Chapter 1800 Patent Cooperation Treaty
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Chapter 1800 Patent Cooperation Treaty Patent Cooperation Treaty 1846 Sections of the Articles, Regulations, and 1801 Basic Patent Cooperation Administrative Instructions Under the PCT Treaty (PCT) Principles Relevant to the International Search 1802 PCT Definitions 1847 Refund of International Search Fee 1803 Reservations Under the PCT Taken by the 1848 Sequence Listings > and Tables Related to United States of America Sequence Listings< 1805 Where to File an International Application 1849 Subject Matter Excluded from International 1807 Agent or Common Representative and General Search Power of Attorney 1850 Unity of Invention Before the International 1808 Change in or Revocation of the Appointment of Searching Authority an Agent or a Common Representative 1851 Identification of Patent Documents 1810 Filing Date Requirements 1852 International-Type Search 1812 Elements of the International 1853 Amendment Under PCT Article 19 Application 1857 International Publication 1817 PCT Member States 1857.01 Prior Art Effect of the International Publication 1817.01 Designation of States and Precautionary 1859 Withdrawal of International Application or Designations Designations 1817.02 Continuation or Continuation-in-Part 1860 International Preliminary Examination Indication in the Request 1861 Chapter II Basic Flow 1819 Earlier International or International-Type 1862 Agreement with the International Search Bureau To Serve as an International 1820 Signature of Applicant Preliminary Examination Authority 1821 The Request 1864 The Demand and Preparation 1823 The Description for Filing of Demand 1823.01 Reference to Deposited Biological Material 1864.01 Amendments Filed with Demand 1823.02 Nucleotide and/or Amino Acid Sequence 1864.02 Applicant’s Right to File a Demand Listings >, and Tables Related to Sequence 1864.03 States Which May Be Elected Listings< 1864.04 Agent’s Right to Act 1824 The Claims 1865 Filing of Demand 1825 The Drawings >1865.01 The European Patent Office as an International 1826 The Abstract Preliminary Examining Authority< 1827 Fees 1866 Filling in of Headings on Chapter II Forms 1828 Priority Claim and Document 1867 Preliminary Examination Fees 1830 International Application 1868 Correction of Defects in the Demand Transmittal Letter 1869 Notification to International Bureau of Demand 1832 License Request for Foreign 1870 Priority Document and Translation Thereof Filing Under the PCT 1871 Processing Amendments Filed Under Article 19 1834 Correspondence and Article 34 Prior to or at the Start of 1834.01 Use of Telegraph, Teleprinter, International Preliminary Examination Facsimile Machine 1872 Transmittal of Demand to the Examining Corps 1834.02 Irregularities in the Mail Service 1873 Later Election of States 1836 Rectification of Obvious Errors 1874 Determination if International Preliminary 1840 The International Searching Authority Examination Is Required and Possible 1840.01 The European Patent Office 1875 Unity of Invention Before the International as an International Searching Preliminary Examining Authority Authority 1875.01 Preparation of Invitation 1842 ** Basic Flow >Under the PCT< Concerning Unity 1843 The International Search 1875.02 Reply to Invitation Concerning 1844 The International Search Report Lack of Unity of Invention 1844.01 Time for the International 1876 Notation of Errors and Informalities by the Search Report Examiner 1800-1 Rev. 1, Feb. 2003 1801 MANUAL OF PATENT EXAMINING PROCEDURE 1876.01 Request for Rectification and 1893.03(e) Papers Received from the International Bureau Notification of Action Thereon and Placed in a U.S. National Stage 1877 Nucleotide and/or Amino Acid Sequence Application File Listings During the International Preliminary 1893.03(f) Drawings and PCT Rule 11 Examination 1893.03(g) Information Disclosure Statement in a National 1878 Preparation of the Written Opinion Stage Application 1878.01 1895 A Continuation or Continuation-in-Part 1878.01(a) Prior Art Under Chapter II Application of a PCT Application Designating 1878.01(a)(1) Novelty Under Chapter II the United States 1878.01(a)(2) Inventive Step Under Chapter II 1895.01 Handling of and Considerations 1878.01(a)(3) Industrial Applicability Under Chapter II In the Handling of National Applications 1878.02 Reply to the Written Opinion Under 35 U.S.C. 371 and 35 U.S.C. 111(a) 1879 Preparation of the International Preliminary Continuations and Continuations-In-Part of a Examination Report PCT Application 1879.01 Time Limit for Preparing Report 1896 The Differences Between a National 1879.02 Transmittal of the International Preliminary Application Filed Under 35 U.S.C. 111(a) and a Examination Report National Stage Application *>Submitted< 1879.03 Translations Under 35 U.S.C. 371 1879.04 Confidential Nature of the Report 1880 Withdrawal of Demand or Election INTRODUCTION 1881 Receipt of Notice of Election by the Patent and Trademark Office This chapter is designed to be a guide for patent 1890 Receipt of Notice of Designation