Preparing for the December 5, 2023 webinar
What will I need to have in hand when I attend the webinars? To make best useof the webinar, you will need to have on hand a copy of each PCT form being
discussed. I can imagine three ways that you might do this.
Print copies of the PCT forms. You can go to the WIPO web site athttps://www.wipo.int/pct/en/forms/ib/index.html and you can click on and print out each of
the approximately sixteen PCT/IB forms that will be discussed. This approach has theadvantage that you can write notes on the forms and can jot questions on the forms.
You can then preserve your annotated forms along with the presentation materials.
Viewing the PCT forms on a computer screen. Some attendees might choose
simply to view the forms on a computer screen. To make this work well you would
likely want to use two computer monitors during the webinar, devoting one monitor to
the forms as viewed at https://www.wipo.int/pct/en/forms/ib/index.html and devoting theother monitor to the live webinar activity.
The PCT Forms book. Some attendees will already have a
copy of the book Oppedahl on PCT Forms and PCT Docketing.
If so, then the attendee will find it very helpful to keep the book at
hand during the webinar, turning the pages of the book to follow
along as we discuss the various PCT/RO forms one by one.
This permits writing notes on the forms and jotting questions on
the forms.
Printing out the presentation materials. Most attendees will
likely find it very helpful to print out the presentation materials in advance of thewebinar. This permits taking notes and jotting questions on the presentation materials.

International Bureau forms
Tuesday, December 5, 2023
10AM to 11:30 AM MT
Carl Oppedahl
Blog.oppedahl.com

1

Today’s webinar●●●

Feel free to post questions as they come to mind
We will adjourn at 90 minutes and this means some slides
might get deferred to the next webinar on Friday, December
8, 2023
You will want to refer to the forms themselves:– You may have already printed them out fromhttps://www.wipo.int/pct/en/forms/– You may have set it up to view them on a computer screen fromhttps://www.wipo.int/pct/en/forms/– You may be making use of a copy of Oppedahl on PCT Forms andPCT Docketing which provides the forms

2

The next two webinars●●

International Searching Authority forms webinar,
Friday, December 8, 2023. 10AM to 11:30 AM MT.
Note that depending on timing, some of theInternational Searching Authority forms will likely becovered in the December 12 webinar. If you sign up
for the December 8 webinar, you will probably also
want to sign up for the December 12 webinar.
International Preliminary Examining Authority
forms webinar, Tuesday, December 12, 2023. 10AM
to 11:30 AM MT.
3

Helpful resources●●●

Binge-watching 14
hours about the PCTFree of charge
https://
blog.oppedahl.com/
the-2022-schwegmanadvanced-pct-training/4Helpful resources●●●

Binge-watching 19 hours aboutePCTFree of charge
https://blog.oppedahl.com/
please-sign-up-for-fifteenwebinars-about-epct/
5

PCT Distance Learning Course:
Introduction to the Patent Cooperation Treaty

Course number PCT_101E – DL101●

Free of charge●

Self-paced●

You can earn a certificate●

https://welc.wipo.int/acc/index.jsf?page=courseCatalog.xhtml&lang=en&cc=PCT_101
E

6

Oppedahl on PCT Forms and PCT Docketing●

218 pages●

8.5 x ½ x 11 inches●

Language: English●●

ISBN-13: 9798766914655
Item Weight: 1.41
pounds7

PCT listserv●

https://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com●

More than 900 members

8Form PCT/RO/117 – Notification that International
Application Considered to be Withdrawn
What’s going on here: This is the form by which the receiving office tells you that they do officiallyconsider the application to be deemed withdrawn. It will normally have been preceded by Form
PCT/RO/115. This might count as good news if your goal was that you wanted to be deemed
withdrawn. The other possibility of course is that you did not at all want it to be deemed withdrawn,
in which case this form is extremely bad news.
Inbound docketing significance: Probably you had already set a docket for this form, prompted byprevious receipt of Form PCT/RO/115. If not, then it is time to Call a Meeting.
Reporting: This should almost certainly be reported to the client. One possibility is that the form is
expected in which case the reporting letter begins “this is no surprise because ...”. The otherpossibility is that the form was not expected. Either way it should be reported.
Next steps: If you are trying to somehow avert or undo the withdrawal, then you will likely have
many next steps. Depending on what went wrong, you might want to see whether you can makeuse of a Request for the Restoration of the Right of Priority with a new PCT filing.
Outbound docketing significance: If the withdrawn status was expected, then there may be nofurther steps to carry out beyond reporting to the client.

