This chapter is designed to be a guide for patent examiners in searching and examining applications filed under the Patent Cooperation Treaty (PCT). Applicants desiring additional information for filing international applications should obtain a copy of the PCT Applicant’s Guide from the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
The Articles and Regulations under the PCT are reproduced in Appendix T of this Manual and the Administrative Instructions are reproduced in Appendix AI of this Manual. The text of the PCT Applicant’s Guide, the monthly PCT Newsletter, the weekly PCT Gazette, downloadable PCT forms, and additional information about the processing of international applications are available from WIPO’s website (www.wipo.int ).
PCT applications are processed by the Office of PCT Operations within the U.S. Patent and Trademark Office.
The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, "an international application," in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in as many Contracting States to the PCT as the applicant "designates," i.e., names, as countries or regions in which patent protection is desired. The filing of an international application will automatically constitute the designation of all contracting countries to the PCT on that filing date. In the same manner, the PCT enables foreign applicants to file a PCT international application, designating the United States of America, in their home language in their home patent office and have the application acknowledged as a regular U.S. national filing. The PCT also provides for the establishment of an international search report and written opinion at 16 months from the priority date and publication of the international application after 18 months from the priority date. Upon payment of national fees and the furnishing of any required translation, usually 30 months after the filing of any priority application for the invention, or the international filing date if no priority is claimed, the application will be subjected to national procedures for granting of patents in each of the designated countries. For any countries remaining whose national laws are not compatible with the 30 month period set forth in PCT Article 22(1), the filing of a demand for an international preliminary examination electing such countries within 19 months from the priority date will result in an extension of the period for entering the national stage to 30 months from the priority date. An up-to-date list of such countries may be found on WIPO’s website (www.wipo.int/ pct/en/texts/reservations/res_incomp.html ). See also subsection V. below. A brief description of the basic flow under the PCT is provided in MPEP § 1842.
The PCT offers an alternative route to filing patent applications directly in the patent offices of those countries which are Contracting States of the PCT. It does not preclude taking advantage of the priority rights and other advantages provided under the Paris Convention and the WTO administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement). The PCT provides an additional and optional foreign filing route to patent applicants.
The filing, search and publication procedures are provided for in Chapter I of the PCT. Additional procedures for a preliminary examination of PCT international applications are provided for in optional PCT Chapter II.
In most instances, a national U.S. application is filed first. An international application for the same subject matter will then be filed subsequently within the priority year provided by the Paris Convention and the priority benefit of the U.S. national application filing date will be claimed.
The international application (IA) must be filed in the prescribed receiving Office (RO)(PCT Article 10 ). The United States Patent and Trademark Office will act as a receiving Office for United States residents and nationals (35 U.S.C. 361(a) ). Under PCT Rule 19.1(a)(iii), the International Bureau of the World Intellectual Property Organization will also act as a Receiving Office for U.S. residents and nationals. The receiving Office functions as the filing and formalities review organization for international applications. International applications must contain upon filing the designation of at least one Contracting State in which patent protection is desired and must meet certain standards for completeness and formality (PCT Articles 11(1) and 14(1) ).
Where a priority claim is made, the date of the earliest-filed application whose priority is claimed is used as the date for determining the timing of international processing, including the various transmittals, the payment of certain international and national fees, and publication of the application. Where no priority claim is made, the international filing date will be considered to be the "priority date" for timing purposes (PCT Article 2(xi) ).
The international application is subject to the payment of certain fees within 1 month from the date of receipt. See PCT Rules 14.1(c), 15.3, and 16.1(f). The receiving Office will grant an international filing date to the application, collect fees, handle informalities by direct communication with the applicant, and monitor all corrections (35 U.S.C. 361(d) ). By 13 months from the priority date, the receiving Office should prepare and transmit a copy of the international application, called the search copy (SC), to the International Searching Authority (ISA); and forward the original, called the record copy (RC), to the International Bureau (IB) (PCT Rules 22.1 and 23 ). A second copy of the international application, the home copy (HC), remains in the receiving Office (PCT Article 12(1) ). Once the receiving Office has transmitted copies of the application, the International Searching Authority becomes the focus of international processing.
