MPEP § 1845 — MPEP § 1845
Current through: 2022-07-01

1845-Written Opinion of the International Searching Authority 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 1800 

 Section 1845 
 

 
 
 
 
 
 1845 Written Opinion of the International Searching
 Authority [R-07.2015]
 

 
 PCT Rule 43bis. 

 Written Opinion of the International
 Searching Authority 

 
 43 bis .1. Written Opinion
 

 
 (a) Subject to Rule 69.1(b-bis)
 , the International Searching Authority shall, at the
 same time as it establishes the international search report or the
 declaration referred to in Article 17(2)(a) ,
 establish a written opinion as to: 
 
 (i) whether the claimed invention appears to be
 novel, to involve an inventive step (to be non-obvious), and to
 be industrially applicable;
 

 (ii) whether the international application complies
 with the requirements of the Treaty and these Regulations in so
 far as checked by the International Searching Authority.
 

 
 
 

 

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

 

 (b) For the purposes of establishing the written opinion,
 Articles 33(2) to (6) and 35(2)
 and (3) and Rules 43.4 ,
 
 43.6 bis , 64 ,
 65 , 66.1(e) ,
 66.7 , 67 ,
 70.2(b) and (d) , 70.3 , 70.4(ii) ,
 70.5(a) , 70.6 to
 70.10 , 70.12 ,
 70.14 and 70.15(a) shall
 apply mutatis mutandis . 
 

 (c) The written opinion shall contain a notification
 informing the applicant that, if a demand for international preliminary
 examination is made, the written opinion shall, under Rule
 66.1bis(a) but subject to
 
 Rule 66.1bis(b) , be considered
 to be a written opinion of the International Preliminary Examining
 Authority for the purposes of Rule 66.2(a) , in
 which case the applicant is invited to submit to that Authority, before
 the expiration of the time limit under Rule 54
 bis.1(a) , a written reply
 together, where appropriate, with amendments.
 

 
 

 

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

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

 
 1845.01 Preparing the Written Opinion of the International Searching
 Authority (Form PCT/ISA/237) [R-07.2022]
 

 [Editor Note: This section discusses the July 2022
 version of PCT/ISA/237. For international applications having an international
 filing date before July 1, 2022, information regarding form PCT/ISA/237 (revised
 January 2019) may be found in §1845.01 of the 10.2019 revision of the Ninth Edition
 of the MPEP published June 2020 at: www.uspto.gov/web/offices/pac/mpep/old/ mpep_E9R10.htm .] 
 

 The classifications in the header on the cover sheet of Form
 PCT/ISA/237 are to be consistent with the classifications of subject matter in Box A
 on the second sheet of the International Search Report (Form PCT/ISA/210).
 

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

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

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

 With respect to Box No. I, item 3 of Form PCT/ISA/237, if the
 opinion has been based on a nucleotide and/or amino acid sequence disclosed and
 necessary to the claimed invention, the examiner must indicate whether the
 sequence listing was filed as part of the international application or
 subsequent to the international filing date for the purpose of international
 search, and whether it was accompanied by the required statement to the effect
 that the sequence listing does not go beyond the disclosure in the international
 application as filed, if filed subsequent to the international filing date.
 

 Item 4 indicates the opinion was established to
 the extent that a meaningful opinion could be formed without a WIPO Standard
 ST.26 compliant sequence listing. Item 5 is available for providing any
 additional comments.
 

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

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

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

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

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

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

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

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

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

 If a meaningful opinion could not be formed without the
 nucleotide and/or amino acid sequence listing because it does not comply with
 WIPO Standard ST.26, and/or the applicant did not pay the late furnishing fee,
 if required, the examiner must indicate the reason for the non-compliance.
 

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

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

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

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

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

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

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

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

 V. BOX NO. V. — REASONED STATEMENT WITH REGARD TO NOVELTY, INVENTIVE STEP,
 AND INDUSTRIAL APPLICABILITY OF CLAIMS In Box No. V of Form PCT/ISA/237, the examiner must list in
 summary form all claims with regard to the criteria of novelty (N), inventive
 step (IS), and industrial applicability (IA). For definitions of novelty,
 inventive step, and industrial applicability see MPEP §§
 1878.01(a)(1) , 1878.01(a)(2) , and 1878.01(a)(3) , respectively.
 

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

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

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

 ¶ 18.04 Meets Novelty and Inventive Step

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

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

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

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

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

 ¶ 18.04.01 Meets Industrial Applicability

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

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

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

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

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

 5. If the claims have industrial applicability and novelty but lack inventive step, use this form paragraph and additionally
 use one or more of form paragraphs 18.02 , 18.02.01 and 18.02.02 , as appropriate. 
 

