MPEP § 1864 — MPEP § 1864
Current through: 2022-07-01

1864-The Demand and Preparation for Filing of Demand 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1800 

 Section 1864 
 

 
 
 
 
 
 1864 The Demand and Preparation for Filing of Demand [R-07.2015]

 
 37 CFR 1.480 Demand for international preliminary examination. 

 
 (a) On the filing of a proper Demand in an application for
 which the United States International Preliminary Examining Authority is
 competent and for which the fees have been paid, the international
 application shall be the subject of an international preliminary
 examination. The preliminary examination fee (§ 1.482(a)(1) ) and the handling fee (§
 1.482(b) ) shall be due within the applicable time
 limit set forth in PCT Rule 57.3 . 
 

 (b) The Demand shall be made on a standardized form
 ( PCT
 Rule 53 ). Copies of the printed Demand forms are
 available from the United States Patent and Trademark Office. Letters
 requesting printed Demand forms should be marked “Mail Stop PCT.”
 

 (c) Withdrawal of a proper Demand prior to the start of the
 international preliminary examination will entitle applicant to a refund of
 the preliminary examination fee minus the amount of the transmittal fee set
 forth in § 1.445(a)(1) .
 

 (d) The filing of a Demand shall constitute the election of all
 Contracting States which are designated and are bound by Chapter II of the
 Treaty on the international filing date ( PCT Rule 53.7 ).
 

 (e) Any Demand filed after the expiration of the applicable
 time limit set forth in PCT Rule
 54bis.1(a) shall be considered as
 if it had not been submitted ( PCT Rule 54
 bis.1(b) ).
 

 
 

 Once applicant has filed an international application under Chapter I
 of the PCT, applicant has the right to file a demand for preliminary examination under
 Chapter II of the Treaty. The use of the term “Demand” distinguishes Chapter II from the
 “Request” under Chapter I. It is not possible to file a demand unless a proper Chapter I
 “Request” for an international application has been filed. Chapter I affords applicant
 the benefit of an international search, which includes an international search report
 and a written opinion established by the International Searching Authority. The filing
 of a demand affords applicant examination of the application and allows applicant to
 file amendments to the description, claims and drawings to correct any defects, respond
 to any observations, or address negative findings with respect to any of the claims
 because of a lack of novelty, inventive step (non-obviousness) or industrial
 applicability as described in PCT Article 33(2) - (4) mentioned
 in the written opinion (Form PCT/ISA/237) established by the International Searching
 Authority. Thus, examination enables applicant to attempt to obtain a positive
 international preliminary examination report, which in some elected Offices is used as a
 basis for the issuance of a patent or acceleration programs, e.g., Patent Prosecution
 Highway.
 

 The demand should be filed on Form PCT/IPEA/401 along with the fee
 calculation sheet. The form is available free of charge on WIPO’s website at
 www.wipo.int/pct/en/forms/index.html .
 

 
 1864.01 Amendments Filed Under PCT Article 34 [R-07.2015]

 
 PCT Article 34 

 Procedure Before the International
 Preliminary Examining Authority 

 *****

 
 (2) 
 
 *****

 (b) The applicant shall have a right to amend the
 claims, the description, and the drawings, in the prescribed
 manner and within the prescribed time limit, before the
 international preliminary examination report is established. The
 amendment shall not go beyond the disclosure in the
 international application as filed.
 

 
 

 
 *****

 

 
 PCT Rule 66 

 Procedure Before the International
 Preliminary Examining Authority 

 *****

 
 66.8 Form of Amendments

 
 (a) Subject to paragraph (b) when amending the
 description or the drawings, the applicant shall be required to
 submit a replacement sheet for every sheet of the international
 application which, on account of an amendment, differs from the
 sheet previously filed. The replacement sheet or sheets shall be
 accompanied by a letter which shall draw attention to the
 differences between the replaced sheets and the replacement sheets,
 shall indicate the basis for the amendment in the application as
 filed and shall preferably also explain the reasons for the
 amendment.
 

 (b) Where the amendment consists in the deletion of
 passages or in minor alterations or additions, the replacement
 sheet referred to in paragraph (a) may be a copy of the relevant
 sheet of the international application containing the alterations or
 additions, provided that the clarity and direct reproducibility of
 that sheet are not adversely affected. To the extent that any
 amendment results in the cancellation of an entire sheet, that
 amendment shall be communicated in a letter which shall preferably
 also explain the reasons for the amendment.
 

