MPEP § 1879 — MPEP § 1879
Current through: 2022-07-01

1879-Preparation of the International Preliminary Examination Report 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1800 

 Section 1879 
 

 
 
 
 
 
 1879 Preparation of the International Preliminary Examination
 Report [R-07.2022]
 

 [Editor Note: This section discusses the July 2022
 version of PCT/IPEA/409. For international applications having an international filing
 date before July 1, 2022, information regarding form PCT/IPEA/409 (revised January 2019)
 may be found in §1879 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 .]
 

 
 PCT Article 35 

 The International Preliminary Examination
 Report 

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

 (2) The international preliminary examination report shall not
 contain any statement on the question whether the claimed invention is or
 seems to be patentable or unpatentable according to any national law. It
 shall state, subject to the provisions of paragraph (3), in relation to each
 claim, whether the claim appears to satisfy the criteria of novelty,
 inventive step (non-obviousness), and industrial applicability, as defined
 for the purposes of the international preliminary examination in
 Article 33(1) to (4) . The statement shall be
 accompanied by the citation of the documents believed to support the stated
 conclusion with such explanations as the circumstances of the case may
 require. The statement shall also be accompanied by such other observation
 as the Regulations provide for.
 

 (3) 
 
 (a) If, at the time of establishing the international
 preliminary examination report, the International Preliminary
 Examining Authority considers that any of the situations referred to
 in Article 34(4)(a) exists, that report shall
 state this opinion and the reasons therefor. It shall not contain
 any statement as provided in paragraph (2).
 

 (b) If a situation under Article
 34(4)(b) is found to exist, the international
 preliminary examination report shall, in relation to the claims in
 question, contain the statement as provided in subparagraph (a),
 whereas, in relation to the other claims, it shall contain the
 statement as provided in paragraph (2).
 

 
 

 
 

 
 PCT Administrative Instructions Section 604 

 Guidelines for Explanations Contained in
 the International Preliminary Examination Report 

 
 (a) Explanations under Rule 70.8 shall clearly
 point out to which of the three criteria of novelty, inventive step
 (non-obviousness) and industrial applicability referred to in
 Article 35(2) , taken separately, any cited document
 is applicable and shall clearly describe, with reference to the cited
 documents, the reasons supporting the conclusion that any of the said
 criteria is or is not satisfied.
 

 (b) Explanations under Article 35(2) shall be
 concise and preferably in the form of short sentences.
 

 
 

 The international preliminary examination report (otherwise known as
 International Preliminary Report on Patentability (Chapter II of the Patent Cooperation
 Treaty)) is established on Form PCT/IPEA/409.
 

 The international preliminary examination report must be established
 within:
 

 
 (A) 28 months from the priority date; or

 (B) 6 months from the time provided under PCT Rule
 69.1 for the start of international preliminary
 examination; or
 

 (C) 6 months from the date of receipt by the IPEA of the translation
 furnished under PCT Rule 55.2 , whichever
 expires last, as provided in PCT Rule 69.2 . 
 

 
 To meet the 28-month date for establishing the report, Office practice
 is to complete internal processing by 27 months from the priority date in order to
 provide adequate time for reviewing, final processing and mailing. Thus, under normal
 circumstances, the applicant receives the report, at the latest, 2 months before
 national processing at the elected Offices may start. This ensures that he/she has time
 to consider whether, and in which elected Offices, he/she wants to enter the national
 stage and to take the necessary action.
 

 The international preliminary examination report contains, among other
 things, a statement (in the form of simple “yes” or “no”), in relation to each claim
 which has been examined, on whether the claim appears to satisfy the criteria of
 novelty, inventive step (non-obviousness) and industrial applicability. The statement
 is, where appropriate, accompanied by the citation of relevant documents together with
 concise explanations pointing out the criteria to which the cited documents are
 applicable and giving reasons for the International Preliminary Examining Authority’s
 conclusions. Where applicable, the report also includes remarks relating to the question
 of unity of invention.
 

 The international preliminary examination report identifies the basis
 on which it is established, i.e., whether, and if so, which amendments have been taken
 into account. Replacement sheets containing amendments under PCT Article 19 
 and/or PCT Article
 34 which have been taken into account are attached as “annexes”
 to the international preliminary examination report. Amendments under PCT Article 19 
 which have been considered as reversed by an amendment under PCT Article 34 
 are not annexed to the report; neither are the letters which accompany replacement
 sheets.
 

