MPEP § 1860 — MPEP § 1860
Current through: 2022-07-01

1860-International Preliminary Examination Procedure 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1800 

 Section 1860 
 

 
 
 
 
 
 1860 International Preliminary Examination Procedure [R-01.2024]
 I. EXAMINATION PROCEDURE The international preliminary examination is to be carried out in
 accordance with PCT Article 34 and PCT Rule 66 . After the demand
 is checked for compliance with PCT Rules 53 -
 55 , 57 and 58 , the first
 step of the examiner is to study the description, the drawings (if any), the claims
 of the international application, the documents describing the prior art as cited in
 the international search report, and the written opinion established by the
 International Searching Authority. Furthermore, the examiner shall search at least
 to the point of bringing the previous search up to date and any new prior art
 discovered and applied must be made of record. See PCT Rule
 66.1ter .
 

 A further written opinion is usually not mandatory where the written
 opinion of the International Searching Authority is treated as the first written
 opinion of the International Preliminary Examining Authority. The United States
 International Preliminary Examining Authority will treat any written opinion of the
 International Searching Authority established by the USPTO, EPO, KIPO, IP Australia,
 ILPO, JPO, or IPOS as the first written opinion of the International Preliminary
 Examining Authority.
 

 Assuming the written opinion of the International Searching
 Authority is treated as the first written opinion of the International Preliminary
 Examining Authority, as noted above, no further written opinion need be issued
 before the international preliminary examination report, even if there are
 objections outstanding. The examiner takes into consideration any comments or
 amendments made by the applicant when establishing the international preliminary
 examination report.
 

 II. FURTHER WRITTEN OPINION SHOULD BE ISSUED A further written opinion should be prepared by the examiner if
 applicant files a response which includes a persuasive argument that the written
 opinion issued by the International Searching Authority was improper because of a
 negative opinion with respect to a lack of novelty, inventive step (non-obviousness)
 or industrial applicability as described in PCT Article 33(2) - (4) ; and
 which results in the examiner considering any of the claims to lack novelty,
 inventive step (non-obviousness) or industrial applicability as described in
 PCT Article
 33(2) - (4) based on new art not necessitated by any
 amendment.
 

 Any further written opinion established by the International
 Preliminary Examining Authority should set forth, as applicable:
 

 
 (A) Any defects in the international application as described
 in PCT
 Article 34(4) concerning subject matter which is not
 required to be examined or which is unclear or inadequately supported;
 

 (B) Any 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) ;
 

 (C) Any defects in the form or contents of the international
 application;
 

 (D) Any finding by the examiner that an amendment goes beyond
 the disclosure in the international application as originally filed;
 

 (E) Any observation which the examiner wishes to make on the
 clarity of the claims, the description, the drawings or to the question
 whether the claims are fully supported by the description ( PCT Rule
 66.2 ); 
 

 (F) Any decision by the examiner not to carry out the
 international preliminary examination on a claim for which no international
 search report was issued; or
 

 (G) If the examiner considers that no acceptable nucleotide
 and/or amino acid sequence listing is available in a form that would allow a
 meaningful international preliminary examination to be carried out.
 

 
 The further written opinion is prepared on Form PCT/IPEA/408 to
 notify applicant of the defects found in the international application. The examiner
 is further required to fully state the reasons for the opinion ( PCT Rule
 66.2(b) ) and invite a written reply, with amendments where
 appropriate ( PCT
 Rule 66.2(c) ), normally setting a 2 month time limit for the
 reply. 
 

 The applicant may reply to the invitation by making amendments or,
 if applicant disagrees with the opinion of the examiner, by submitting arguments, as
 the case may be, or both.
 

 The U.S. Rules of Practice pertaining to international preliminary
 examination of international applications permit a second written opinion in those
 cases where sufficient time is available. Normally only one written opinion will be
 issued. Any reply received after the expiration of the set time limit will not
 normally be considered in preparing the international preliminary examination
 report. In situations, however, where the examiner has requested an amendment or
 where a later amendment places the application in better condition for examination,
 the amendment may be considered by the examiner.
 

 If the applicant does not reply to any further written opinion
 established by the International Preliminary Examining Authority within the set time
 period, the international preliminary examination report will be prepared after
 expiration of the time limit plus sufficient time to have any reply clear the Mail
 Center.
 

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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 20:49:29