wrapper 
does not indicate a filing under  35 U.S.C. 371, but a prop-
erly completed Form PCT/DO/EO/903 is in the file, the 
examiner should complete the face of the file by adding 
"filed under  35 U.S.C. 371"  in the upper left margin 
thereof. The examiner should initial and date this change. If 
the file wrapper does not include a properly completed 
Form PCT/DO/EO/903 but the face of the file indicates a 
filing under  35 U.S.C. 371, the application should be 
returned to the National Stage Processing Division of the 
Office of PCT Operations for certification that the applica-
tion has been accepted for the national stage.

In accordance with the notice at 1077 O.G. 13 (14 April 
1987), if the applicant files a U.S. national application and 
clearly identifies in the accompanying oath or declaration 
the specification to which it is directed by referring to a 
particular international application by PCT Application 
Number and International Filing Date and that he or she is 
executing the declaration as, and seeking a U.S. Patent as, 
the inventor of the invention described in the identified 
international application, then the application will be 
accepted as filed under  35 U.S.C. 371. Merely claiming 
priority of an international (PCT) application in an oath or 
declaration will not serve to indicate a filing under  
35 U.S.C. 371. Also, if there are any conflicting instruc-
tions as to whether the filing is under  35 U.S.C. 111(a) or  
35 U.S.C. 371, the application will be accepted as filed 
under  35 U.S.C. 111(a).

Form PCT Filed Under 35 USC 371

Form PCT/DO/DO/903. Notification Of Acceptance Of Application Under 35 U.s.c. 371 And 37 Cfr 1.494 Or 1.495

1893.03(b)	The Filing Date of a U.S. National 
Stage Application

An international application designating the U.S. has 
two stages (international and national) with the filing date 
being the same in both stages.  Often the date of entry into 
the national stage is confused with the filing date.  It should 
be borne in mind that the filing date of the international 
stage application is also the filing date for the national stage 
application.  Specifically,  35 U.S.C. 363  provides that

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

Similarly, PCT Article 11(3) provides that

...an international filing date shall have the effect of a regular 
national application in each designated State as of the interna-
tional filing date, which date shall be considered to be the actual 
filing date in each designated State.

37 CFR 1.496(a), first sentence, reads "International 
applications which have complied with the requirements of  
35 U.S.C. 371(c) will be taken up for action based on the 
date on which such requirements were met."  Thus, when 
the file wrapper label or PALM bib-data sheet is printed, 
the information is read from the PALM data base and the 
information printed in the filing date box is the date of 
entry into the national stage rather than the actual interna-
tional filing date. See in the preceding section the sample 
National Stage Filing Under  35 U.S.C. 371 wherein the 
face of the file of national stage application number 07/
XXX,XXX is shown with the date of entry into the national 
stage (11/08/91) shown in the FILING DATE box and the 
true U.S. filing date (01/10/90) is indicated just to the right 
of the international application number (PCT/EP90/
XXXXX) in the FOREIGN/PCT APPLICATIONS  block.

Applicants are quite often confused as to the true filing 
date and will ask for corrected filing receipts thinking that 
the information thereon is wrong.  This explanation should 
offer some clarity. For all legal purposes, the filing date is 
the PCT international filing date. The date of actual entry 
into the national stage is otherwise the date provided in the 
PALM system. Any issued patent will have all of the rele-
vant dates listed.

1893.03(c)	The Priority Date, Priority Claim, 
and Priority Papers for a U.S. 
National Stage Application [R-1]

A U.S. national stage application (filed under  35 U.S.C. 
371) may include a claim under  35 U.S.C. 119 (a)  **> and 
365(b), 35 U.S.C. 119(e), or 35 U.S.C. 120 and 365(c)< for 
benefit of the filing date of a prior application or applica-
tions.  **

PRIORITY CLAIM UNDER 35 U.S.C. 119(a)

A national stage application which includes a priority 
claim under  35 U.S.C. 119(a) >and 365 (b)< must refer to a 
priority application >,< the priority of which was also 
claimed in the international application. If the  35 U.S.C. 
119(a) >and 35 U.S.C. 365 (b)< priority claim is to an 
application >,< the priority of which was properly claimed 
in the international application, the claim for priority is 
acknowledged and the national stage application file is 
checked to see if the file contains a copy of the certified 
copy of the priority document submitted to the Interna-
tional Bureau.

If the  35 U.S.C. 119(a) >and 365(b)< priority claim in 
the national stage application is to an application >,< the 
priority of which was not claimed in the international appli-
cation, the claim for priority must be denied for failing to 
meet the requirements of the Patent Cooperation Treaty, 
specifically PCT Rule 4.10.