 Superseded amendments are not normally included. However, if a first
 replacement sheet is acceptable and a second replacement sheet for the same numbered
 sheet contains subject matter that goes beyond the original disclosure of the
 application as filed, the second replacement sheet supersedes the first replacement
 sheet, but both the first and second replacement sheets shall be attached to the
 international preliminary examination report. In this case, the superseded replacement
 sheets are to be marked as provided in PCT Administrative Instructions Section
 602 .
 

 Before the preparation of the Chapter II report, a top-up
 search should be conducted by the IPEA to identify any additional prior art that has
 been published or has become available subsequent to the date of the establishment of
 the international search report. The purpose is to discover any intermediate prior art
 not available during the international search, i.e. patent application published on or
 after the filing or, the valid priority date of the international application, but
 having an earlier filing or priority date. The top-up search should be differentiated
 from additional search. A top-up search is to find prior art which recently became
 available, which is not the same as additional search required as a result of a claim
 amendment to present additional features not previously claimed.
 

 A top-up search should be performed in all Chapter II
 examination, except where the examiner considers performing a top-up search would serve
 no useful purpose. This, however, should be a rare occurrence. For example, this is the
 case when it is decided that the international application, in its entirety, relates to
 subject matter on which the International Preliminary Examining Authority is not
 required to carry out an international preliminary examination, or that the
 international application is so unclear or the claims are so inadequately supported by
 the description that no meaningful opinion can be formed on the novelty, inventive step,
 or industrial applicability, of the claimed invention. The same applies when no
 international search report has been established for certain claims and it is thus
 decided not to carry out an international preliminary examination on these claims. Note,
 however, that when any of the above situations applies to only part of the claimed
 subject matter or where there is lack of unity of invention, a top-up search should
 still be carried out but restricted to those parts of the international application that
 are the subject of international preliminary examination. Another situation is when the
 IPEA considers that the documents cited in the International Search Report are
 sufficient to show there is lack of novelty on the entire subject matter. A further
 example where a top-up search is considered to serve no useful purpose is when the
 International Search Report cited novelty defeating X references and no amendment to the
 claims or comments on the application of art has been filed.
 

 If the claims in the international application lack unity,
 the examiner will first issue an invitation to pay further examination fees and then
 perform the top-up search on inventions for which examination fees have been paid. The
 invention paid for must not have been excluded from preliminary examination due to lack
 of international search in Chapter I. 
 

 In an application where an Article 34 
 amendment has been filed but no basis can be located, and/or there is no letter
 explaining the basis, the top-up search may be limited to the scope of the claims
 forming the basis for the report.
 

 In cases where relevant documents have been discovered in
 a top-up search and the examiner intends to raise a new objection based on the
 documents, a second written opinion should be issued where the new objection was not
 necessitated by an amendment.
 

 The international preliminary examination report may not
 express a view on the patentability of the invention. PCT Article 35(2) 
 expressly states that “the international preliminary examination report shall not
 contain any statement on the question whether the claimed invention is or seems to be
 patentable or unpatentable according to any national law.” 
 

 

 Form PCT/IPEA/409 Cover Sheet. The classification of the subject matter placed on the cover sheet of the report
 shall be either (1) that given by the International Searching Authority under
 PCT Rule
 43.3 , if the examiner agrees with such classification, or (2)
 shall be that which the examiner considers to be correct, if the examiner does not agree
 with that classification. Both the International Patent Classification (IPC) and the CPC
 classification required by the IPEA/US should be given. The cover sheet will also
 include the date on which the report was completed and the name and mailing address of
 the International Preliminary Examining Authority. This information is generated
 automatically by the Official Correspondence (OC) software when preparing the report. In
 addition, the examiner must indicate the date on which the demand for international
 preliminary examination was submitted. The date of receipt of the demand is usually
 stamped on the first sheet of the demand (form PCT/IPEA/401). 
 

 I. BOX NO. I. BASIS OF REPORT When completing Box No. I, item 1 of Form PCT/IPEA/409, the examiner
 must indicate whether or not the report 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 international search, publication or
 international preliminary examination, this must be indicated. The international
 preliminary examination report will be established on the basis of any amendments,
 rectifications, priority and/or unity of invention holdings and shall answer the
 questions concerning novelty, inventive step, and industrial applicability for each
 of the claims under examination.
 

