MPEP § 1859 — MPEP § 1859
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1800 

 Section 1859 
 

 
 
 
 
 
 1859 Withdrawal of International Application, Designations, or
 Priority Claims [R-10.2019]
 

 
 PCT Rule 90bis 

 Withdrawals 

 
 90 bis .1 Withdrawal of the International
 Application
 

 

 
 (a) The applicant may withdraw the international application at
 any time prior to the expiration of 30 months from the priority date.
 

 (b) Withdrawal shall be effective on receipt of a notice
 addressed by the applicant, at his option, to the International Bureau, to
 the receiving Office or, where Article 39(1) applies,
 to the International Preliminary Examining Authority.
 

 (c) No international publication of the international
 application shall be effected if the notice of withdrawal sent by the
 applicant or transmitted by the receiving Office or the International
 Preliminary Examining Authority reaches the International Bureau before the
 technical preparations for international publication have been
 completed.
 

 
 

 
 90 bis .2 Withdrawal of Designations
 

 

 
 (a) The applicant may withdraw the designation of any
 designated State at any time prior to the expiration of 30 months from the
 priority date. Withdrawal of the designation of a State which has been
 elected shall entail withdrawal of the corresponding election under
 Rule
 90bis.4 . 
 

 (b) Where a State has been designated for the purpose of
 obtaining both a national patent and a regional patent, withdrawal of the
 designation of that State shall be taken to mean withdrawal of only the
 designation for the purpose of obtaining a national patent, except where
 otherwise indicated.
 

 (c) Withdrawal of the designations of all designated States
 shall be treated as withdrawal of the international application under
 Rule
 90 bis.1 .
 

 (d) Withdrawal shall be effective on receipt of a notice
 addressed by the applicant, at his option, to the International Bureau, to
 the receiving Office or, where Article 39(1) applies,
 to the International Preliminary Examining Authority.
 

 (e) No international publication of the designation shall be
 effected if the notice of withdrawal sent by the applicant or transmitted by
 the receiving Office or the International Preliminary Examining Authority
 reaches the International Bureau before the technical preparations for
 international publication have been completed.
 

 
 
 90 bis .3 Withdrawal of Priority Claims
 

 

 
 (a) The applicant may withdraw a priority claim, made in the
 international application under Article 8(1) , at any
 time prior to the expiration of 30 months from the priority date.
 

 (b) Where the international application contains more than one
 priority claim, the applicant may exercise the right provided for in
 paragraph (a) in respect of one or more or all of the priority claims.
 

 (c) Withdrawal shall be effective on receipt of a notice
 addressed by the applicant, at his option, to the International Bureau, to
 the receiving Office or, where Article 39(1) applies,
 to the International Preliminary Examining Authority.
 

 (d) Where the withdrawal of a priority claim causes a change in
 the priority date, any time limit which is computed from the original
 priority date and which has not already expired shall, subject to paragraph
 (e), be computed from the priority date resulting from that change.
 

 (e) In the case of the time limit referred to in
 Article 21(2)(a) , the International Bureau may
 nevertheless proceed with the international publication on the basis of the
 said time limit as computed from the original priority date if the notice of
 withdrawal sent by the applicant or transmitted by the receiving Office or
 the International Preliminary Examining Authority reaches the International
 Bureau after the completion of the technical preparations for international
 publication.
 

 
 *****

 
 90 bis .5 Signature
 

 

 
 Any notice of withdrawal referred to in Rules
 90bis.1 to 90bis.4 shall be signed by the
 applicant or, if there are two or more applicants, by all of them. An
 applicant who is considered to be the common representative under
 Rule
 90.2(b) shall not be entitled to sign such a notice
 on behalf of the other applicants.
 

 
 

 
 90 bis .6 Effect of Withdrawal
 

 

 
 (a) Withdrawal under Rule
 90bis of the international
 application, any designation, any priority claim, the demand or any election
 shall have no effect in any designated or elected Office where the
 processing or examination of the international application has already
 started under Article 23(2) or
 Article 40(2) . 
 

 (b) Where the international application is withdrawn under
 Rule
 90bis.1 , the international
 processing of the international application shall be discontinued.
 

 (c) Where the demand or all elections are withdrawn under
 Rule
 90bis.4 , the processing of the
 international application by the International Preliminary Examining
 Authority shall be discontinued.
 

 
 

 
 90 bis .7 Faculty Under Article 37(4)(b)
 

 

 
 (a) Any Contracting State whose national law provides for what
 is described in the second part of Article 37(4)(b) shall
 notify the International Bureau in writing.
 

 (b) The notification referred to in paragraph (a) shall be
 promptly published by the International Bureau in the Gazette, and shall
 have effect in respect of international applications filed more than one
 month after the date of such publication.
 

 
 

 For a discussion of the withdrawal of the demand or of elections (
 PCT Rule
 90bis.4 ), see MPEP § 1880 . 
 

 Form PCT/IB/372 may be used by the applicant to make a withdrawal under
 any of PCT Rules
 90bis.1 , 90bis.2 , 90bis.3 , and
 90bis.4 . The form is available from
 WIPO’s website ( www.wipo.int/pct/
 en/forms/ ).
 

 The applicant may withdraw the international application, the
 designation of any state, or a priority claim by a notice addressed to the International
 Bureau or to the receiving Office and received before the expiration of 30 months from
 the priority date. Where Article 39(1) applies, the notice may also be addressed to the
 International Preliminary Examining Authority. Any such withdrawal is free of charge. A
 notice of withdrawal must be signed by all the applicants. The provisions for waiver of
 a power of attorney set forth in PCT Rules 90.4(d) and
 90.5(c) do not apply in the case of withdrawals under
 PCT Rule
 90bis. An appointed agent or appointed
 common representative may sign such a notice on behalf of the applicant or applicants
 who appointed him, but an applicant who is considered to be the common representative
 may not sign such a notice on behalf of the other applicants. For international
 applications filed prior to January 1, 2013, please see the version of PCT Rule
 90bis.5 in effect at that time.
 

 The applicant may prevent international publication by withdrawing the
 international application, provided that the notice of withdrawal reaches the
 International Bureau before the completion of technical preparations for that
 publication. The notice of withdrawal may state that the withdrawal is to be effective
 only on the condition that international publication can still be prevented. In such a
 case the withdrawal is not effective if the condition on which it was made cannot be met
 - i.e., if the technical preparations for international publication have already been
 completed.
 

 If all designations are withdrawn, the international application will be
 treated as withdrawn.
 

 Where the withdrawal of a priority claim causes a change in the priority
 date of the international application, any time limit which is computed from the
 original priority date and which has not yet expired—for example, the time limit before
 which processing in the national phase cannot start—is computed from the priority date
 resulting from the change. (It is not possible to extend the time limit concerned if it
 has already expired when the priority claim is withdrawn.) Thus, international
 publication may be postponed by withdrawing the priority claim prior to publication.
 However, if the notice of withdrawal reaches the International Bureau after the
 completion of the technical preparations for international publication, the
 International Bureau may proceed with the international publication on the basis of the
 time limit for international publication as computed from the original priority
 date.
 

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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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 03/09/2026 20:49:29