For a comparison with  35 U.S.C. 119(a)-(d) priority 
claims in a national application filed under  35 U.S.C. 
111(a) see  MPEP ? 1895.01.

THE CERTIFIED COPY

The requirement for a certified copy of the foreign prior-
ity application is normally fulfilled by applicant providing 
a certified copy to the Receiving Office or to the Interna-
tional Bureau within 16 months from the priority date and 
subsequently, the International Bureau forwarding a photo-
copy of the certified priority document when it forwards a 
copy of the international application (shortly  after publica-
tion at 18 months from the priority date) to each Designated 
Office. The copy from the International Bureau is placed in 
the U.S. national stage file. The International Bureau 
stamps the face of the photocopy of the certified priority 
document with an indication that the certified priority doc-
ument was received at the International Bureau.  The 
stamped copy of the priority document sent to the U.S. 
Office of PCT Operations from the International Bureau is 
acceptable to establish that applicant has filed a certified 
copy of the priority document. The examiner should 
acknowledge in the next Office action that the certified 
copy of the foreign priority document has been filed. Note 
the example of an acceptable priority document with the 
stamp (box) in the upper right hand section indicating 
receipt by the International Bureau (WIPO) on 30 Novem-
ber 1992 and the stamped term "PRIORITY DOCU-
MENT''. 

If applicant has not forwarded a certified copy of the pri-
ority application in time for the International Bureau to for-
ward it to the U.S. Designated Office with the copy of the 
international application, then applicant will have to pro-
vide a certified copy of the priority document during the 
national stage to fulfill the requirement of  Article 4 of the 
Paris Convention.

PRIORITY CLAIM UNDER 35 U.S.C. >119(e), OR< 
120  >AND 365(c)<

A national stage application may include a priority claim 
under  35 U.S.C. >119(e), or< 120 >and 365(c)< to a prior 
U.S. national application or  >under 35 U.S.C. 120 and 
365(c)< to a prior international application designating the 
U.S.  The conditions for according benefit under  35 U.S.C. 
120 are as described in  MPEP ? 201.07,  ? 201.08, and  
? 201.11 and are similar regardless of whether the U.S. 
national application is a national stage application filed 
under  35 U.S.C. 371 or a national application filed under  
35 U.S.C. 111(a).

For a national stage application (of international applica-
tion "X'') to obtain benefit under  35 U.S.C. >119(e), or< 
120 >and 365(c)< of a prior U.S. national application, the 
international application ("X") must include an appropriate 
reference to the prior U.S. national application, be copend-
ing with the prior U.S. national application, and have at 
least one inventor in common with the prior U.S. national 
application.  See  MPEP ? 201.11. The prior U.S. national 
application is copending with the national stage application 
if the prior U.S. national application was pending on the 
international filing date.

If a national stage application includes a priority claim 
under  35 U.S.C. 120 >and 365(c)< to a prior  international 
application, the examiner must ascertain whether (1) the 
first international application was copending (not aban-
doned or withdrawn) with the second international applica-
tion claiming benefit under  35 U.S.C. 120 >and 365(c)<, 
and (2) the prior international application designated the 
U.S.

Note: a national stage application filed under  35 U.S.C. 
371 may not claim benefit of the filing date of the interna-
tional application of which it is the national stage since its 
filing date is the date of filing of that international applica-
tion. See also    MPEP ? 1893.03(b).  Stated differently, 
since the international application is not an earlier applica-
tion (it has the same filing date as the national stage), a pri-
ority claim in the national stage to the international 
application is inappropriate. Accordingly, it is not neces-
sary for the applicant to amend the first sentence of the 
specification to reference the international application for a 
national stage application filed under  35 U.S.C. 371.

For a comparison with  35 U.S.C. 120 priority claims in 
a national application filed under  35 U.S.C. 111(a), see  
MPEP ? 1895.

1893.03(d)	Unity of Invention 

37 CFR 1.499.  Unity of invention during the national stage

If the examiner find that a national stage application lacks unity of 
invention under ? 1.475, the examiner may in an Office action require the 
applicant in the response to that action to elect the invention to which the 
claims shall be restricted. Such requirement may be made before any 
action on the merits but may be made at any time before the final action at 
the discretion of the examiner. Review of any such requirement is pro-
vided under ?? 1.143 and 1.144.