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

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

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

 ¶ 18.01 Lacks Novelty

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

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

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

 ¶ 18.02 Lacks Inventive Step - One Reference

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

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

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

 3. In bracket 3, add reasoning.
 
 

 ¶ 18.02.01 Lacks Inventive Step - Two References

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

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

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

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

 4. In bracket 4, add reasoning.
 
 

 ¶ 18.02.02 Lacks Inventive Step - Additional Reference

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

 Examiner Note:
 
 1. This form paragraph may follow either 18.02 or 18.02.01.

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

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

 4. In bracket 3, add reasoning.
 
 

 ¶ 18.03 Lacks Industrial Applicability

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

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

 2. In bracket 2, add reasoning.
 
 

 

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

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

 VII. BOX NO. VII. — CERTAIN DEFECTS IN THE INTERNATIONAL APPLICATION In Box No. VII of Form PCT/ISA/237, defects in the form and
 content of the international application are identified.
 

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

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

 ¶ 18.08 Drawing - Defect in Form or Contents Thereof

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

 Examiner Note:

 In bracket 1, insert identification of defects in drawings.

 

 ¶ 18.08.01 Drawing Is Required

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

 

 ¶ 18.09 Description - Defect in Form or Contents Thereof

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

 Examiner Note:

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

 

 ¶ 18.10 Claims - Defect in Form or Contents Thereof

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

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

 2. In bracket 2, identify the technical deficiency. 
 
 
 VIII. BOX NO. VIII. — CERTAIN OBSERVATIONS ON THE INTERNATIONAL
 APPLICATION In Box No. VIII, the examiner notifies the applicant of
 observations made as to the clarity of the claims, the description, the
 drawings, or on the question whether the claims are fully supported by the
 description.
 

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

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

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

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

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

 ¶ 18.11 Drawing Objections - Lack Clarity

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

 Examiner Note:

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

 

 ¶ 18.12.01 Claims Objectionable - Inadequate Written Description

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

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

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

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

 ¶ 18.13.01 Claims Objectionable - Non-Enabling Disclosure

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

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

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

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

 ¶ 18.14.01 Claims Objectionable - Lack of Best Mode

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

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

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

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

 ¶ 18.15 Claims Objectionable - Indefiniteness

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

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

 2. In bracket 3, insert reasons.
 
 
 IX. AUTHORIZED OFFICER Pursuant to PCT Rules
 43bis.1 and 70.14 ,
 the written opinion of the International Searching Authority must indicate the
 name of the officer of the International Searching Authority responsible for the
 written opinion, i.e., the “authorized officer.” An “authorized officer” is the
 person who actually performed the search work and prepared the search report and
 the written opinion, or another person who was responsible for supervising the
 search and the establishment of the written opinion. See PCT Administrative
 Instructions Section 514 . Thus, an examiner need
 not have signatory authority in order to be named as an authorized officer on
 the written opinion. However, the “file copy” of the written opinion must be
 signed by an examiner having at least partial signatory authority.
 

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

 

 

 

 

 

 

 

 
 1845.02 Notification of Transmittal of the International Search
 Report and the Written Opinion of the International Searching Authority, or the
 Declaration (Form PCT/ISA/220) [R-07.2022]
 

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

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

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

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

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

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1801-Basic Patent Cooperation Treaty (PCT) Principles 

 1802-PCT Definitions 

 1803-Reservations Under the PCT Taken by, and Notifications of Incompatibility Made by, the United States of America 

 1804-[Reserved] 

 1805-Where To File an International Application 

 1806-Applicants and Inventors 

 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 

 1809-Access to the USPTO patent electronic filing system 

 1810-Filing Date Requirements 

 1811-[Reserved] 

 1812-Elements of the International Application 

 1813 - 1816-[Reserved] 

 1817-PCT Member States 

 1818-[Reserved] 

 1819-Earlier Search 

 1820-Signature of Applicant 

 1821-The Request 

 1822-[Reserved] 

 1823-The Description 
 1823.01-Reference to Deposited Biological Material 

 1823.02-Filing Nucleotide and/or Amino Acid Sequence Listings in International Applications 

 
 

 1824-The Claims 

 1825-The Drawings 

 1826-The Abstract 

 1827-Fees 
 1827.01-Refund of International Application Fees 

 
 

 1828-Priority Claim and Document 
 1828.01-Restoration of the Right of Priority 

 1828.02-Continuation or Continuation-in-Part Indication in the Request 

 
 

 1829-[Reserved] 