9

Form PCT/RO/126 – Notification Concerning Later
Submitted Sheets Not For Incorporation By References
What’s going on here: you sent in “later submitted sheets”. This may well have been a big
mistake.
The applicant is hereby notified that later submitted sheets embodying a missing part or acorrect element or part of the (purported) international application furnished by the applicant tocomplete or correct the international application were received by this receiving Office on<blah date> that is, on a date later than the date on which one or more elements referred to in
Article 11(1)(iii) were first received by this receiving Office.
WARNING: Where item c. or d. is checked, the applicant may, in a notice submitted to thereceiving Office within one month from the date of mailing of this notification, request that thelater submitted sheets be disregarded, in which case the later submitted sheets shall beconsidered not to have been furnished and the correction of the international filing date shallbe considered not to have been made and, where applicable, the erroneously filed element orpart shall be considered not to have been removed from the application (Rule 20.5(e) or
20.5bis(e)).

10Form PCT/RO/126 – Notification Concerning Later
Submitted Sheets Not For Incorporation By References
Inbound docketing significance: Maybe you had already set a docket for thisform, prompted by your having sent in “later submitted sheets”. More likely
this form will be a complete surprise. Either way, it is time to Call a Meeting.
Reporting: This should almost certainly be reported to the client. One
possibility is that the form is expected in which case the reporting letter begins“this is no surprise because ...”. The other possibility is that the form was notexpected. Either way it should be reported.
Next steps: Decide whether you are willing to lose your original filing date.
Almost certainly the answer is “no”!
Outbound docketing significance: Aggressively docket the one-month
response period.

11

Form PCT/RO/132 – Communication in Cases forwhich no other form is ApplicableThis is the RO counterpart to form PCT/IB/345.
What’s going on here: Usually this form is unexpected.
The chief situation where this form is expected is the situation where you asked theReceiving Office to make the IA available to the DAS system. When the RO does this,the RO needs to somehow let you know the DAS access code. This form is used tocommunicate the DAS access code. (See next slide.)
If this form was unexpected ...
Inbound docketing significance: You get to Call a Meeting.
Reporting: The form is probably letting you know you did something wrong. Probably
the client needs to be told.
Next steps: You will have to choose next steps based upon whatever is being
communicated by the form.

12Form PCT/RO/132 – Communication in Cases forwhich no other form is Applicable
The chief situation where this form is expected is the situation where you
asked the Receiving Office to make the IA available to the DAS system. When
the RO does this, the RO needs to somehow let you know the DAS accesscode. This form is used to communicate the DAS access code.
Inbound docketing significance: Given that you asked the Receiving Office tomake the IA available to the DAS system, then it will have been a Best
Practice to set a docket to check for receipt of this form and then you get toclear the docket.
Next steps: If the point of this form was to learn the DAS access code, thenyour next step will be to add this IA to your DAS workbench and to set up analert and to obtain a Certificate of Availability. Probably it will not be possible
to do these things on the very day that the form arrives. More likely you will
have to wait one or two business days to get these things to work.

13

Form PCT/IB/301 – Notification of Receipt of Record
Copy
What’s going on here: Nominally this form’s purpose is to let you knowthat the International Bureau received the Record Copy of the PCT
application from the Receiving Office. This is the IB’s counterpart to Form
PCT/RO/105.
Inbound docketing significance: The arrival of this form permits you to clear
your docket to check for receipt of this form. If you had not previously set adocket for this, it is time to Call a Meeting (page 15). So anyway, yes, if you
receive this form, you get to clear this docket. Then of course you need toproofread this form to make sure it is accurate. Is the filing date what you
expected it to be? Are all of the priority claims that you intended to present
listed accurately on the form? Does the international application number
match what you thought it was?

