MPEP § 1801 — MPEP § 1801
Current through: 2022-07-01

1801-Basic Patent Cooperation Treaty (PCT) Principles 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1800 

 Section 1801 
 

 
 
 
 
 
 1801 Basic Patent Cooperation Treaty (PCT) Principles [R-01.2024]
 I. MAJOR CONCEPTS OF THE PCT The Patent Cooperation Treaty (PCT) enables the U.S. applicant to
 file one application, “an international application,” 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 or regional filing in as
 many Contracting States to the PCT as the applicant “designates,” i.e., names, as
 countries or regions in which patent protection is desired. The filing of an
 international application will automatically constitute the designation of all
 contracting countries to the PCT on that filing date. 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 the establishment of an international search report and written opinion
 at 16 months from the priority date and publication of the international application
 after 18 months from the priority date. Upon payment of national fees and the
 furnishing of any required translation, usually 30 months after the filing of any
 priority application for the invention, or the international filing date if no
 priority is claimed, the application will be subjected to national procedures for
 granting of patents in each of the designated countries. For any countries remaining
 whose national laws are not compatible with the 30 month period set forth in
 PCT Article
 22(1) , the filing of a demand for an international
 preliminary examination electing such countries within 19 months from the priority
 date will result in an extension of the period for entering the national stage to 30
 months from the priority date. An up-to-date list of such countries may be found on
 WIPO’s website ( www.wipo.int/ pct/en/texts/reservations/res_incomp.html ). See
 also subsection V. below. A brief description of the basic flow under the PCT is
 provided in MPEP §
 1842 . 
 

 The PCT offers an alternative route to filing patent applications
 directly in the patent offices of those countries which are Contracting States of
 the PCT. It does not preclude taking advantage of the priority rights and other
 advantages provided under the Paris Convention and the WTO administered Agreement on
 Trade-Related Aspects of Intellectual Property (TRIPS Agreement). The PCT provides
 an additional and optional foreign filing route to patent applicants.
 

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

 In most instances, a national U.S. application 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 benefit of the U.S. national application filing date will be claimed.
 

 II. RECEIVING OFFICE (RO) The international application (IA) must be filed in the prescribed
 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 nationals. The receiving Office functions as the filing and
 formalities review organization for international applications. International
 applications must contain upon filing the designation of at least one Contracting
 State 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 earliest-filed
 application whose priority is claimed 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 within 1 month from the date of receipt. See PCT Rules
 14.1(c) , 15.3 , and 16.1(f) . The
 receiving Office will grant an international 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 application, the home copy (HC), remains in the receiving Office
 ( PCT Article
 12(1) ). Once the receiving Office has transmitted copies of
 the application, the International Searching Authority becomes the focus of
 international processing. 
 

 III. INTERNATIONAL SEARCHING AUTHORITY (ISA) The basic functions of the International Searching Authority (ISA)
 are to conduct a prior art search of inventions 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 )) and to issue a
 written opinion ( PCT Rule 43bis ) which will normally be considered to be the first written
 opinion of the International Preliminary Examining Authority where international
 preliminary examination is demanded. See PCT Rule
 66.1bis .
 

 For most applications filed with the United States Receiving
 Office, the applicant may choose (in the Request form) the U.S. Patent and Trademark
 Office, the European Patent Office, the Korean Intellectual Property Office, the
 Australian Patent Office (IP Australia), the Israel Patent Office (ILPO), the Japan
 Patent Office (JPO), or the Intellectual Property Office of Singapore (IPOS) to act
 as the International Searching Authority. However, IP Australia and JPO may not be
 competent to act as an International Searching Authority for certain applications
 filed by nationals or residents of the United States. See MPEP §§ 1840.01 
 - 1840.07 . 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 (ISR) and written opinion 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 made available to the applicant by the ISA ( PCT Rules 43 
 and 44.1 ). The international 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. The written opinion indicates whether each
 claim appears to satisfy the PCT Article 33 criteria of
 “novelty,” “inventive step,” and “industrial applicability.” The written opinion may
 also indicate defects in the form or content of the international application under
 the PCT articles and regulations, as well as any observations the ISA wishes to make
 on the clarity of the claims, the description, and the drawings, or on the question
 of whether the claims are fully supported by the description. 
 