 For the purpose of completing Box No. I, item 2, sheets of the
 description and drawings filed during Chapter I proceedings and stamped “SUBSTITUTE
 SHEET (RULE 26)”, “RECTIFIED SHEET (RULE 91)”, and “INCORPORATED BY REFERENCE (RULE
 20.6)” are considered to be originally filed/furnished pages and should be listed as
 originally filed/furnished pages. Only those amendments or rectifications to the
 description and drawings filed on the date of demand or after the filing of a demand
 should be listed as later filed pages “received by this Authority on
 ______________."
 

 Claims filed during the Chapter I proceedings and stamped
 “SUBSTITUTE SHEET (RULE 26)”, “RECTIFIED SHEET (RULE 91)”, and “INCORPORATED BY
 REFERENCE (RULE 20.6)” are also considered to be originally filed/furnished and
 should be listed as originally filed/furnished claim numbers. However, amended
 claims filed under Article 19 in response to the international search report
 are to be indicated as claim numbers as amended (together with any statement) under
 Article
 19 . The International Bureau (IB) marks, in the upper
 right-hand corner of each replacement sheet submitted under PCT Article
 19 , the international application number, the date on which
 that sheet was received under PCT Article 19 and, in the
 middle of the bottom margin, the words “AMENDED SHEET (ARTICLE 19).” See
 Administrative Instructions Section 417 . Applicant’s
 submission of a timely amendment to the claims alleged to be under Article 19 is
 accepted under Article 34 (not Article 19 ) unless the
 International Bureau has indicated the amendments were accepted under
 Article
 19 . Only those claims filed on the date of demand or after
 the filing of a demand should be listed as claim numbers “received by this Authority
 on ______________.”
 

 Further, if the report has been based on a nucleotide and/or amino
 acid sequence disclosed and necessary to the claimed invention, the examiner must
 indicate the purpose for which the sequence listing was filed (i.e., whether as part
 of the international application or solely for purposes of international search),
 the time of filing/furnishing the sequence listing (i.e., whether filed on the
 international filing date or subsequently), and the format of the sequence listing
 (i.e., whether filed on paper or in the form of an image file (PDF) and/or in
 electronic form (Annex C/ST.25 text file)). If more than one version or copy of the
 sequence listing is filed, the examiner must indicate in item 2 whether the
 applicant has provided the required statement indicating that the information in the
 subsequent or additional copies are identical to that in the application as filed or
 does not go beyond the application as filed Item 3 is available for providing
 additional comments.
 

 The examiner must also indicate, in Box No. I, item 3, if any of the
 amendments filed resulted in the cancellation of any pages of the description, any
 of the claims, any sheets and/or figures of the drawings, any of the sequence
 listing. 
 

 If the examiner considers any of the amendments to go beyond the
 original disclosure, or they were not accompanied by a letter indicating the basis
 for the amendment in the application as filed, the examiner must point this out in
 Box No. I, item 4 and explain the reasons for this determination in the Supplemental
 Box. New matter which appears on a replacement sheet will be disregarded for the
 purpose of establishing the report. However, the remainder of the replacement sheet,
 including any amendments which do not constitute new matter, will be taken into
 consideration for the purpose of establishing the report. 
 

 Box No. I, item 5 needs to be marked if the report is established
 taking into account the rectification of an obvious mistake under PCT Rule 91 . 
 

 Box No. I, item 6 needs to be marked whether or not
 top-up searches have been carried out by the International Preliminary Examining
 Authority. If the search was carried out, the date of the top-up search and whether
 additional relevant document discovered need to be indicated. If any document
 discovered in the top-up search is used to support any negative statement with
 respect to any of the claimed subject matter, it should be cited in Box No. V of the
 report. Documents that refer to an oral disclosure, use, exhibition or other means
 occurred prior to the international filing date and documents that refer to earlier
 patent document, but published on or after the international filing date, should be
 cited in Box VI of the report.
 

 Further, Box No. I, item 7 needs to be marked if the report is
 established taking into account the supplementary international search report(s)
 from the specified Supplementary International Searching Authority(ies) (SISA).
 

 II. BOX NO. II. PRIORITY Box No. II of Form PCT/IPEA/409 is to inform applicant of the
 establishment of the report as if the priority claim made in the international
 application had not been made. This may occur where:
 

 
 (A) the IPEA requested, but was not furnished, a copy of the
 earlier application whose priority is claimed ( PCT Rule
 66.7(a) ), or 
 

 (B) applicant failed to timely comply with an invitation to
 furnish a translation of the earlier application ( PCT Rule
 66.7(b) ), or
 

 (C) the priority claim is found invalid or all claims are
 directed to inventions which were not described and enabled by the earlier
 application ( PCT Rule 64.1 ), or
 

 (D) the priority claim has been withdrawn.