PCT Rule 13 was amended effective July 1, 1992.  
37 CFR 1.475 was amended effective May 1, 1993 to cor-
respond to PCT Rule 13. 

Examiners are reminded that unity of invention (not 
restriction) practice is applicable in international applica-
tions (both Chapter I and II) and in national stage (filed 
under  35 U.S.C. 371) applications. Restriction practice 
continues to apply to U.S. national applications filed under  
35 U.S.C. 111(a).

When making a lack of unity of invention requirement, 
the examiner must (1) list the different groups of claims 
and (2) explain why each group lacks unity with each other 
group (i.e., why there is no single general inventive con-
cept) specifically describing the unique special technical 
feature in each group.

The principles of unity of invention are used to deter-
mine the types of claimed subject matter and the combina-
tions of claims to different categories of invention that are 
permitted to be included in a single international or national 
stage patent application. The basic principle is that an 
application should relate to only one invention or,  if there 
is more than one invention, that applicant would have a 
right to include in a single application only those inventions 
which are so linked as to form a single general inventive 
concept.

A group of inventions is considered linked to form a sin-
gle general inventive concept where there is a technical 
relationship among the inventions that involves at least one 
common or corresponding special technical feature. The 
expression special technical features is defined as meaning 
those technical features that define the contribution which 
each claimed invention, considered as a whole, makes over 
the prior art.  For example, a corresponding technical fea-
ture is exemplified by a key defined by certain claimed 
structural characteristics which correspond to the claimed 
features of a lock to be used with the claimed key.  Note 
also examples 1-17 of Annex B Part 2 of the PCT Adminis-
trative Instructions as amended July 1, 1992 contained in 
Appendix AI of the MPEP.

  A process is "specially adapted" for the manufacture of 
a product if the claimed process inherently produces the 
claimed product with the technical relationship being 
present between the claimed process and the claimed prod-
uct.  The expression "specially adapted" does not imply 
that the product could not also be manufactured by a differ-
ent process.

An apparatus or means is  specifically designed  for car-
rying out the process when the apparatus or means is suit-
able for carrying out the process with the technical 
relationship being present between the claimed apparatus 
or means and the claimed process. The expression  specifi-
cally designed does not imply that the apparatus or means 
could not be used for carrying out another process, nor does 
it imply that the process could not be carried out using an 
alternative apparatus or means.

Note: the determination regarding unity of invention is 
made without regard to whether a group of inventions is 
claimed in separate claims or as alternatives within a single 
claim. The basic criteria for unity of invention are the same, 
regardless of the manner in which applicant chooses to 
draft a claim or claims.

1893.03(e)	Papers Received From the  
International Bureau and  Placed 
in a U.S. National  Stage 
Application File 

The national stage application includes papers forwarded 
by the International Bureau and papers from applicant.  
Some of the papers from the International Bureau are iden-
tified in this section with a brief note as to their importance 
to the national stage application. The examiner should 
review each such paper and the important aspect indicated.

THE  PAMPHLET

The Pamphlet includes 

(A)	a cover page with the  applicant/inventor data, the 
application data (serial number, filing date, etc.) and the 
Abstract (and, if appropriate, a figure of drawing), 

(B)	the description, claims and drawing parts of the 
international application, and 

(C)	the search report (Form PCT/ISA/210).  

The cover page is important as a source of the correct 
application data, most importantly the filing date and prior-
ity date accorded to the international application. If the 
pamphlet is published in English, applicant need not submit 
a copy of the international application to the Patent and 
Trademark Office. The Office will use the description, 
claims, abstract and drawings as published in the pamphlet 
for the U.S. national stage examination under  35 U.S.C. 
371.  The description, claims and drawing parts of the inter-
national application reflect the application subject matter 
on the international filing date and are important for com-
parison with any amendments to check for new matter.  The 
search report reflects the International Searching Author-
ity's opinion regarding the prior art. 

THE INTERNATIONAL PRELIMINARY 
EXAMINATION REPORT

If the international application underwent preliminary 
examination, the International Preliminary Examination 
Report (Form PCT/IPEA/409) reflects the International 
Preliminary Authority's non-binding opinion regarding 
novelty, inventive step and industrial applicability. The 
examiner may adopt any portion or all of this opinion upon 
consideration in the national stage so long as it is consistent 
with U.S. practice. The examiner should comment upon the 
Report in the first Office action on the merits to reflect that 
the Report has been considered. The comment may be a 
mere acknowledgement.  

THE PRIORITY DOCUMENT

See the discussion in  MPEP ? 1893.03(c).