14

Form PCT/IB/301 – Notification of Receipt of Record
Copy

If you e-filed using ePCT, you can be pretty sure that everything isprobably accurate on this form, for the simple reason that your information
will have auto-loaded into the PCT systems.
●
If you e-filed in RO/US using a ZIP file, you can be pretty sure thateverything is accurate on this form for the same reason as the previous
point.
●
The chief risk area for a filer in RO/US is if you filed without using a ZIP
file, which is tantamount to malpractice. In such a case, the Officepersonnel had to hand-key the Request information into the PCT systems,
and could conceivably have mistyped something.
●

15

Form PCT/IB/301 – Notification of Receipt of Record
Copy
Reporting: This form is very much like a domestic Filing Receipt and you
will probably want to report it to the client in much the same way that you
would report a Filing Receipt.
Next steps: At this point you should now have access to the application inyour workbench in ePCT, if you did not already have such access. So an
important next step is to check to make sure that you have access to theapplication in your workbench in ePCT. If necessary you would need toextend that access to others in your office, and to colleagues. If you do
not already have access to the application in your workbench in ePCT,then it is time to Call a Meeting (page 15) to try to figure out why you did
not automatically get such access. You can then use the Secret Code
Number in the lower right corner of the form PCT/IB/301 to gain access in
ePCT.

16

Form PCT/IB/304 – Notification Concerning
Submission, Obtention or Transmittal of Priority
Document
What’s going on here: This is the International Bureau’s way of letting you
know that it has or has not received certified copies of the priority
documents listed in Box VI of the Request. This is a very important form.
Assuming that you had made a priority claim, you will have previously set
a docket to check for receipt of this form. (That, or Call A Meeting.) Once
this form is received, you may clear that docket. The main significance of
this form is that if you did claim priority from any previous application, you
should expect to receive this form and you will want to check and makesure that the International Bureau has received a certified copy of eachsuch priority application.
This is, by the way, the place where a person will likely have encountered theword “obtention” for the first time in one’s life.

17

Form PCT/IB/304 – Notification Concerning
Submission, Obtention or Transmittal of Priority
Document
A chief significance of this form is the dreaded NR. if you see the letters NR
next to any application listed on this form, then this is cause for calling ameeting. The main point here is that if you see an NR, you need to try to figureout why the certified copy has not been received by the International Bureau.
The explanation might be benign, but the explanation might be that someterrible problem needs to be fixed. Perhaps a mistyped priority application
number, a mistyped priority application date, a mistyped two-letter code for theoffice in which the priority application was filed or some other very serious
problem. In any event, if you receive Form IB/304 with the dreaded NR, youneed to set one or more dockets, probably multiple dockets to try very hard to
get the problem remedied well in excess of the 4 and 16 date, the 4 and 16
date being the date that is four months after the international filing date or 16
months after the priority date, whichever is later.
Keep in mind that if you use ePCT to prepare your Request, you will greatly
reduce the risk of the dreaded NR.

18

Form PCT/IB/304 – Notification Concerning
Submission, Obtention or Transmittal of Priority
Document

Reporting: Depending upon the client’s level of interest in these things, you
may wish to report this to the client. If there is a dreaded NR then very likely
you will want to report this to the client.
Outbound docketing significance: If there is a dreaded NR, then you need to
docket aggressively to see that the problem gets fixed somehow. On theother hand if everything on the form matches the priority claims that you reallywanted, then you get to relax and you do not need to set any more dockets on
this.