 III. BOX NO. III. NON-ESTABLISHMENT OF OPINION WITH REGARD TO NOVELTY, INVENTIVE
 STEP OR INDUSTRIAL APPLICABILITY Indications that a report has not been established on the questions
 of novelty, inventive step or industrial applicability, either as to some claims or
 as to all claims, are given in Box No. III on the Report. The examiner must specify
 that the report has not been established because:
 

 
 (A) the application relates to subject matter which does not
 require international preliminary examination;
 

 (B) the description, claims or drawings are so unclear that no
 meaningful opinion could be formed;
 

 (C) the claims are so inadequately supported by the description
 that no meaningful opinion could be formed;
 

 (D) no international search report has been
 established for the claims.
 

 
 Where the report has not been established in relation to certain
 claims only, the claims affected must be specified.
 

 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 non-compliance.
 

 IV. BOX NO. IV. LACK OF UNITY OF INVENTION If the applicant has paid additional fees or has restricted the
 claims in response to an invitation to do so or if the applicant has failed to
 respond to the invitation to pay additional fees or restrict the claims, the
 international preliminary examination report shall so indicate. The examiner should
 indicate whether:
 

 
 (A) the claims have been restricted;

 (B) additional fees have been paid without protest;

 (C) additional fees have been paid by the applicant under
 protest;
 

 (D) the applicant has neither restricted the claims nor paid
 additional fees;
 

 (E) the examiner was of the opinion that the international
 application did not comply with the requirement of unity of invention but
 decided not to issue an invitation to restrict the claims or pay additional
 fees.
 

 
 In addition, if the examiner is examining less than all the claims,
 the examiner must indicate which parts of the international application were, and
 which parts were not, the subject of international preliminary examination.
 

 In the case where additional fees were paid under protest, the text
 of the protest, together with the decision thereon, must be annexed to the report by
 International Application Processing Division IPEA personnel if the applicant has so
 requested.
 

 Where an indication has been given under item (E) above, the
 examiner must also specify the reasons for which the international application was
 not considered as complying with the requirement of unity of invention.
 

 V. BOX NO. V. REASONED STATEMENT UNDER ARTICLE 35(2) WITH REGARD TO NOVELTY,
 INVENTIVE STEP, AND INDUSTRIAL APPLICABILITY; AND CITATIONS AND EXPLANATIONS
 SUPPORTING SUCH STATEMENT The examiner must indicate whether each claim appears to satisfy the
 criteria of novelty, inventive step (nonobviousness), and industrial applicability.
 The determination or statement should be made on each of the three criteria taken
 separately. The determination as to any criteria should be negative if the criteria
 as to the particular claim is not satisfied. The examiner should always cite
 documents believed to support any negative determination as to novelty and inventive
 step. Any negative holding as to lack of industrial applicability must be fully
 explained. See the further discussion in MPEP § 1845.01 relating to Box No.
 V of Form PCT/ISA/237. The citation of documents should be in accordance with
 Administrative Instructions Sections 503 and 611 . The
 procedure is the same as the procedure for search report citations. Explanations
 should clearly indicate, with reference to the cited documents, the reasons
 supporting the conclusions that any of the said criteria is or is not satisfied,
 unless the statement is positive and the reason for citing any document is easy to
 understand when consulting the document. If only certain passages of the cited
 documents are relevant, the examiner should identify them, for example, by
 indicating the page, column, or the lines where such passages appear. Preferably, a
 reasoned statement should be provided in all instances.
 

 VI. BOX NO. VI. CERTAIN DOCUMENTS CITED If the examiner has discovered, or the international search report
 has cited, a relevant document which refers to a non-written disclosure, and the
 document was only published on or after the relevant date of the international
 application, the examiner must indicate on the international preliminary examination
 report:
 

 
 (A) the date on which the document was made available to the
 public;
 

 (B) the date on which the non-written public disclosure
 occurred.
 

 
 The examiner should also identify any published application or
 patent which would constitute prior art for purposes of PCT Article 33(2) and
 (3) had it been published prior to the relevant date
 ( PCT Rule
 64.1 ) but was filed prior to, or claims the priority of an
 earlier application which had been filed prior to, the relevant date
 ( PCT Rule
 64.3 ). For each such published application or patent the
 following indications should be provided:
 

 
 (A) its date of publication;

 (B) its filing date, and its claimed priority date (if any).

 
 The Report may also indicate that, in the opinion of the
 International Preliminary Examining Authority, the priority date of the document
 cited has not been validly claimed ( PCT Rule 70.10 ). 
 