NOTIFICATION OF WITHDRAWAL

If the national stage application papers include a Notifi-
cation of Withdrawal (PCT/IB/307), the examiner must 
check the date of receipt of the  35 U.S.C. 371 requirements 
(the 371 date) on Form PCT/DO/EO/903 to be sure that the 
371 date is not later than the date of withdrawal.  If it is 
later, the national stage application must be returned to the 
PCT Legal Office for a decision regarding the propriety of 
entry into the national stage. 

1893.03(f)	Drawings and PCT Rule 11 

The drawings for the national stage application must 
comply with PCT Rule 11. The copy of the drawings pro-
vided by the International Bureau has already been checked 
and should be in compliance with PCT Rule 11. Accord-
ingly, the drawing provided by the International Bureau 
should be acceptable. Sometimes, applicant submits a 
drawing for use in the national stage application and a 
check will be made by the Official Draftsman. The Official 
Draftsman may not impose requirements beyond those 
imposed by the Patent Cooperation Treaty (e.g., PCT Rule 
11). The examiner does indeed have the authority to require 
new or more acceptable drawings if the drawings were pub-
lished without meeting all requirements under the PCT for 
drawings. Unless the applicant requests the use of drawings 
which he or she has submitted, the drawings to be 
employed in the national stage are those which are a part of 
the Article 20 communication.

1893.03(g)	Information Disclosure Statement 
in a National Stage Application 

An extensive discussion of Information Disclosure 
Statement practice is to be found in  MPEP ? 609. Although 
not specifically stated therein, the duty to disclose informa-
tion material to patentability as defined in  37 CFR 1.56 is 
placed on individuals associated with the filing and prose-
cution of a national stage application in the same manner as 
for a domestic national application. The declaration 
requires the same averments with respect to the duty under 
37 CFR 1.56. 

When an international application is filed under the 
Patent Cooperation Treaty (PCT), prior art documents may 
be cited by the examiner in the international search report 
and/or the international preliminary examination report. 
When a national stage application is filed under  35 U.S.C. 
371, or a national application is filed under  35 U.S.C. 111 
claiming benefit of the filing date of the international appli-
cation, it is often desirable to have the examiner consider 
the documents cited in the international application when 
examining the national application.

As a result of an agreement among the European Patent 
Office (EPO), Japanese Patent Office (JPO), and the United 
States Patent and Trademark Office (USPTO), copies of 
documents cited in the international search report issued by 
any one of these International Searching Authority Offices 
generally are being sent to  the other Offices when desig-
nated in the international application. Accordingly, in many 
national stage applications where the international search 
was conducted by the  EPO, JPO, or USPTO, copies of the 
documents cited in the international search report are made 
available to the examiner in the national stage application.

When all the requirements for a national stage applica-
tion have been completed, applicant is notified (Form PCT/
DO/EO/903) of the acceptance of the application under  
35 U.S.C. 371, including an itemized list of the items 
received. The itemized list includes an indication of 
whether a copy of the international search report and copies 
of the references cited therein are present in the national 
stage file.  The examiner will consider the documents cited 
in the international search report, without any further action 
by applicant under  37 CFR 1.97 and 1.98, when both the 
international search report and copies of the documents are 
indicated to be present in the national stage file.  The exam-
iner will note the consideration in the first Office action. 
There is no requirement that the examiners list the docu-
ments on a PTO-892 form. See Form Paragraphs 6.53, 6.54, 
and 6.55 (reproduced in  MPEP ? 609). Otherwise, appli-
cant must follow the procedure set forth in  37 CFR 1.97 
and 1.98 in order to ensure that the examiner considers the 
documents cited in the international search report. 

This practice applies only to documents cited in the 
international search report relative to a national stage appli-
cation filed under  35 U.S.C. 371.  It does not apply to doc-
uments cited in an international preliminary examination 
report that are not cited in the search report. It does not 
apply to applications filed under  35 U.S.C. 111(a) claiming 
the benefit of an international application filing date.