19

Form PCT/IB/306 – Notification of the Recording of a
ChangeWhat’s going on here: The main significance of Form PCT/IB/306 is that it
represents a recognition by the International Bureau that you have carried out
some change, typically a change under Rule 92bis. The point here is that if
you do a 92bis change, this change is binding upon all of the designated andelected offices, or to say the same thing differently, the designated and elected
offices are not allowed to say no in response to your having carried out a 92bischange. The chief significance of this is that you will not have to pay local
counsel in the various designated and elected offices to bring about thechanges that are described here. The designated and elected offices are
obligated to bring about these changes in their own records directly andwithout the need of local counsel carrying out any formal steps.
Using the 92bis process saves you money, sometimes a lot of money. This
form is the document by which you save the money.
Inbound docketing significance: Back when you did the 92bis change, you will
have set a docket to check to make sure that you receive Form PCT/IB/306. If
no docket had been set, then it is time to Call a Meeting (page 15). When you
receive Form PCT/IB/306, you may clear that docket.
20Form PCT/IB/306 – Notification of the Recording of a
ChangeNext steps: An step that is called for when you receive this form is to go lookin ePCT and to independently confirm that the information shown in the IASR
(International Application Status Report) is the way you expected it to be. If theinternational application has not yet been published, you will want to download
and confirm that the preview of the front page of your PCT publication is as
you expect it to be. To see this, you will go into ePCT and select theapplication of interest, and click on “data”. You will then click on “publication”.
You will use an expansion button, which is a right arrow, to expand the
publication section, and you will then click on the publication preview, and you
can then make sure that the front page preview of your publication is as you
expected it to be. You will probably want to report the new publication preview
to the client.
Outbound docketing significance: You'll need to set new dockets to check tomake sure that the changes reflected in this form are recognized by thevarious offices in which you enter the national phase. If you entered thenational phase in say six offices, you would need to set six distinct dockets tomake sure that all six offices recognized the changes that are reflected in this
form.
21

Form PCT/IB/307 – Notification of Withdrawal ofInternational Application or Designations
What’s going on here: The main significance of form IB/307 is that you might have attempted towithdraw your application typically to try to keep it from being published. Why does this happen?
Well, perhaps because you received an international search report or written opinion that made theapplicant get very discouraged and made the applicant decide that they would rather keep the IAfrom being published and withdraw the application so as to avoid revealing to the public theinformation in the international application. The point then of Form PCT/IB/307 is that theInternational Bureau is acknowledging that the case is in fact deemed withdrawn and then you canlook at the check boxes to see whether the IB will keep the case from being published.
Inbound docketing significance: Assuming that you were trying to get the case withdrawn, then
you will have set a docket to check for this Form PCT/IB/307. (If no docket had been set, then it istime to Call a Meeting (page 15).) When you receive Form PCT/IB/307, you may clear that docket.
Reporting: Assuming you were trying to get the case withdrawn, and assuming you were trying to
get it withdrawn to prevent publication, then you will want to check section 2 to see whether you
succeeded. Hopefully you did succeed, in which case you get to report this result to the client.
If you were not trying to get the case withdrawn, you will also need to report this form to the client.

22Form PCT/IB/308 (First Notice) – First Notice Informing
the Applicant of the Communication of the International
Application (To Designated Offices Which do not Apply
the 30-month Time Limit Under Article 22(1))
What’s going on here: This is a routine form mailed out by the IB in all normal
PCT applications.
Inbound docketing significance: You may have set a docket for this form. If
so, then you get to clear it.
Reporting: Most practitioners do not feel the need to do anything upon receiptof this form. Its chief significance is to remind the reader that there are two
Offices (Tanzania and Luxembourg) that will only permit national-phase entry
at 20 months unless a Demand has been filed by P+19. Each of those Offices
may also be reached through a respective regional filing office.
Outbound docketing significance: You might want to set a docket for Form
PCT/IB/308 (Second and Supplementary Notice). Most practitioners do not
feel the need to set such a docket.

23

Form PCT/IB/308 (Second and Supplementary Notice)– Second and Supplementary Notice Informing theApplicant of the Communication of the International
Application (To Designated Offices Which Apply the 30
Month Time Limit Under Article 22(1))

What’s going on here: This is a routine form mailed out by the IB in all normal
PCT applications.
Inbound docketing significance: You may have set a docket for this form. If
so, then you get to clear it.
Reporting: Most practitioners do not feel the need to do anything upon receiptof this form.
Next steps: Entry into the national/regional phase in one or more Offices.