 Guidelines explaining to the examiner the manner of indicating
 certain special categories of documents as well as the manner of indicating the
 claims to which the documents cited in such report are relevant are set forth in
 Administrative Instructions Sections 507(c) , (d) , and
 (e) and 508 .
 

 VII. BOX NO. VII. CERTAIN DEFECTS IN THE INTERNATIONAL APPLICATION If, in the opinion of the examiner, defects existing in the form or
 contents of the international application have not been suitably solved at the
 prescribed time limit for establishing the international preliminary examination
 report, the examiner may include this opinion in the report, and if included, must
 also indicate the reasons therefor. See the further discussion in
 MPEP §
 1845.01 relating to Box No. VII of Form PCT/ISA/237.
 

 VIII. BOX NO. VIII. CERTAIN OBSERVATIONS ON THE INTERNATIONAL APPLICATION If, in the opinion of the examiner, the clarity of claims, the
 description, and the drawings, or the question as to whether the claims are fully
 supported by the description have not been suitably solved at the prescribed time
 limit for establishing the international preliminary examination report, the
 examiner may include this opinion in the report, and if included, must also indicate
 the reasons therefor. See the further discussion in MPEP § 1845.01 
 relating to Box No. VIII of Form PCT/ISA/237.
 

 IX. FINALIZATION OF THE INTERNATIONAL PRELIMINARY EXAMINATION REPORT The name of the authorized officer responsible for the report must
 be indicated. Pursuant to Administrative Instructions Section 612 , an
 “authorized officer” is the person who actually performed the examination work and
 prepared the international preliminary examination report or another person who was
 responsible for supervising the examination. Thus, an examiner need not have
 signatory authority in order to be named as an authorized officer on the examination
 report. However, the “file copy” of the international preliminary examination report
 must be signed by a primary examiner.
 

 The total number of sheets of the international
 preliminary examination report, including the cover sheet, must be indicated on the
 cover sheet. In addition, the annexes, if any, must accompany the international
 preliminary examination report. 
 

 For annexes to be sent to the applicant and to the
 International Bureau, an indication must be made regarding the total sheets of the
 following: sheets of the description, claims and/or drawings which have been amended
 and/or sheets containing rectifications authorized by the IPEA, unless those sheets
 were superseded or cancelled, and any accompanying letters (see PCT Rules
 46.5 , 66.8 , 70.16 ,
 91.2 , and PCT Administrative Instructions Section
 607 ); sheets containing rectifications, where the decision
 was made by the IPEA not to take them into account because they were not authorized
 by or notified to the IPEA at the time when the IPEA began to draw up the report,
 and any accompanying letters ( PCT Rules
 66.4bis , 70.2(e) ,
 70.16 and 91.2 ); and superseded sheets
 and any accompanying letters, where the IPEA either considered that the superseding
 sheets contained an amendment that goes beyond the disclosure in the international
 application as filed, or the superseding sheets were not accompanied by a letter
 indicating the basis for the amendments in the application as filed, as indicated in
 item 4 of Box No. I and the Supplemental Box (see PCT Rule
 70.16(b) ). 
 

 For annexes to be sent to the International Bureau
 only, an indication must be made regarding the total of the type and number of
 electronic carrier(s) containing a sequence listing, in electronic form only, as
 indicated in the Supplemental Box Relating to Sequence Listing (see paragraph
 3bis of Annex C of
 the PCT Administrative Instructions).
 

 

 

 

 

 

 

 

 
 1879.01 Time Limit for Preparing Report [R-10.2019]

 
 PCT Rule 69 

 Start of and Time Limit for
 International Preliminary Examination 

 
 69.1 Start of International Preliminary
 Examination
 

 
 (a) Subject to paragraphs (b) to (e), the International
 Preliminary Examining Authority shall start the international
 preliminary examination when it is in possession of all of the
 following:
 
 (i) the demand;

 (ii) the amount due (in full) for the handling
 fee and the preliminary examination fee, including where
 applicable, the late payment fee under Rule 58
 bis.2 ; and
 

 (iii) either the international search report or
 the declaration by the International Searching Authority
 under Article
 17(2)(a) that no international search
 report will be established, and the written opinion
 established under Rule
 43bis.1 ;
 
 

 

 unless the applicant expressly requests to
 postpone the start of the international preliminary
 examination until the expiration of the applicable time
 limit under Rule 54
 bis.1(a) .
 