1895	A Continuation or Continuation-In-		
Part Application of a PCT Application 
Designating the United States [R-1]

It is possible to file a U.S. national application under  
35 U.S.C. 111(a) during the pendency (prior to the aban-
donment) of an international application which designates 
the United  States without completing the requirements for 
entering the national stage under  35 U.S.C. 371(c). The 
ability to take such action is based on provisions of the 
United States patent law.  35 U.S.C. 363 provides that "[a]n 
international application designating the United States shall 
have the effect, from its international filing date under arti-
cle 11 of the treaty, of a national application for patent reg-
ularly filed in the Patent and Trademark Office...."  
35 U.S.C. 371(d) indicates that failure to timely comply 
with the requirements of  35 U.S.C. 371(c)  "shall be 
regarded as abandonment ... by the parties thereof...."  It is 
therefore clear that an international application which des-
ignates the United States has the effect of a pending U.S. 
application from the international application filing date 
until its abandonment as to the United States. The first sen-
tence of  35 U.S.C. 365(c) specifically provides that "[i]n 
accordance with the conditions and requirements of section 
120 of this title, ... a national application shall be entitled to 
the benefit of the filing date of a prior international applica-
tion designating the United States." The condition of  
35 U.S.C. 120 relating to the time of filing requires the later 
application to be filed before the patenting or abandonment 
of or termination of proceedings on the first application. 
The filing of continuations and continuations-in-part of a 
PCT application designating the U.S. was used primarily in 
instances where there was difficulty in obtaining a signed 
oath or declaration by the expiration of the time for entry 
into the national stage.  Since applicants are now notified of 
missing or defective oaths or declarations and/or transla-
tions, and are given a time period to respond which is 
extendable under  37 CFR 1.136(a), the use of this practice 
may well diminish.

A continuing application under  35 U.S.C. 365(c) and 
120 must be filed before the abandonment or patenting of 
the prior application.

To obtain benefit under  35 U.S.C. 120, the continuing 
U.S. national application must 

(A)	include an appropriate reference to the prior appli-
cation, 

(B)	be copending with the prior application, and 

(C)	have at least one inventor in common with the 
prior application.

See  MPEP ? 201.11. A U.S. national application is 
copending with an international application if the prior 
international application was pending on the filing date of 
the subsequent U.S. national application.  

If the prior application is an international application, the 
examiner must ascertain **>(B) and (C)< above by either 
examining the national stage application file of the interna-
tional application, or by examining the international appli-
cation file, or requiring applicant to submit sufficient proof 
that the international application was copending with the 
U.S. national (35 U.S.C. 111(a)) application claiming bene-
fit under  35 U.S.C. 120. If the parent international applica-
tion was not copending (i.e., abandoned or withdrawn), 
benefit under  35 U.S.C. 120 is not possible.

If priority is claimed under  35 U.S.C. 120 in a third U.S. 
national application to a first national or international appli-
cation via a second international application, the examiner 
must examine the second international application to see if 
it contains a proper reference for benefit under  35 U.S.C. 
120 of the first filed application. The second international 
application must include an appropriate reference in the 
Request to the prior U.S. national application. The appro-
priate reference in the Request should identify the parent 
application and include an indication that it is a continua-
tion or continuation-in-part of the first filed U.S. applica-
tion, PCT Rule 4.14.  In order for the examiner to 
determine if the international application meets the above 
noted requirements, the examiner should review the copy 
of the Request form in the international application file or 
the cover page of the published international application.  If 
the copy is not in the file, the International Application Pro-
cessing Division may obtain a copy from the International 
Bureau.

1895.01	Handling of and Considerations In 
the Handling of National Applica 
tions Under 35 U.S.C. 371 and  
35 U.S.C. 111(a) Continuations  and 
Continuations-In-Part  of a PCT 
Application [R-1]

A national application can be either a national stage 
application submitted under  35 U.S.C. 371 or a national 
application filed under  35 U.S.C. 111(a).

NATIONAL APPLICATIONS SUBMITTED UNDER 
35 U.S.C. 371

These applications are the result of an international 
application filed under the PCT entering the national stage 
in the United States. They are called national stage applica-
tions. The national stage application papers are placed in a 
domestic application file wrapper and the phrase "FILED 
UNDER  35 U.S.C. 371" is stamped on the front of the file 
wrapper.  In addition, a "Notification of Acceptance of 
Application under  35 U.S.C. 371 and  37 CFR 1.494 or 
1.495" (Form PCT/DO/EO/903) is placed in the file.

A typical time line involving an international and a 
national stage application is illustrated as follows:

Although the illustrated time line is typical, there is no 
requirement that there be a priority application, nor is there 
any requirement that the national stage application be sub-
mitted after the international application is published.