 1830-International Application Transmittal Letter 

 1831-[Reserved] 

 1832-License Request for Foreign Filing Under the PCT 

 1833-[Reserved] 

 1834-Correspondence 
 1834.01-Filing of Correspondence by Facsimile 

 1834.02-Irregularities in the Mail or Electronic Communications Service 

 
 

 1835-[Reserved] 

 1836-Rectification of Obvious Mistakes 

 1837 - 1839-[Reserved] 

 1840-The International Searching Authority 
 1840.01-The European Patent Office as an International Searching Authority 

 1840.02-The Korean Intellectual Property Office as an International Searching Authority 

 1840.03-The Australian Patent Office (IP Australia) as an International Searching Authority 

 1840.04-[Reserved] 

 1840.05-The Israel Patent Office (ILPO) as an International Searching Authority 

 1840.06-The Japan Patent Office (JPO) as an International Searching Authority 

 1840.07-The Intellectual Property Office of Singapore (IPOS) as an International Searching Authority 

 
 

 1841-[Reserved] 

 1842-Basic Flow Under the PCT 

 1843-The International Search 
 1843.01-Prior Art for Chapter I Processing 

 1843.02-Certain Subject Matter Need Not Be Searched 

 1843.03-No Search Required if Claims Are Unclear 

 1843.04-Procedure for Claims Not Required To Be Searched and for Claims That Are Unclear 

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

 
 

 1844-The International Search Report 
 1844.01-Preparing the International Search Report (Form PCT/ISA/210) 

 
 

 1845-Written Opinion of the International Searching Authority 
 1845.01-Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237) 

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

 
 

 1846 - 1847-[Reserved] 

 1848-Sequence Listings 

 1849-[Reserved] 

 1850-Unity of Invention Before the International Searching Authority 

 1851-Identification of Patent Documents 

 1852-Taking Into Account Results of Earlier Search(es) 

 1853-Amendment Under PCT Article 19 

 1854 - 1855-[Reserved] 

 1856-Supplementary International Searches 

 1857-International Publication 

 1858-[Reserved] 

 1859-Withdrawal of International Application, Designations, or Priority Claims 

 1860-International Preliminary Examination Procedure 

 1861-[Reserved] 

 1862-Agreement With the International Bureau To Serve as an International Preliminary Examining Authority 

 1863-[Reserved] 

 1864-The Demand and Preparation for Filing of Demand 
 1864.01-Amendments Filed Under PCT Article 34 

 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-[Reserved] 

 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-Availability of the International Application File for International Preliminary Examination by the Examining Corps 

 1873-[Reserved] 

 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 of the International Preliminary Examining Authority 
 1878.01-Includes Subsections Regarding Prior Art, Novelty, Inventive Step, and Industrial Applicability for Purposes of the Written
 Opinion and the International Preliminary Examination Report 
 1878.01(a)-Prior Art for Purposes of the Written Opinion and the International Preliminary Examination Report 
 1878.01(a)(1)-Novelty for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(2)-Inventive Step for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(3)-Industrial Applicability for Purposes of the Written Opinion and the International Preliminary Examination Report 

 
 

 
 

 1878.02-Reply to the Written Opinion of the ISA or IPEA 

 
 

 1879-Preparation of the International Preliminary Examination Report 
 1879.01-Time Limit for Preparing Report 

 1879.02-Transmittal of the International Preliminary Examination Report and Related Documents 

 1879.03-Translations 

 1879.04-Confidential Nature of the Report 

 
 

 1880-Withdrawal of Demand or Election 

 1881-Receipt of Notice of Election and Preliminary Examination Report by the United States Patent and Trademark Office 

 1882 - 1892-[Reserved] 

 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 or Elected Office 
 1893.01(a)(1)-Submissions Required by 30 Months from the Priority Date 

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

 1893.01(a)(3)-Article 34 Amendments (Filed with the International Preliminary Examining Authority) 

 1893.01(a)(4)-Claim Amendment (Filed With the U.S. Designated or Elected Office) 

 
 

 1893.01(b)-Applicant for a U.S. National Stage Application 

 1893.01(c)-Fees 

 1893.01(d)-Translation 

 1893.01(e)-Inventor’s Oath or 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)-Documents Received from the International Bureau and Placed in a U.S. National Stage Application File 
 1893.03(e)(1)-Title of the Invention 

 
 

 1893.03(f)-Drawings and PCT Rule 11 

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

 
 

 
 

 1894-[Reserved] 

 1895-A Continuation, Divisional, or Continuation- in- Part Application of a PCT Application Designating the United States 
 1895.01-Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications 

 
 

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

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:49:29