 

 
 

 (b) If the national Office or intergovernmental
 organization that acts as International Searching Authority also
 acts as International Preliminary Examining Authority, the
 international preliminary examination may, if that national Office
 or intergovernmental organization so wishes and subject to
 paragraphs (d) and (e), start at the same time as the international
 search.
 

 (b-bis) Where, in accordance with paragraph (b), the
 national Office or intergovernmental organization that acts as both
 International Searching Authority and International Preliminary
 Examining Authority wishes to start the international preliminary
 examination at the same time as the international search and
 considers that all of the conditions referred to in
 Article
 34(2)(c)(i) to (iii) are fulfilled, that
 national Office or intergovernmental organization need not, in its
 capacity as International Searching Authority, establish a written
 opinion under Rule 43
 bis.1 .
 

 (c) Where the statement concerning amendments contains
 an indication that amendments under Article
 19 are to be taken into account (
 Rule
 53.9(a)(i) ), the International Preliminary
 Examining Authority shall not start the international preliminary
 examination before it has received a copy of the amendments
 concerned.
 

 (d) Where the statement concerning amendments contains
 an indication that the start of the international preliminary
 examination is to be postponed ( Rule 53.9(b) ),
 the International Preliminary Examining Authority shall not start
 the international preliminary examination before whichever of the
 following occurs first:
 
 (i) it has received a copy of any amendments
 made under Article
 19 ;
 

 (ii) it has received a notice from the applicant
 that he does not wish to make amendments under
 Article
 19 ; or 
 

 (iii) the expiration of the applicable time limit
 under Rule
 46.1 .
 

 
 

 (e) Where the statement concerning amendments contains
 an indication that amendments under Article
 34 are submitted with the demand (
 Rule 53.9(c) )
 but no such amendments are, in fact, submitted, the International
 Preliminary Examining Authority shall not start the international
 preliminary examination before it has received the amendments or
 before the time limit fixed in the invitation referred to in
 Rule 60.1(g) 
 has expired, whichever occurs first.
 

 
 

 

 
 69.2 Time Limit for International Preliminary
 Examination
 

 The time limit for establishing the international
 preliminary examination report shall be whichever of the following periods
 expires last:
 

 
 (i) 28 months from the priority date; or

 (ii) six months from the time provided under
 Rule 69.1 for
 the start of the international preliminary examination; or
 

 (iii) six months from the date of receipt by the
 International Preliminary Examining Authority of the translation
 furnished under Rule 55.2 .
 

 
 

 

 The time limit for preparing the international preliminary
 examination report is 28 months from the priority date, or 6 months from the time
 provided under PCT
 Rule 69.1 for the start of the international preliminary
 examination, or 6 months from the date of receipt by the International Preliminary
 Examining Authority of the translation furnished under PCT Rule
 55.2 , whichever expires first. This time limit is 27 months
 internally to ensure sufficient time to process, review and mail the report in
 sufficient time to reach the International Bureau by 28 months from the earliest
 priority date.
 

 

 
 1879.02 Transmittal of the International Preliminary Examination
 Report and Related Documents [R-07.2022]
 

 
 PCT Article 36 

 Transmittal, Translation, and
 Communication of the International Preliminary Examination
 Report 

 
 (1) The international preliminary examination report,
 together with the prescribed annexes, shall be transmitted to the
 applicant and to the International Bureau.
 

 
 *****

 

 
 PCT Rule 71 

 Transmittal of the International
 Preliminary Examination Report 

 
 71.1 Recipients

 
 (a) The International Preliminary Examining Authority
 shall, on the same day, transmit one copy of the international
 preliminary examination report and its annexes, if any, to the
 International Bureau, and one copy to the applicant.
 

 (b) The International Preliminary
 Examining Authority shall transmit copies of other documents from
 the file of the international preliminary examination to the
 International Bureau in accordance with the Administrative
 Instructions. 
 

 
 

 
 71.2 Copies of Cited Documents

 
 (a) The request under Article
 36(4) may be presented any time during seven
 years from the international filing date of the international
 application to which the report relates.
 

 (b) The International Preliminary Examining Authority
 may require that the party (applicant or elected Office) presenting
 the request pay to it the cost of preparing and mailing the copies.
 The level of the cost of preparing copies shall be provided for in
 the agreements referred to in Article 32(2) 
 between the International Preliminary Examining Authorities and the
 International Bureau.
 

 (c) [Deleted] 

 (d) Any International Preliminary Examining Authority
 may perform the obligations referred to in paragraphs (a) and (b)
 through another agency responsible to it.
 