National stage applications submitted under  35 U.S.C. 
371 are treated differently in certain respects than national 
applications filed under  35 U.S.C. 111(a). Treatment of  
35 U.S.C. 371 applications differs from treatment of  
35 U.S.C. 111(a) applications as follows:

A.	Filing Date As Applicant's Date Of Invention

By virtue of  35 U.S.C. 363, the U.S. filing date of a 
national stage application is the international filing date 
(the filing date of the international application) for the pur-
pose of determining whether information is prior art (i.e., 
has an effective date) relative to the invention claimed in 
the national stage application. The date which appears in 
the "filing date" box on the front of the file wrapper of a 
national stage application, however, is the date on which 
the requirements of  35 U.S.C. 371(c) were complied with, 
and typically is not the same as the international filing date 
of the application. The international filing date is the criti-
cal date for determining whether or not a particular refer-
ence is available as prior art against the application. The 
international filing date will appear next to the international 
application number in the CONTINUING DATA  section 
on the file wrapper label and in the "Notification of Accep-
tance of Application under  35 U.S.C. 371 and  37 CFR 
1.494 or 1.495" (Form PCT/DO/EO/903).

B.	35 U.S.C. 119(a) >And 365(b)< Priority In 
National Stage Application

The filing date of a national stage application is the inter-
national filing date. Pursuant to  35 U.S.C. 365(b), a prior-
ity claim under  35 U.S.C. 119(a) is proper if (a) a claim for 
priority was made in the international application, and (b) 
the application was filed within 12 months prior to the 
international filing date. See  MPEP ? 1893.03(c). The 
examiner should acknowledge the priority claim and prior-
ity document in the next Office action and on the file wrap-
per as in any  35 U.S.C. 119(a)* situation, if appropriate.

C.	Priority Document

In national stage applications, a photocopy of the foreign 
priority document is received from the International Bureau 
and placed in the national stage application file. This copy 
of the foreign priority document is sufficient to establish 
that applicant has filed a certified copy of the priority docu-
ment.  The copy received from the International Bureau 
bears a "WIPO" stamp. If a copy of the foreign priority 
document is not in the national stage application file, the 
examiner should consult the Group's Special Program 
Examiner. A certified copy of a priority document filed as a 
U.S. provisional application under  35 U.S.C. 111(b) is not 
required under  35 U.S.C. 119(e).

D.	Unity Of Invention

Restriction practice in both international and national 
stage applications is determined under unity of invention 
principles as set forth in  37 CFR 1.475 and 1.499.  Restric-
tion practice under  35 U.S.C. 121, as it applies to national 
applications submitted under  35 U.S.C. 111(a), is not 
applicable to either international or national stage applica-
tions. However, a continuing application claiming benefit 
under  35 U.S.C. 365(c) to an international application or to 
a national stage application is not a national stage applica-
tion and, therefore, the restriction practice under  35 U.S.C. 
121 is applicable.

E.	Filing Date For Prior Art Purposes Under 
35 U.S.C. 102(e)

Once a patent issues from a national stage application, 
the filing date for prior art purposes under  35 U.S.C. 
102(e) is not the international filing date, but is the date on 
which the requirements of  35 U.S.C. 371(c)(1), (2) and (4) 
were met (copy of the international application with any 
necessary translation, national fee and oath or declaration 
were filed). The  35 U.S.C. 102(e) date for prior art pur-
poses is listed on the first page of the patent. An applicant 
may establish a filing date for prior art purposes under  
35 U.S.C. 102(e) by satisfying the requirements of  
35 U.S.C. 371 long before the expiration of 20 or 30 
months from the priority date.  However, as the interna-
tional application is usually published approximately 18 
months from the priority date, this publication generally 
will have an earlier date for prior art purposes than the  
35 U.S.C. 102(e) date of the U.S. patent. A copy of the 
published international application can be obtained through 
the Foreign Patents Branch of the Scientific and Technical 
Information Center (STIC). The publication number and 
publication date appear on the first page of the patent.

F.	International Publication Number And The 
Publication Date

The International Publication Number and the Publica-
tion Date MUST be in the national stage application if the 
application is allowed. The International Publication Num-
ber and the Publication date can be found in the DO/US 
Worksheet WIPO Publication block.  If the Publication 
Number and the Publication date are not found on the 
worksheet or if the worksheet is missing, the information 
may be taken either from the International Publication or 
the PCT Gazette page.  The examiner should ensure that the 
International Publication Number and the Publication date 
are in one of these three locations before the application is 
sent to Publishing Division.

CONTINUATION, CIP, OR DIVISION OF 
INTERNATIONAL APPLICATION FILED UNDER 
35 U.S.C. 111(a)

Rather than filing a national stage application, a  con-
tinuing application (i.e., continuation, C-I-P, or division) 
under  35 U.S.C. 111(a) of the international application 
may be filed. Pursuant to  35 U.S.C. 365(c), a regular 
national application filed under  35 U.S.C. 111(a) and  
37 CFR 1.53(b) (not under  37 CFR 1.53(d) or former  
37 CFR 1.60 or 1.62) may claim benefit of the filing date of 
an international application which designates the United 
States.