 (c) When amending the claims,
 Rule 46.5 shall
 apply mutatis mutandis . The set of claims
 submitted under Rule 46.5 as
 applicable by virtue of this paragraph shall replace all the claims
 originally filed or previously amended under Articles
 19 or 34 , as the case
 may be.
 

 
 *****

 

 

 
 37 CFR 1.485 Amendments by applicant during international preliminary
 examination. 

 The applicant may make amendments at the time of
 filing the Demand. The applicant may also make amendments within the time limit
 set by the International Preliminary Examining Authority for reply to any
 notification under § 1.484(b) or to any written
 opinion. Any such amendments must be made in accordance with PCT Rule
 66.8 .
 

 

 Under PCT Article 34(2)(b) , the
 applicant has a right to amend the claims, the description, and the drawings in the
 application before the International Preliminary Examining Authority (IPEA) before
 the international preliminary examination report is established. The amendment may
 be filed with the demand ( PCT Article 34 ), within the
 period for reply to the written opinion of the International Searching Authority
 (ISA), or within the period for reply to the written opinion of the IPEA. 
 

 See MPEP § 1871 regarding the processing of amendments filed
 prior to or at the start of international preliminary examination. See
 MPEP §
 1878.02 regarding amendments filed in reply to the
 written opinion of the ISA or IPEA.
 

 The applicant must submit a replacement sheet for
 every sheet which, on account of an amendment, differs from the sheet previously
 filed. The amendment must be submitted with an accompanying letter which explains
 the difference between the replaced sheet and the replacement sheet and which
 preferably explains the reasons for the amendment. In addition, the letter must
 indicate the basis for the amendment in the application. The basis for the amendment
 must always refer to the application (description, claims, drawings) as originally
 filed, even if multiple amendments were made during the international phase. When
 filing amendments to the claims, a complete set of claims in replacement of the
 claims as originally filed (or previously amended under Article 19 )
 shall be submitted. For an example of how the basis for the amendment should be
 indicated, see MPEP §
 1853 . Where the amendment consists in the deletion of
 passages or in minor alterations or additions, the alterations or additions may be
 made on a copy of the relevant sheet of the international application, provided that
 the clarity and direct reproducibility of that sheet are not adversely affected. No
 replacement sheet is required where the amendment results in the cancellation of an
 entire sheet; such an amendment may be communicated in a letter which preferably
 explains the reasons for the amendment.
 

 Where the international application was not filed in
 the language of publication, any amendments under Article 34 
 and any accompanying letter (as well as any letter accompanying Article 19 
 amendments) must be in the language of publication. Where the international
 preliminary examination is carried out on the basis of a translation of the
 international application, any amendments under Article 34 and any amendments
 under Article
 19 , which are to be taken into account, and any accompanying
 letter must be in the language of that translation. Where such amendments have been
 or are filed in another language, a translation of the amendments into the language
 in which the international preliminary examination is carried out must also be
 furnished. No fee is payable in respect of filing any amendments under
 Article
 34(2)(b) . If the amendments or accompanying letter are not in
 the required language, the International Preliminary Examining Authority will invite
 the applicant to furnish them within a reasonable time limit. If the applicant fails
 to furnish the amendments and/or the accompanying letter within the time limit set
 in the invitation, the International Preliminary Examining Authority shall not take
 such amendments into account for the purposes of the international preliminary
 examination.
 

 

 
 1864.02 Applicant’s Right To File a Demand [R-07.2015]

 
 PCT Article 31 

 Demand for International Preliminary
 Examination 

 *****

 
 (2) 
 
 (a) Any applicant who is a resident or national, as
 defined in the Regulations, of a Contracting State bound by
 Chapter II, and whose international application has been filed
 with the receiving Office of or acting for such State, may make
 a demand for international preliminary examination.
 

 
 

 
 *****

 

 
 PCT Rule 54 

 The Applicant Entitled to Make a
 Demand 

 
 54.1 Residence and Nationality

 

 
 (a) Subject to the provisions of paragraph (b), the
 residence or nationality of the applicant shall, for the purposes of
 Article 31(2) , be determined according to
 Rule 18.1(a) and (b) .
 