The basic functions of the International Searching Authority (ISA) are to conduct a prior art search of inventions claimed in international applications (it does this by searching in at least the minimum documentation defined by the Treaty (PCT Articles 15 and 16 and PCT Rule 34 )) and to issue a written opinion (PCT Rule 43bis ) which will normally be considered to be the first written opinion of the International Preliminary Examining Authority where international preliminary examination is demanded. See PCT Rule 66.1bis.
For most applications filed with the United States Receiving Office, the applicant may choose (in the Request form) the U.S. Patent and Trademark Office, the European Patent Office, the Korean Intellectual Property Office, the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), the Japan Patent Office (JPO), or the Intellectual Property Office of Singapore (IPOS) to act as the International Searching Authority. However, IP Australia and JPO may not be competent to act as an International Searching Authority for certain applications filed by nationals or residents of the United States. See MPEP §§ 1840.01 - 1840.07. The International Searching Authority is also responsible for checking the content of the title and abstract (PCT Rules 37.2 and 38.2 ).
An international search report (ISR) and written opinion will normally be issued by the International Searching Authority within 3 months from the receipt of the search copy (usually about 16 months after the priority date) (PCT Rule 42 ). Copies of the international search report and prior art cited will be made available to the applicant by the ISA (PCT Rules 43 and 44.1 ). The international search report will contain a listing of documents found to be relevant and will identify the claims in the application to which they are pertinent. The written opinion indicates whether each claim appears to satisfy the PCT Article 33 criteria of "novelty," "inventive step," and "industrial applicability." The written opinion may also indicate defects in the form or content of the international application under the PCT articles and regulations, as well as any observations the ISA wishes to make on the clarity of the claims, the description, and the drawings, or on the question of whether the claims are fully supported by the description.
Once the international search report and written opinion are established, the ISA transmits one copy of each to the applicant and the International Bureau, and international processing continues before the International Bureau. If a Demand for Chapter II examination is not timely filed, the International Bureau communicates a copy of the written opinion established by the ISA (retitled International Preliminary Report on Patentability (Chapter I of the PCT)) to each designated Office after the expiration of 30 months from the priority date.
The basic functions of the International Bureau (IB) are to maintain the master file of all international applications and to act as the publisher and central coordinating body under the Treaty. The World Intellectual Property Organization (WIPO) in Geneva, Switzerland performs the duties of the International Bureau.
If the applicant has not filed a certified copy of the priority document in the receiving Office with the international application, requested upon filing that the receiving Office prepare and transmit to the International Bureau a copy of the prior U.S. national application, the priority of which is claimed, or requested the International Bureau to obtain a copy of the earlier application from a digital library, the applicant must submit such a document directly to the International Bureau or the receiving Office not later than 16 months after the priority date (PCT Rule 17 ). The request (Form PCT/RO/101) contains a box which can be checked requesting the receiving Office to prepare and transmit a copy of a prior application. This is only possible, of course, if the receiving Office is a part of the same national Office where the priority application was filed. The request (Form PCT/RO/101) also contains a box which can be checked requesting the International Bureau to obtain a copy of the earlier application from a digital library. This is only possible if the application is registered in a digital library, made available to the International Bureau within the prescribed time limit, as set forth in PCT Rule 17.1(b-bis), and the access code is furnished to the International Bureau.
The applicant has normally 2 months from the date of transmittal of the international search report to amend the claims by filing an amendment and may file a brief statement explaining the amendment directly with the International Bureau (PCT Article 19 and PCT Rule 46 ). The International Bureau will then normally publish the international application along with the search report and any amended claims at the expiration of 18 months from the priority date (PCT Article 21 ). For applications filed before July 1, 2014, former PCT Rule 44ter provided that the written opinion of the ISA would not be made publicly available until the expiration of 30 months from the priority date. For applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant are made available to the public in their original language as of the publication date. The international publication includes a front page containing bibliographical data, the abstract, and a figure of the drawing (PCT Rule 48 ). The publication also contains the search report and any amendments to the claims submitted by the applicant. If the application is published in a language other than English, the search report and abstract are also published in English. The International Bureau publishes a PCT Gazette in the French and English languages which contains information similar to that on the front pages of published international applications, as well as various indexes and announcements (PCT Rule 86 ). The International Bureau also communicates copies of the publication of the international application to all designated Offices that have requested to receive the publication (PCT Article 20, PCT Rule 47, and PCT Rule 93bis.1).