A typical time line involving a continuing application 
filed during the pendency of an international application is 
illustrated as follows:

The continuing application must be filed before the 
international application becomes abandoned as to the U.S. 
as set forth in  37 CFR 1.494 and 1.495.  An appropriate 
sentence (such as "This is a continuation of International 
Application PCT/EP90/00000, with an international filing 
date of January 4, 1990, now abandoned.'') must appear at 
the beginning of the specification. In addition, all other 
conditions of  35 U.S.C. 120 (such as having at least one 
common inventor) must be satisfied.  A copy of the interna-
tional application (and an English translation) may be 
required by the examiner to perfect the claim for benefit 
under  35 U.S.C. 120 and 365(c) if necessary, for example, 
where an intervening reference is found and applied in a 
rejection of one or more claims.

A claim for foreign priority under  35 U.S.C. 119(a)-(d) 
must be made in the continuing application in the same 
manner as in a national stage application. In the same man-
ner as with a national stage application, a foreign priority 
claim is proper if (1) a claim for foreign priority was made 
in the international application, and (2) the foreign applica-
tion was filed within 12 months prior to the international 
filing date.  A certified copy of any foreign priority docu-
ment must be provided by the applicant if the parent inter-
national application has not entered the national stage 
under  35 U.S.C. 371 (the photocopy received from the 
International Bureau cannot be used).  If the parent interna-
tional application has entered the national stage under  
35 U.S.C. 371, the applicant, in the continuing application, 
may state that the priority document is contained in the 
national stage application.

35 U.S.C. 119(a)-(d) >AND 365(a)< PRIORITY CLAIM 
TO INTERNATIONAL APPLICATION IN 35 U.S.C. 
111(a) NATIONAL APPLICATION

**>An< application filed under  35 U.S.C. 111(a) may 
make a claim for foreign priority under  35 U.S.C. 119 (a)-
(d) >and 365(a)< to an international application which des-
ignates at least one country other than the United States 
(the U.S. may also be designated). In this situation, appli-
cant must file a certified copy of the international applica-
tion in the application filed under  35 U.S.C. 111(a) and the 
applicant must satisfy all other requirements of  35 U.S.C. 
119(a)-(d).  A typical time line for this situation is illus-
trated as follows:

The examiner should acknowledge the priority claim and 
priority document in the next Office action and on the file 
wrapper as in any  35 U.S.C. 119(a)-(d) situation, if appro-
priate. 

1896	The Differences Between a National  
Application Filed Under 35 U.S.C. 
111(a) and a National Stage Applica 
tion Filed Under 35 U.S.C. 371  [R-1]

The following section describes the differences between 
a U.S. national application filed under  35 U.S.C. 111(a), 
including those claiming benefit of a PCT application 
under  35 U.S.C. 120 (a continuation or a continuation-
in-part of a PCT application), and a U.S. national stage 
application (filed under  35 U.S.C. 371).

Chart of Some Common Differences
		
	National  Appli-
cations (filed 
under   35 
U.S.C. 111(a))
	National Stage 
Applications  
(filed under   
35 U.S.C. 371)

Filing  Date
	Deposit date in 
USPTO of spec-
ification, claim 
and any neces-
sary  drawing
	International  
filing date of  
PCT applica-
tion

Effective Date 
as a reference  
(35 U.S.C. 
102(e))
	Effective U.S. 
filing date >, 
other than the 
international fil-
ing date<
	Deposit date 
in USPTO of 
the   35 U.S.C. 
371(c)(1), (2)  
and (4) 
requirements

35 U.S.C. 
119(a)-(d)  
Priority  
Requirement
	Claim & certi-
fied copy pro-
vided by 
applicant
	Certified copy  
provided by 
WIPO, claim 
by applicant

Unity of 
Invention
	U.S. restriction 
practice
	Unity of 
invention 
practice under   
37 CFR 1.499

Filing Fees
	37 CFR 1.16
	37 CFR 1.492

Reference to  
Application in  
Declaration
	Attached appli-
cation, U.S. 
Application No., 
etc.
	Same as in a   
35 U.S.C. 
111(a) filing or 
may refer to 
the interna-
tional applica-
tion

Copendency 
with Interna-
tional  Appli-
cation
	Applicant pro-
vides proof
	Not an issue

The differences between a national application filed 
under  35 U.S.C. 111(a) and a national stage application 
filed under  35 U.S.C. 371 are often subtle, but the differ-
ences are important. 