 Once the international search report and written opinion are
 established, the ISA transmits one copy of each to the applicant and the
 International Bureau, and international processing continues before the
 International Bureau. If a Demand for Chapter II examination is not timely filed,
 the International Bureau communicates a copy of the written opinion established by
 the ISA (retitled International Preliminary Report on Patentability (Chapter I of
 the PCT)) to each designated Office after the expiration of 30 months from the
 priority date. 
 

 IV. 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
 Organization (WIPO) in Geneva, Switzerland performs the duties of the International
 Bureau.
 

 If the applicant has not filed a certified copy of the priority
 document in the receiving Office with the international application, 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, or
 requested the International Bureau to obtain a copy of the earlier application from
 a digital library, the applicant must submit such a document directly to the
 International Bureau or the receiving Office not later than 16 months after the
 priority date ( PCT
 Rule 17 ). The request (Form PCT/RO/101) contains a box which
 can be checked requesting the receiving Office to prepare and transmit a copy of a
 prior application. This is only possible, of course, if the receiving Office is a
 part of the same national Office where the priority application was filed. The
 request (Form PCT/RO/101) also contains a box which can be checked requesting the
 International Bureau to obtain a copy of the earlier application from a digital
 library. This is only possible if the application is registered in a digital
 library, made available to the International Bureau within the prescribed time
 limit, as set forth in PCT Rule
 17.1(b-bis) , and the access code is
 furnished to the International Bureau.
 

 The applicant has normally 2 months from the date of transmittal of
 the international search report to amend the claims by filing an amendment and may
 file a brief statement explaining the amendment directly with the International
 Bureau ( PCT
 Article 19 and PCT Rule 46 ). The International
 Bureau will then normally publish the international application along with the
 search report and any amended claims at the expiration of 18 months from the
 priority date ( PCT
 Article 21 ). For applications filed before July 1, 2014,
 former PCT Rule 44 ter provided that the written opinion of the
 ISA would not be made publicly available until the expiration of 30 months from the
 priority date. For applications filed on or after July 1, 2014, the written opinion
 of the ISA and any informal comments submitted by the applicant are made available
 to the public in their original language as of the publication date. The
 international publication includes a front page containing bibliographical data, the
 abstract, and a figure of the drawing ( PCT Rule 48 ). The publication
 also contains the search report and any amendments to the claims submitted by the
 applicant. If the application is published in a language other than English, the
 search report and abstract are also published in English. The International Bureau
 publishes 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 communicates copies of the publication of the
 international application to all designated Offices that have requested to receive
 the publication ( PCT Article 20 , PCT Rule 47 , and
 PCT Rule
 93bis.1) .
 

 V. DESIGNATED OFFICE (DO) and ELECTED OFFICE (EO) The designated Office is the national Office (for example, 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.
 