The designated Office is the national Office (for example, the USPTO) acting for the state or region designated under Chapter I. Similarly, the elected Office is the national Office acting for the state or region elected under Chapter II.
PCT Article 22(1) was amended, effective April 1, 2002, to specify that a copy of the international application, a translation thereof (as prescribed), and the national fee are due to the designated Office not later than at the expiration of 30 months from the priority date. Accordingly, the time period for filing the copy of the international application, the translation, and the fee under PCT Article 22 is the same as the 30 month time period set forth in PCT Article 39. The USPTO has adopted the 30 month time limit set forth in PCT Article 22(1). Most Contracting States have changed their national laws for consistency with PCT Article 22(1) as amended. An up-to-date listing of Contracting States that have adopted Article 22(1) as amended is maintained at WIPO’s website at www.wipo.int/pct/en/texts/ time_limits.html. At the time of publication of this Chapter, only two countries have not adopted Article 22(1) as amended: Luxembourg (LU) and the United Republic of Tanzania (TZ). It is noted that Luxembourg is included in the regional designation "EPO" and that the United Republic of Tanzania is included in the regional designation "ARIPO." For those two remaining Contracting States that have not adopted Article 22(1) as amended, if no "Demand" for international preliminary examination has been filed within 19 months of the priority date, the applicant may be required to complete the requirements for entering the national stage within 20 months from the priority date of the international application in the national offices of those states. When entering the national stage following Chapter I or Chapter II, the applicant has the right to amend the application within the time limit set forth in PCT Rule 52.1 or PCT Rule 78.1, respectively. After this time limit has expired (PCT Article 28 or PCT Article 41 and PCT Rule 52 or PCT Rule 78 ), each designated/elected Office will make its own determination as to the patentability of the application based upon its own specific national or regional laws (PCT Article 27(5) ).
If the applicant desires to obtain the benefit of delaying the entry into the national stage until 30 months from the priority date in one or more countries where the 30 month time limit set forth in PCT Article 22(1) as amended does not apply, a Demand for international preliminary examination must be filed with an appropriate International Preliminary Examining Authority (IPEA) within 19 months of the priority date.
Those states in which the Chapter II procedure is desired must be "elected" in the Demand.
PCT Rule 54bis.1 requires the Demand to be made prior to the expiration of whichever of the following periods expires later:
However, applicant may desire to file the Demand by 19 months from the priority date to extend the national stage entry deadline in Luxembourg and the United Republic of Tanzania.
The original Demand is forwarded to the International Bureau by the IPEA. The International Bureau then notifies the various elected Offices that the applicant has entered Chapter II and sends a copy of any amendments filed under PCT Article 19 and any statement explaining the amendments and the basis for the amendments to the IPEA. See PCT Rule 62. The International Bureau also sends the IPEA a copy of the written opinion established by the International Searching Authority (ISA) unless the ISA is also acting as the IPEA. See PCT Rule 62.1(i).
The International Preliminary Examining Authority (IPEA) normally starts the examination process when it is in possession of:
The IPEA shall start the international preliminary examination upon receipt of the above materials unless the applicant expressly requests to postpone the start of the international preliminary examination until the expiration of the later of three months from the transmittal of the international search report (or declaration that no international search report will be established) and written opinion; or the expiration of 22 months from the priority date, with the exception of the situations provided for in PCT Rule 69.1(b) - (e).
The written opinion of the ISA is usually considered the first written opinion of the IPEA unless the IPEA has notified the International Bureau that written opinions established by specified International Searching Authorities shall not be considered a written opinion for this purpose. See PCT Rule 66.1bis. Also, the IPEA may, at its discretion, issue further written opinions provided sufficient time is available. See PCT Rule 66.4.
The IPEA establishes the international preliminary examination report (entitled "international preliminary report on patentability"), which presents the examiner’s final position as to whether each claim is "novel," involves "inventive step," and is "industrially applicable" by 28 months from the priority date. A copy of the international preliminary examination report is sent to the applicant and to the International Bureau. The International Bureau then communicates a copy of the international preliminary examination report to each elected Office.