FILING DATE  

The filing date of a  35 U.S.C. 111(a) application is the 
date when the PTO receives a specification, claim, and any 
drawings **.

The filing date of a PCT international application is the 
date applicant satisfies Article 11 requirements, i.e., 
includes a specification, claim, U.S. residency or national-
ity, prescribed language, designation of a contracting state, 
and names of the applicant.

In this regard, note that  35 U.S.C. 363  provides that,

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

Similarly, PCT Article 11(3) provides that

...an international filing date shall have the effect of a regular 
national application in each designated State as of the interna-
tional filing date, which date shall be considered to be the actual 
filing date in each designated State. 

EFFECTIVE DATE AS A REFERENCE 

When a U.S. national application filed under  35 U.S.C. 
111(a) becomes a U.S. patent, its effective date as a prior 
art reference against a pending application is its effective  
>U.S.< filing date >other than an international filing date<. 
See  35 U.S.C. 102(e).  Thus, if the  35 U.S.C. 111(a) appli-
cation claims the benefit of a prior ** copending PCT inter-
national application under  35 U.S.C. 120 **, its effective 
date as a reference will be the >U.S.< filing date of the 
*>35 U.S.C. 111(a)< application >and not the international 
filing date<. When a U.S. national stage application filed 
under  35 U.S.C. 371 becomes a U.S. patent, its effective 
date as a prior art reference against a pending application is 
the date applicant fulfilled the requirements of  35 U.S.C. 
371(c)(1) (the basic national fee), (c)(2) (copy of the inter-
national application and a translation into English if filed in 
another language), and (c)(4) (an oath or declaration of the 
inventor). See  35 U.S.C. 102(e). 

35 U.S.C. 119(a)-(d) PRIORITY REQUIREMENTS 

The certified copy of the foreign priority application 
must be provided to the Office by applicant in a U.S. 
national application filed under  35 U.S.C. 111(a). Where 
applicant filed an international application claiming prior-
ity to an earlier filed national application, the certified copy 
of the priority application is required to be provided to the 
International Bureau by applicant during the international 
stage. The International Bureau (WIPO) then sends a copy 
of the certified copy of the priority application to each des-
ignated office for inclusion in the national stage applica-
tion. A U.S. national stage application filed under  
35 U.S.C. 371 will have a photocopy of the priority docu-
ment with the first page stamped by the International 
Bureau to indicate that it is a priority document received by 
WIPO and the date of such receipt.  Such a photocopy is 
acceptable in a U.S. national stage application to establish 
that applicant has filed a certified copy of the priority docu-
ment.  If the photocopy is missing from the national stage 
application file, either the document has been misplaced or 
it was not provided due to a defect in priority during the 
international stage.  If the priority claim was not in accor-
dance with PCT Rule 4.10 or the priority document was not 
provided in accordance with PCT Rule 17, the photocopy 
of the priority document will not have been provided by the 
International Bureau.

UNITY OF INVENTION  

U.S. national applications filed under  35 U.S.C. 111(a) 
are subject to restriction practice in accordance with  
37 CFR 1.141-1.146. See  MPEP ? 803.  U.S. national 
stage applications filed under  35 U.S.C. 371 are subject to 
unity of invention practice in accordance with  37 CFR 
1.475 and 1.499 (effective May 1,  1993).

FILING FEES  

U.S. national applications filed under  35 U.S.C. 111(a) 
are subject to the national application filing fees set forth at  
37 CFR 1.16.  U.S. national stage applications filed under  
35 U.S.C. 371 are subject to the national stage fees pre-
scribed at  37 CFR 1.492.

REFERENCE TO APPLICATION IN 
DECLARATION 

Applicant's oath or declaration is required to identify the 
specification to which it is directed (37 CFR 1.63(a)(2)).  
The specification may be identified in a U.S. national appli-
cation filed under  35 U.S.C. 111(a) by reference to an 
attached specification or by reference to the application 
number and filing date of a specification previously filed in 
the Office. MPEP ? 601.01(a) gives the minimum require-
ments for identification of the specification. U.S. national 
stage applications filed under  35 U.S.C. 371 may identify 
the specification (in the oath or declaration) in the same 
manner as applications filed under  35 U.S.C. 111(a) or 
may identify the specification by reference to the applica-
tion number and filing date of the international application.

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