examiners in searching and examining applications 1891 Receipt of Notice of Election and Preliminary filed under the Patent Cooperation Treaty (PCT). Examination Report Applicants desiring additional information for filing 1893 National Stage (U.S. National Application Filed international applications should obtain a copy of the Under 35 U.S.C. 371) PCT Applicant’s Guide from the World Intellectual 1893.01 Commencement and Entry Property Organization (WIPO) in Geneva, Switzer- 1893.01(a) Entry via the U.S. Designated >or Elected< land. Office The Articles and Regulations under the PCT are 1893.01(a)(1) Submissions Required by * >30< Months from the Priority Date reproduced in Appendix T of this Manual and the 1893.01(a)(2) Article 19 Amendment (Filed Administrative Instructions are reproduced in Appen- With the International Bureau) dix 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 >1893.01(a)(3)< ** Article 34 Amendments (Filed with the information about the processing of international International Preliminary Examining applications are available from WIPO’s website Authority) (www.wipo.int/pct). 1893.01(c) Fees PCT applications are processed by the International 1893.01(d) Translation Application Processing Division within the U.S. 1893.01(e) Oath/Declaration Patent and Trademark Office. 1893.02 Abandonment 1893.03 Prosecution of U.S. National Stage Applications Before the Examiner 1801 Basic Patent Cooperation Treaty 1893.03(a) How To Identify That an Application Is a U.S. (PCT) Principles [R-1] National Stage Application 1893.03(b) The Filing Date of a U.S. National Stage MAJOR CONCEPTS OF THE PCT Application 1893.03(c) The Priority Date, Priority Claim, and Priority The Patent Cooperation Treaty (PCT) enables the Papers for a U.S. National Stage Application U.S. applicant to file one application, “an interna- 1893.03(d) Unity of Invention tional application,” in a standardized format in Rev.1, Feb. 2003 1800-2 PATENT COOPERATION TREATY 1801 English in the U.S. Receiving Office (the U.S. Patent RECEIVING OFFICE (RO) and Trademark Office), and have that application acknowledged as a regular national filing in as many The international application (IA) must be filed in member countries to the PCT as the applicant “desig- the prescribed receiving Office (RO)(PCT Article 10). nates” or “elects,” that is, names, as countries in The United States Patent and Trademark Office will which patent protection is desired. In the same man- act as a receiving Office for United States residents ner, the PCT enables foreign applicants to file a PCT and nationals (35 U.S.C. 361(a)). Under PCT Rule international application, designating the United 19.1(a)(iii), the International Bureau of the World States of America, in their home language in their Intellectual Property Organization will also act as a home patent office and have the application acknowl- Receiving Office for U.S. residents and nationals. The edged as a regular U.S. national filing. The PCT also receiving Office functions as the filing and formalities provides for a search and publication after 18 months review organization for international applications. from the priority date. Upon payment of national fees and the furnishing of any required translation, usually International applications must contain upon filing the *>30< months after the filing of any priority applica- designation of at least one country in which patent tion for the invention, or the international filing date if protection is desired and must meet certain standards no priority is claimed, the application will be sub- for completeness and formality (PCT Articles 11(1) jected to national procedures for granting of patents in and 14(1)). each of the designated countries. **>For those coun- Where a priority claim is made, the date of the ear- tries whose national laws are not compatible with the lier filed national application is used as the date for 30 month period set forth in PCT Article 22(1), the determining the timing of international processing, filing of a demand for an international preliminary including the various transmittals, the payment of cer- examination electing such countries within 19 months tain international and national fees, and publication of from the priority date will result in an extension of the period for entering the national stage to 30 months the application. Where no priority claim is made, the from the priority date. A brief description of the basic international filing date will be considered to be the flow under the PCT is provided in MPEP § 1842.< “priority date” for timing purposes (PCT Article 2(xi)). The PCT offers an alternative route to filing patent applications directly in the patent offices of those The international application is subject to the pay- countries which are members of the PCT. It does not ment of certain fees upon filing, or within 1 month preclude taking advantage of the priority rights and thereafter, and at the expiration of 12 months from the other advantages provided under the Paris Convention priority date or within 1 month thereafter.