 PCT Article
 22(1) was amended, effective April 1, 2002, to specify that a
 copy of the international application, a translation thereof (as prescribed), and
 the national fee are due to the designated Office not later than at the expiration
 of 30 months from the priority date. Accordingly, the time period for filing the
 copy of the international application, the translation, and the fee under
 PCT Article
 22 is the same as the 30 month time period set forth in
 PCT Article
 39 . The USPTO has adopted the 30 month time limit set forth
 in PCT Article
 22(1) . Most Contracting States have changed their national
 laws for consistency with PCT Article 22(1) as amended.
 An up-to-date listing of Contracting States that have adopted Article 22(1) 
 as amended is maintained at WIPO’s website at www.wipo.int/pct/en/texts/ time_limits.html . At the time of
 publication of this Chapter, only two countries have not adopted Article 22(1) 
 as amended: Luxembourg (LU) and the United Republic of Tanzania (TZ). It is noted
 that Luxembourg is included in the regional designation “EPO” and that the United
 Republic of Tanzania is included in the regional designation “ARIPO.” For those two
 remaining Contracting States that have not adopted Article 22(1) 
 as amended, if no “Demand” for international preliminary examination has been filed
 within 19 months of the priority date, the applicant may be required to complete the
 requirements for entering the national stage within 20 months from the priority date
 of the international application in the national offices of those states. When
 entering the national stage following Chapter I or Chapter II, the applicant has the
 right to amend the application within the time limit set forth in PCT Rule 52.1 
 or PCT Rule
 78.1 , respectively. After this time limit has expired
 ( PCT Article
 28 or PCT Article 41 and
 PCT Rule
 52 or PCT Rule 78 ), each
 designated/elected 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 in one or more
 countries where the 30 month time limit set forth in PCT Article
 22(1) as amended does not apply, a Demand for international
 preliminary examination must be filed with an appropriate International Preliminary
 Examining Authority (IPEA) within 19 months of the priority date.
 

 Those states in which the Chapter II procedure is
 desired must be “elected” in the Demand.
 

 PCT Rule
 54bis.1 requires the Demand to be made
 prior to the expiration of whichever of the following periods expires later:
 

 
 (A) three months from the date of transmittal to
 the applicant of the international search report or of the declaration
 referred to in PCT Article 17(2)(a) ,
 and of the written opinion under PCT Rule
 43bis.1 ; or
 

 (B) 22 months from the priority date. 

 
 However, applicant may desire to file the Demand by 19
 months from the priority date to extend the national stage entry deadline in
 Luxembourg and the United Republic of Tanzania.
 

 The original Demand is forwarded to the International Bureau by the
 IPEA. The International Bureau then notifies the various elected Offices that the
 applicant has entered Chapter II and sends a copy of any amendments filed under
 PCT Article
 19 and any statement explaining the amendments and the basis
 for the amendments to the IPEA. See PCT Rule 62 . The International
 Bureau also sends the IPEA a copy of the written opinion established by the
 International Searching Authority (ISA) unless the ISA is also acting as the IPEA.
 See PCT Rule
 62.1(i) . 
 

 VI. INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY (IPEA) The International Preliminary Examining Authority (IPEA) normally
 starts the examination process when it is in possession of:
 

 
 (A) the Demand;

 (B) the amount due;

 (C) a translation, if the applicant is required to furnish a
 translation under PCT Rule 55.2 ; 
 

 (D) either the international search report or a notice of the
 declaration by the International Searching Authority (ISA) that no
 international search report will be established; and
 

 (E) the written opinion established under PCT Rule
 43bis.1 . 
 

 
 The IPEA shall start the international preliminary examination upon
 receipt of the above materials unless the applicant expressly requests to postpone
 the start of the international preliminary examination until the expiration of the
 later of three months from the transmittal of the international search report (or
 declaration that no international search report will be established) and written
 opinion; or the expiration of 22 months from the priority date, with the exception
 of the situations provided for in PCT Rule 69.1(b) - (e) .
 

 The written opinion of the ISA is usually considered the first
 written opinion of the IPEA unless the IPEA has notified the International Bureau
 that written opinions established by specified International Searching Authorities
 shall not be considered a written opinion for this purpose. See PCT Rule
 66.1bis . Also, the IPEA may, at its
 discretion, issue further written opinions provided sufficient time is available.
 See PCT Rule
 66.4 . 
 

 The IPEA establishes the international preliminary examination
 report (entitled “international preliminary report on patentability”), 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 entering 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; however, some
 elected Offices provide a longer period to complete the requirements.
 

 A listing of all national and regional offices, and the
 corresponding time limits for entering the national stage after PCT Chapter I and
 PCT Chapter II, may be found on WIPO’s website at: www.wipo.int/pct/en/texts/time_limits.html .
 

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 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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