24

Form PCT/IB/311 – Notification Concerning Availabilityof the Publication of the International Application
What’s going on here: Nominally the significance of this form is that it is telling
you that the International Bureau has published your PCT patent application.
Or it has republished it perhaps because of a late International Search Reportor an Article 19 amendment.
The thing is, you would almost certainly already know about such events. You
will have known for many months just when the publication was going to occur,among other things because you will have arranged for the PCT application to
be present in your ePCT workbench. So you will have checked the “timeline”
in ePCT and you will have known for a long time when the publication wasgoing to happen.
But in the unlikely event that you had somehow snoozed through all of this,maybe the Form PCT/IB/311 would be the first time that you would be awarethat the 18-month publication of your PCT application had occurred.

25

Form PCT/IB/311 – Notification Concerning Availabilityof the Publication of the International Application
One reason for inclusion of Form PCT/IB/311 in this book is that it is one of theforms that every PCT applicant receives in nearly every case. If someone
were just for the first time becoming familiar with the PCT process, yes the
person would turn to this page to find out what this form is and what to doabout it.
Inbound docketing significance: It’s possible that you may have set a docket
to check for arrival of this form. If so, then of course the arrival of the form
would prompt you to clear that docket.
Failure of the form to arrive, or more saliently, failure of the IB to carry out the
publication, would be potentially a much more serious matter. One way that
this could arise is if there were some big misunderstanding about what theactual priority date is (and thus the 30-month time line) for the application.
Such misunderstandings should be very nearly impossible because of course
you would be using ePCT and crosschecking its time line with your own
docketing systems. But a practitioner that had not been using ePCT, and thatwas somehow mixed up about the true priority date, might find that the failureof this form to arrive when expected could be a tipoff of some mixup about thetrue priority date.
26

Form PCT/IB/311 – Notification Concerning Availabilityof the Publication of the International Application

Next steps: A very important aspect of this form is that it offers a reminder thatthe case is now visible in Patentscope. Heretofore you could see yourpending PCT application in ePCT but members of the general public could not
see anything about it. But the event of publication is simultaneous with theevent of the application being for the first time visible in Patentscope. Thismeans that anyone sitting at home in their pajamas could learn of theexistence of your PCT application.
You will doubtless already have warned the client in writing that scammers will
be contacting the client, trying to trick the client into paying money for
unneeded services. The visibility of the application in Patentscope on aparticular date means that as of that date, the scammers can now obtain themailing address of your client and can start sending their scam letters to yourclient. Thus the arrival of this form might be a good reason to offer yet anotherreminder to the client about the importance of not falling prey to the scams.
The fact that the case is now available in Patentscope means that there is now
a permalink in Patentscope for this case. The permalink can be very handy
for purposes of client communications. You may wish to paste the permalink
into your docketing database or into an intranet. The client might find it helpful
to send the permalink to its inventors on the application.
27

Form PCT/IB/311 – Notification Concerning Availabilityof the Publication of the International Application

The fact that the case has been published means that there is a PDF
publication now in existence. You may wish to download and save a copy of
the PDF publication. You may wish to save it into your document management
system or intranet. The client might want to provide a copy of the PDF file tothe inventors.
Outbound docketing significance: I think most practitioners do not set any
particular new dockets because of the arrival of this form. Yes you may wish
to capture the permalink and save it to your own systems and communicate itto the client.

28

Form PCT/IB/311 – Notification Concerning Availabilityof the Publication of the International Application
Kind codes. There are several possible “kind codes” that WIPO may use
when it carries out a publication of a PCT application.
A1 – International application published with ISR
A2 – International application published without ISR●
A2 – International application published with declaration under Article 17(2)(a)●
A3 – Later publication of ISR with revised front page●
A4 – Later publication of amended claims and/or statement (Article 19) withrevised front page●
A8 – International application republished with corrections to front page
bibliographic data●
A9 – International application or ISR republished with corrections, alterations
or supplements (see also WIPO Standard ST.50)●●

29

Form PCT/IB/311 – Notification Concerning Availabilityof the Publication of the International Application
Late ISRs. Years ago it was commonplace for some ISAs to be quite tardy inthe establishment of ISRs. This lead to the IB having to publish the application
without the ISR (kind code A2) followed by a later publication of the ISR (kindcode A3). In recent years most of the ISAs are quite timely and almost always,
the IB is able to publish the ISR with the application itself (kind code A1).
Late Article 19 claims. The ISA might establish the ISR just barely in time for
the IB to include it in an A1 publication. In such a case, the applicant is given
two months during which to decide whether or not to do an Article 19
amendment. The amendment would thus reach the IB too late to be included
with the A1 publication. This would get published separately (the A4
publication).