 
 

 

 The international preliminary examination report and its annexes,
 if any, are transmitted to the applicant and the International Bureau using a
 Notification of Transmittal of International Preliminary Report on Patentability
 (Form PCT/IPEA/416). Every effort is made to ensure that the transmittal is effected
 in sufficient time to reach the International Bureau before the expiration of the
 time limit set in PCT Rule 69.2 .
 

 AUTHORIZED OFFICER The name of the authorized officer responsible for the
 international preliminary report must be indicated on the Form PCT/IPEA/416.
 

 

 
 1879.03 Translations [R-07.2015]

 
 PCT Article 36 

 Transmittal, Translation, and
 Communication of the International Preliminary Examination
 Report 

 *****

 
 (2) 
 
 (a) The international preliminary examination report
 and its annexes shall be translated into the prescribed
 languages.
 

 (b) Any translation of the said report shall be
 prepared by or under the responsibility of the International
 Bureau, whereas any translation of the said annexes shall be
 prepared by the applicant.
 

 
 

 
 *****

 

 
 PCT Rule 70 

 International Preliminary Report on
 Patentability by the International Preliminary Examining Authority
 (International Preliminary Examination Report) 

 *****

 
 70.17 Languages of the Report and the
 Annexes
 

 

 The report and any annex shall be in the language in which the
 international application to which they relate is published, or, if the
 international preliminary examination is carried out, pursuant to
 Rule
 55.2 , on the basis of a translation of the international
 application, in the language of that translation. 
 

 

 
 PCT Rule 72 

 Translation of the International
 Preliminary Examination Report and of the Written Opinion of the
 International Searching Authority 

 
 72.1 Languages

 
 (a) Any elected State may require that the international
 preliminary examination report, established in any language other
 than the official language, or one of the official languages, of its
 national Office, be translated into English.
 

 (b) Any such requirement shall be notified to the
 International Bureau, which shall promptly publish it in the
 Gazette.
 

 
 

 

 
 72.2 Copy of Translation for the
 Applicant
 

 The International Bureau shall transmit a copy of the
 translation referred to in Rule 72.1(a) of the
 international preliminary examination report to the applicant at the same
 time as it communicates such translation to the interested elected Office or
 Offices.
 

 

 
 72.2 bis Translation of the Written Opinion of the
 International Searching Authority Established under Rule
 43 bis .1
 

 In the case referred to in Rule
 73.2(b)(ii) , the written opinion established by the
 International Searching Authority under Rule 43
 bis.1 shall, upon request of the
 elected Office concerned, be translated into English by or under the
 responsibility of the International Bureau. The International Bureau shall
 transmit a copy of the translation to the elected Office concerned within
 two months from the date of receipt of the request for translation, and
 shall at the same time transmit a copy to the applicant.
 

 

 
 72.3 Observations on the Translation

 The applicant may make written observations as to the
 correctness of the translation of the international preliminary examination
 report or of the written opinion established by the International Searching
 Authority under Rule
 43bis.1 and shall send a copy of
 the observations to each of the interested elected Offices and to the
 International Bureau.
 

 

 

 The written opinion established by the International Searching
 Authority and the international preliminary examination report and any annexes are
 established in Arabic, Chinese, English, French, German, Japanese, Korean,
 Portuguese, Russian or Spanish, if the international application was filed in one of
 those languages or translated into one of those languages. See PCT Rules
 48.3(b) , 55.2 and 70.17 . Each
 elected State may require that the written opinion and/or the report, if it is not
 in (one of) the official language(s) of its national Office, be translated into
 English. See PCT
 Rule 72.1(a) . In that case, the translation of the body of
 the written opinion and/or report is prepared by the International Bureau, which
 transmits copies to the applicant and to each interested elected Office. If any
 elected Office requires a translation of annexes to the report, the preparation and
 furnishing of that translation is the responsibility of the applicant. See
 PCT Article
 36(2)(b) .
 

 The U.S. requires the final report and the annexes thereto to be in
 English. Translation of the annexes for national stage purposes is required pursuant
 to 35 U.S.C.
 371(c)(5) and 37 CFR 1.495(e) . Failure to
 timely provide such translation results in cancellation of the annexes.
 

 

 
 1879.04 Confidential Nature of the Report [R-07.2015]

 
 PCT Article 38 

 Confidential Nature of the
 International Preliminary Examination 

 
 (1) Neither the International Bureau nor the International
 Preliminary Examining Authority shall, unless requested or authorized by
 the applicant, allow access within the meaning, and with the proviso, of
 Article 30(4) to the file of the international
 preliminary examination by any person or authority at any time, except
 by the elected Offices once the international preliminary examination
 report has been established.
 