 (b) The International Preliminary Examining Authority shall,
 in the circumstances specified in the Administrative Instructions,
 request the receiving Office or, where the international application was
 filed with the International Bureau as receiving Office, the national
 Office of, or acting for, the Contracting State concerned to decide the
 question whether the applicant is a resident or national of the
 Contracting State of which he claims to be a resident or national. The
 International Preliminary Examining Authority shall inform the applicant
 of any such request. The applicant shall have an opportunity to submit
 arguments directly to the Office concerned. The Office concerned shall
 decide the said question promptly.
 

 
 

 
 54.2 Right to Make a Demand

 The right to make a demand under Article
 31(2) shall exist if the applicant making the demand
 or, if there are two or more applicants, at least one of them is a resident
 or national of a Contracting State bound by Chapter II and the international
 application has been filed with a receiving Office of or acting for a
 Contracting State bound by Chapter II.
 

 

 
 54.3 International Applications Filed with the
 International Bureau as Receiving Office
 

 Where the international application is filed with the
 International Bureau as receiving Office under Rule
 19.1(a)(iii) , the International Bureau shall, for the
 purposes of Article 31(2)(a) , be
 considered to be acting for the Contracting State of which the applicant is
 a resident or national.
 

 

 
 54.4 Applicant Not Entitled to Make a
 Demand
 

 If the applicant does not have the right to make a demand
 or, in the case of two or more applicants, if none of them has the right to
 make a demand under Rule 54.2 , the demand
 shall be considered not to have been submitted.
 

 

 

 If there is a sole applicant, he or she must be a resident or
 national of a Contracting State bound by Chapter II of the PCT. If there are two or
 more applicants, it is sufficient that one of them be a resident or national of a
 Contracting State bound by Chapter II, regardless of the elected State(s) for which
 each applicant is indicated. Only applicants for the elected States are required to
 be indicated in the Demand. The detailed requirements for the various indications
 required in connection with each applicant (name and address, telephone number,
 facsimile machine number, nationality and residence) are the same as those required
 under PCT Rule
 4 in connection with the Request. Note that any inventor who
 is not also an applicant is not indicated in the Demand.
 

 If the recording of a change in the name or person has been
 requested under PCT Rule 92bis.1 before the Demand was
 filed, it is the applicant(s) of record at the time when the Demand is filed who
 must be indicated in the Demand.
 

 

 
 1864.03 States Which May Be Elected [R-07.2015]

 
 PCT Article 31 

 Demand for International Preliminary
 Examination 

 *****

 
 (4) 
 
 (a) The demand shall indicate the Contracting State
 or States in which the applicant intends to use the results of
 the international preliminary examination (“elected States”).
 Additional Contracting States may be elected later. Election may
 relate only to Contracting States already designated under
 Article 4 .
 
 

 (b) Applicants referred to in paragraph (2)(a) may
 elect any Contracting State bound by Chapter II. Applicants
 referred to in paragraph (2)(b) may elect only such Contracting
 States bound by Chapter II as have declared that they are
 prepared to be elected by such applicants.
 

 
 

 
 *****

 

 The filing of a demand shall constitute the election of all
 Contracting States which are designated and are bound by Chapter II of the Treaty on
 the international filing date ( PCT Rule 53.7 ). For demands
 filed before January 1, 2004, only those eligible states pursuant to
 PCT Article
 31 indicated as being elected are elected. Only PCT member
 states which have ratified or acceded to Chapter II and which were designated in the
 Request may be elected under Chapter II. The Assembly has taken no action to allow
 persons who are residents or nationals of a State not party to the PCT or not bound
 by Chapter II to make a Demand under Article 31(2)(b) . 
 

 

 
 1864.04 Agent’s Right To Act [R-08.2012]

 Any agent entitled to practice before the receiving Office where
 the international application was filed may represent the applicant before the
 international authorities ( PCT Article 49 ). 
 

 If for any reason, the examiner needs to question the right of an
 attorney or agent to practice before the International Preliminary Examining
 Authority (IPEA), the USPTO roster of registered attorneys and agents should be
 consulted. If the international application was filed with a receiving Office other
 than the United States, Form PCT/IPEA/410 may be used by the requesting IPEA to ask
 the receiving Office with which the international application was filed, whether the
 agent named in the international application has the right to practice before that
 Office. 
 

 The PCT Article and Regulations governing the right to practice are
 PCT Article
 49 and PCT Rule 83 . 
 

 

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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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 Last Modified: 
 
 03/09/2026 20:50:37