30

Form PCT/IB/314 – Invitation to Request Rectification
What’s going on here: This is a form by which the IB tells you that it has
identified what it feels is an obvious mistake. You will want to Call a Meeting(page 15).
This is a counterpart to Form PCT/RO/108 and Form PCT/IPEA/411 and Form
PCT/ISA/216.
You would normally not have docketed to expect this form. You will typicallywant to report this to the client.
The IB will give a hint as to which Office it feels is the correct Office toentertain the request for rectification.
You will want to docket this aggressively. If you made your request to the RO,
then you will docket to check for receipt of form PCT/RO/109. If you madeyour request to the ISA, then you will docket to check for receipt of form
PCT/ISA/217. If you made your request to the IB, then you will docket tocheck for receipt of form PCT/IB/315. If you made your request to the IPEA,
then you will docket to check for receipt of form PCT/IPEA/412.
31

Form PCT/IB/315 – Notification of Decision Concerning
Request for Rectification
What’s going on here: This is the IB telling you its decision about whether itwill carry out a rectification that you have requested. The point of this form isthat you have submitted a request for rectification to the IB, and this is the IB's
way of telling you what decision they have made about it.
This is the counterpart to Form PCT/ISA/217 and Form PCT/IPEA/412 andForm PCT/RO/109.
If you had already set a docket, then you get to clear it. If you had not set adocket, then it is time to Call a Meeting (page 15). You may wish to report thisto the client. Your next steps may be to try to get things fixed in the national
phase.
You can request that the request for rectification and the decision be
published, along with further brief comments. One must balance the possible
benefit of such publication against the possible embarrassment of having the
public reading about the situation.

32

Form PCT/IB/316 – Invitation to correct priority claim and/or
notification of possibility to request restoration of the right of priority

What’s going on here: If you received Form PCT/IB/316, this is a serious
matter. This means that the International Bureau has the view that there issomething seriously wrong with at least one of your priority claims. It may wellbe that at this point, you need to consider the possibility of requesting
restoration of the right of priority. If so, you need to make sure that you put inyour request before the end of 14 months from the priority date. You need toCall a Meeting (page 15).
Inbound docketing significance: It is unlikely that you were expecting thisform, so probably you had not already set a docket.
Reporting: This needs to be reported immediately to the client.

33

Form PCT/IB/345 – Communication in Cases for which
No Other Form is Applicable
What’s going on here: Usually this form is unexpected.
This is the IB counterpart to form PCT/RO/132.
Inbound docketing significance: In general it would be a surprise
if you had docketed for receipt of this form. Usually the arrival ofthis form is unexpected.
Next steps: You will have to choose next steps based upon
whatever is being communicated by the form.
Outbound docketing significance: see above.

34

Form PCT/IB/346 – Notification Concerning the Filingof Amendments of the Claims
What’s going on here: The main significance of this form is that maybe you
filed an amendment under Article 19. If so, one of the incredibly important
points is whether you did or did not manage to get your amendment filed
timely. If you got it filed timely, then the International Bureau will take the claim
amendments into account and will publish them. If on the other hand you were
too late, then the International Bureau will not publish the claim amendments.
Inbound docketing significance: You get to clear the docket for this form. If no
docket had been set, then you need to Call a Meeting (page 15).
Reporting: You will probably want to report this to the client.
Outbound docketing significance: The chief next step, assuming that you
satisfied the time limit, is to make sure that the IB publishes the amended
claims. If there has already been an A1 or A2 publication, then you get todocket to check for an A3 publication. If the case has not yet been published,
then the amended claims might get published in the A1 publication.