 (2) Subject to the provisions of paragraph (1) and
 Articles 36(1) and (3) and 37(3)(b) , neither the International Bureau nor
 the International Preliminary Examining Authority shall, unless
 requested or authorized by the applicant, give information on the
 issuance or non-issuance of an international preliminary examination
 report and on the withdrawal or non-withdrawal of the demand or of any
 election.
 

 
 

 

 
 37 CFR 1.11 Files open to the public. 

 
 (a) The specification, drawings, and all papers relating to
 the file of: A published application; a patent; or a statutory invention
 registration are open to inspection by the public, and copies may be
 obtained upon the payment of the fee set forth in § 1.19(b)(2) . If an application was published in
 redacted form pursuant to § 1.217 , the complete
 file wrapper and contents of the patent application will not be
 available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3)
 of § 1.217 have been met in the application; and the
 application is still pending. See § 2.27 of this title for trademark
 files. 
 

 
 *****

 

 
 37 CFR 1.14 Patent applications preserved in confidence. 

 *****

 
 (g) International applications .
 
 (1) Copies of international
 application files for international applications which designate
 the U.S. and which have been published in accordance with
 PCT Article
 21(2) , or copies of a document in such
 application files, will be furnished in accordance with
 PCT Articles
 30 and 38 and PCT Rules
 94.2 and 94.3 , upon written request including a
 showing that the publication of the application has occurred and
 that the U.S. was designated, and upon payment of the
 appropriate fee (see § 1.19(b) ),
 if: 
 
 (i) With respect to the Home Copy (the copy
 of the international application kept by the Office in
 its capacity as the Receiving Office, see
 PCT Article
 12(1) ), the international
 application was filed with the U.S. Receiving
 Office;
 

 (ii) With respect to the Search Copy (the
 copy of an international application kept by the Office
 in its capacity as the International Searching
 Authority, see PCT Article
 12(1) ), the U.S. acted as the
 International Searching Authority, except for the
 written opinion of the International Searching Authority
 which shall not be available until the expiration of
 thirty months from the priority date; or
 

 (iii) With respect to the Examination Copy
 (the copy of an international application kept by the
 Office in its capacity as the International Preliminary
 Examining Authority), the United States acted as the
 International Preliminary Examining Authority, an
 International Preliminary Examination Report has issued,
 and the United States was elected.
 

 
 

 (2) A copy of an English language translation of a
 publication of an international application which has been filed
 in the United States Patent and Trademark Office pursuant to
 35 U.S.C.
 154(d)(4) will be furnished upon written
 request including a showing that the publication of the
 application in accordance with PCT Article
 21(2) has occurred and that the U.S. was
 designated, and upon payment of the appropriate fee (§
 1.19(b)(4) ).
 

 (3) Access to international application files for
 international applications which designate the U.S. and which
 have been published in accordance with PCT Article
 21(2) , or copies of a document in such
 application files, will be permitted in accordance with
 PCT Articles
 30 and 38 and PCT Rules
 44 ter .1, 94.2 and 94.3 , upon written request including a
 showing that the publication of the application has occurred and
 that the U.S. was designated.
 

 (4) In accordance with PCT Article
 30 , copies of an international
 application-as-filed under paragraph (a) of this section will
 not be provided prior to the international publication of the
 application pursuant to PCT Article
 21(2) . 
 

 (5) Access to international application files under
 paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this
 section will not be permitted with respect to the Examination
 Copy in accordance with PCT Article
 38 . 
 

 
 

 
 *****

 
 (i) Access or copies in other circumstances. The Office,
 either sua sponte or on petition, may also provide
 access or copies of all or part of an application if necessary to carry
 out an Act of Congress or if warranted by other special circumstances.
 Any petition by a member of the public seeking access to, or copies of,
 all or part of any pending or abandoned application preserved in
 confidence pursuant to paragraph (a) of this section, or any related
 papers, must include:
 
 (1) The fee set forth in § 1.17(g) ; and
 

 (2) A showing that access to the application is
 necessary to carry out an Act of Congress or that special
 circumstances exist which warrant petitioner being granted
 access to all or part of the application.
 

 
 

 
 

 For a discussion of the availability of copies of documents from
 international application files and/or access to international application files,
 see MPEP
 § 110 .
 

 

 [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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