MPEP § 1819 — MPEP § 1819
Current through: 2022-07-01

1819-Earlier Search 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1800 

 Section 1819 
 

 
 
 
 
 
 1819 Earlier Search [R-08.2012]

 
 PCT Rule 4 

 The Request (Contents) 

 *****

 
 4.12 Taking into Account Results of Earlier
 Search
 

 
 If the applicant wishes the International Searching
 Authority to take into account, in carrying out the international
 search, the results of an earlier international, international-type or
 national search carried out by the same or another International
 Searching Authority or by a national Office (“earlier search”):
 
 (i) the request shall so indicate and shall specify
 the Authority or Office concerned and the application in respect
 of which the earlier search was carried out;
 

 (ii) the request may, where applicable, contain a
 statement to the effect that the international application is
 the same, or substantially the same, as the application in
 respect of which the earlier search was carried out, or that the
 international application is the same, or substantially the
 same, as that earlier application except that it is filed in a
 different language.
 

 
 

 
 

 *****

 

 
 PCT Rule 12bis 

 Copy of Results of Earlier Search and of
 Earlier Application; Translation 

 
 12 bis .1 Copy of Results of Earlier Search and of Earlier
 Application; Translation
 

 
 (a) Where the applicant has, under Rule
 4.12 , requested the International Searching
 Authority to take into account the results of an earlier search carried
 out by the same or another International Searching Authority or by a
 national Office, the applicant shall, subject to paragraphs (c) to (f),
 submit to the receiving Office, together with the international
 application, a copy of the results of the earlier search, in whatever
 form (for example, in the form of a search report, a listing of cited
 prior art or an examination report) they are presented by the Authority
 or Office concerned.
 

 (b) The International Searching Authority may, subject to
 paragraphs (c) to (f), invite the applicant to furnish to it, within a
 time limit which shall be reasonable under the circumstances:
 
 (i) a copy of the earlier application concerned;

 (ii) where the earlier application is in a language
 which is not accepted by the International Searching Authority,
 a translation of the earlier application into a language which
 is accepted by that Authority;
 

 (iii) where the results of the earlier search are in a
 language which is not accepted by the International Searching
 Authority, a translation of those results into a language which
 is accepted by that Authority;
 

 (iv) a copy of any document cited in the results of
 the earlier search.
 

 
 

 (c) Where the earlier search was carried out by the same
 Office as that which is acting as the receiving Office, the applicant
 may, instead of submitting the copies referred to in paragraphs (a) and
 (b)(i) and (iv), indicate the wish that the receiving Office prepare and
 transmit them to the International Searching Authority. Such request
 shall be made in the request and may be subjected by the receiving
 Office to the payment to it, for its own benefit, of a fee.
 

 (d) Where the earlier search was carried out by the same
 International Searching Authority, or by the same Office as that which
 is acting as the International Searching Authority, no copy or
 translation referred to in paragraphs (a) and (b) shall be required to
 be submitted under those paragraphs.
 

 (e) Where the request contains a statement
 under Rule 4.12(ii) to the effect that the
 international application is the same, or substantially the same, as the
 application in respect of which the earlier search was carried out, or
 that the international application is the same, or substantially the
 same, as that earlier application except that it is filed in a different
 language, no copy or translation referred to in paragraphs (b)(i) and
 (ii) shall be required to be submitted under those paragraphs.
 

 (f) Where a copy or translation referred to in
 paragraphs (a) and (b) is available to the International Searching
 Authority in a form and manner acceptable to it, for example, from a
 digital library or in the form of the priority document, and the
 applicant so indicates in the request, no copy or translation shall be
 required to be submitted under those paragraphs.
 

 
 

 

 Where the applicant wishes the International Searching Authority (ISA)
 to take into account, in carrying out the international search, the results of one or
 more earlier international, international-type, or national searches carried out by the
 same or another ISA or by a national Office, the application(s) must be identified in
 the request. Applicants should identify the application(s) in Box No. VII of the request
 by the filing date, application number, and the country or regional Office. 
 

 The United States Patent and Trademark Office performs an
 international-type search on all U.S. national applications filed on and after June 1,
 1978. No specific request by the applicant is required and no number identifying the
 international-type search is assigned by the Office. See 37 CFR
 1.104(a)(3) . 
 

 [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 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:36