The applicant must complete the requirements for entering the national stage by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application as to that elected Office; however, some elected Offices provide a longer period to complete the requirements.
A listing of all national and regional offices, and the corresponding time limits for entering the national stage after PCT Chapter I and PCT Chapter II, may be found on WIPO’s website at: www.wipo.int/pct/en/texts/time_limits.html.
The PCT contains definitions in PCT Article 2 and in PCT Rule 2, which are found in MPEP Appendix T. Additional definitions are in 35 U.S.C. 351, found in MPEP Appendix L, in 37 CFR 1.9 and 1.401, found in MPEP Appendix R, and in PCT Administrative Instructions Section 101, found in MPEP Appendix AI.
The United States of America had originally declared that it was not bound by Chapter II (PCT Article 64(1) ), but withdrew that reservation on July 1, 1987.
It has also declared that, as far as the United States of America is concerned, international publication is not required (PCT Article 64 (3) ). Accordingly, under PCT Article 64(3)(b), if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months. Even though the United States Patent and Trademark Office has pre-grant publication under 35 U.S.C. 122(b), the United States has not removed its reservation under PCT Article 64(3) because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application will, however, be published under 35 U.S.C. 122(b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent. This reservation is still in effect.
The U.S. Receiving Office continues to accept applications only in English. See 35 U.S.C. 361(c). PCT Rules 20.1(c), 26.3ter(a) and 26.3ter(c) permit an international filing date to be accorded even though portions of an international application are in a language not acceptable to the Receiving Office. PCT Rules 20.1(c), 26.3ter(a) and 26.3ter(c) are not compatible with the national law applied by the United States Patent and Trademark Office (USPTO) as receiving Office. Thus, the USPTO has made a notification of incompatibility with respect to these rules pursuant to PCT Rules 20.1(d), 26.3ter(b) and 26.3ter(d). As a result, PCT Rules 20.1(c), 26.3ter(a) and 26.3ter(c) shall not apply to the USPTO as receiving Office for as long as the aforementioned incompatibility exists.
PCT Rules 49.5(c-bis) and 49.5(k) continue not to be compatible with the national law applied by the USPTO as a designated Office. See 35 U.S.C. 371(c)(2). As a result, PCT Rules 49.5(c-bis) and 49.5(k) shall not apply to the USPTO as designated Office for as long as the aforementioned incompatibility exists.
For complete PCT reservations, declarations, notifications and incompatibilities, please see the International Bureau's notice published on the WIPO website at: www.wipo.int/pct/en/texts/reservations/ res_incomp.html.
(a) The Patent and Trademark Office shall act as a Receiving Office for international applications filed by nationals or residents of the United States. In accordance with any agreement made between the United States and another country, the Patent and Trademark Office may also act as a Receiving Office for international applications filed by residents or nationals of such country who are entitled to file international applications.
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See MPEP § 1806 as to who can file an international application.
Only if at least one of the applicants is a resident or national of the United States of America may an international application be filed in the United States Receiving Office. See PCT Article 9(1) and (3), PCT Rules 19.1 and 19.2, 35 U.S.C. 361(a) and 37 CFR 1.412(a) and 1.421. The concepts of residence and nationality are defined in PCT Rule 18.1.
International applications may be filed electronically through the Office’s electronic filing system (EFS-Web). International applications and related papers may also be deposited with the United States Receiving Office by addressing the papers to "Mail Stop PCT" and delivering them to the Customer Service Window at the USPTO’s Alexandria headquarters. The street address is: U.S. Patent and Trademark Office, Customer Service Window, Mail Stop PCT, Randolph Building, 401 Dulany Street, Alexandria, VA 22314. The mailing address for delivery by the U.S. Postal Service is: Mail Stop PCT, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. It should be noted that the Priority Mail Express® provisions of 37 CFR 1.10 apply to the filing of all applications and papers filed in the U.S. Patent and Trademark Office, including PCT international applications and related papers and fees. It should be further noted, however, that PCT international applications and papers relating to international applications are specifically excluded from the Certificate of Mailing or Transmission procedures under 37 CFR 1.8. See MPEP § 1834. If 37 CFR 1.8 is improperly used, the date to be accorded the paper will be the date of actual receipt in the Office unless the receipt date falls on a Saturday, Sunday, or federal holiday in which case the date of receipt will be the next succeeding day which is not a Saturday, Sunday, or federal holiday (37 CFR 1.6 ).