35

Form PCT/IB/368 – Notification of Transmittal of
Demand to the Competent International Preliminary
Examining Authority
What’s going on here: This is the form in which the IB lets you know that you successfully filed a
Demand through ePCT.
The paragraph about 19 months and 20 months is not likely to be of concern, because the client
probably does not attach great significance to national phase entry in LU or TZ. The paragraphabout Rule 54bis.1 is likely to be of much greater concern.
Inbound docketing significance: If you e-filed a Demand in ePCT, then you should have set thisdocket and you may now clear it. If no docket had been set, then you need to Call a Meeting(page 15).
Reporting: You will want to check to see that the IB says you filed your Demand timely. If it says
you did not file the Demand timely, then you need to Call a Meeting (page 15).
Outbound docketing significance: Your next docket will be to check for receipt of Form
PCT/IPEA/402. You might docket one week for this.

36Form PCT/IB/371 – Notification Relating to Declaration
Made Under PCT Rule 4.17
Reporting: If the declarations were not filed timely, then you face theunwelcome task of letting the client know that the due date was missed. If thedeclarations were timely filed, then you may wish to provide a copy of the(updated) publication preview (see below) to the client.
Next steps: Assuming good news, namely that the IB agrees that you did file
your PCT Declaration or Declarations timely, then the usual next step is tocheck the publication preview in ePCT to see that it shows what you expect.
For example if the Declaration you filed is Declaration number 1, you can look
to see if the inventor names appear in the preview as expected. For any of
Declarations number 2 through 5 you can look for the sentence near the
Abstract reciting the Declarations that are to be published.
Outbound docketing significance: If the due date was missed, then you may
wish to set a docket to serve as a reminder to file appropriate papers with the
Designated or Elected Offices that are affected by the subject matter of the
Declarations.

37

Form PCT/IB/373 – International Preliminary Report on
Patentability (Chapter I of the Patent Cooperation
Treaty)What’s going on here: This form is the mirror image of Form PCT/IPEA/409– International Preliminary Report on Patentability (Chapter II of the Patent
Cooperation Treaty). If no Demand was filed, then what you receive is thisform.
This is the form by which the International Bureau communicates theinternational preliminary report on patentability under chapter I of the Patent
Cooperation Treaty. This is a form that is stapled to the front of your Written
Opinion from the ISA. The point of this form is that in a particular PCT
application, it's possible that you did not file a Demand. If you did not file a
Demand, then the International Bureau will take the WO from the ISA andwill put this form on the front of it. This form is then used to communicate it
to you as the IPRP.

38

Form PCT/IB/373 – International Preliminary Report on
Patentability (Chapter I of the Patent Cooperation
Treaty)When this arrives, it seems exciting. It seems like something important has
occurred when in fact nothing important has happened. This is simply tellingyou something that you already know from perhaps a year earlier when theInternational Bureau received, just as you did, the WO of the ISA. This form
is seldom interesting or exciting news. The significance of this form isbasically that there are some patent offices around the world that havebusiness process rules in place that only permit certain things to be done if
there is an international preliminary report on patentability, and this form
makes the rules possible to carry out.
Inbound docketing significance: most practitioners do not go to the trouble
to docket for this form.

39

The next three webinars●●

International Searching Authority forms webinar,
Friday, December 8, 2023. 10AM to 11:30 AM MT.
Note that depending on timing, some of theInternational Searching Authority forms will likely becovered in the December 12 webinar. If you sign up
for the December 8 webinar, you will probably also
want to sign up for the December 12 webinar.
International Preliminary Examining Authority
forms webinar, Tuesday, December 12, 2023. 10AM
to 11:30 AM MT.
40

Oppedahl on PCT Forms and PCT Docketing●

218 pages●

8.5 x ½ x 11 inches●

Language: English●●

ISBN-13: 9798766914655
Item Weight: 1.41
pounds41

PCT listserv●

https://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com●

More than 900 members

42

●

●

Be sure to complete the evaluationquestionnaire
Thank you!

43