Irrespective of the Certification practice under 37 CFR 1.8(a), facsimile transmission (without the benefit of the certificate under 37 CFR 1.8(a) ) may be used to submit certain papers in international applications. However, facsimile transmission may not be used for the filing of an international application, the filing of color drawings under 37 CFR 1.437, or the filing of a copy of the international application and the basic national fee to enter the U.S. national stage under 35 U.S.C. 371. See 37 CFR 1.6(d)(3) and (4), 1.8(a)(2)(i)(D), and 1.8(a)(2)(i)(F). The Demand for international preliminary examination may be filed by facsimile transmission. See MPEP § 1834.01.
The United States Receiving Office and PCT Help Desk are available to offer guidance on PCT requirements and procedures. See MPEP § 1730 for information on contacting the staff and other available means for obtaining information.
WARNING - although the United States patent law at 35 U.S.C. 21(a) authorizes the Director to prescribe by rule that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service, PCT Rule 20.1(a) provides for marking the "date of actual receipt on the request." Although the Priority Mail Express® provisions under 37 CFR 1.10 have not been contested to date regarding PCT applications, applicants should be aware of a possible different interpretation by foreign authorities.
PCT Rule 19.4 provides for transmittal of an international application to the International Bureau as Receiving Office in certain instances. For example, when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite residence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See 37 CFR 1.412(c)(6). The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office. This practice will avoid the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application indicates an applicant to be a national or resident of a PCT Contracting state or is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office. Where questions arise regarding residence or nationality, i.e., the U.S. is not clearly competent, the application will be forwarded to the International Bureau as Receiving Office. Note, where no residence or nationality is indicated, the U.S. is not competent, and the application will be forwarded to the International Bureau as Receiving Office so long as the necessary fee is paid. The fee is an amount equal to the transmittal fee.
If all of the applicants are indicated to be residents and nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an international filing date.
Any applicant who is a resident or national of a PCT Contracting State may also file their application directly with the International Bureau as receiving Office. An applicant may wish to consider filing directly with the International Bureau as receiving Office instead of the United States Receiving Office in the situation where applicant is filing their international application after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. See MPEP § 1828.01. An applicant may also request that an application be forwarded to the International Bureau for processing in its capacity as receiving Office in accordance with PCT Rule 19.4(a)(iii) in situations where the international application was filed with the United States Receiving Office after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. However, any transfer request received after substantial processing of the international application by the United States Receiving Office has occurred may be declined.
An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless: (1) the invention was not made in the United States; or (2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order under 37 CFR 5.2, and the international application does not contain modifications, amendments, or supplements changing the general nature of the invention in a manner that would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181. See 37 CFR 5.11 and 5.15.
Any resident or national of a Contracting State may file an international application. See PCT Article 9 and PCT Rule 18. The applicant can be an individual, corporate entity or other concern. Where there are two or more applicants, at least one of them must be a national or a resident of a Contracting State.
The question of whether an applicant is a resident or national of a Contracting State depends on the national law of that State and is decided by the receiving Office. Also, possession of a real and effective industrial or commercial establishment in a Contracting State may be considered residence in that State, and a legal entity constituted according to the national law of a Contracting State is considered a national of that State.
Where the inventor is not the applicant, indications concerning the inventor must nevertheless be made in the Request where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application (PCT Rule 4.1(a)(iv) ). See PCT Applicant’s Guide, International Phase, Annexes B1 and B2, for those States and regional patent systems which require such indications. Furthermore, information concerning the inventor is required by most countries for the national phase. In such a case, the check-box "inventor only" should be marked, the inventor’s name and address indicated in Box No. III, and the inventor’s residence and nationality omitted.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]
If an inventor is deceased or under legal incapacity, the legal representative of the inventor may be an applicant in an international application which designates the United States of America.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]
In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may file an international application which designates the United States of America.
