DESIGN 1504.04

The following form paragraphs may be used in a The drawing in a design application is incorporated second or subsequent action where appropriate. into the claim by use of the claim language “as shown.” ¶ 15.38 Rejection Maintained The arguments presented have been carefully considered, but Additionally, the drawing disclosure can be supple- are not persuasive that the rejection of the claim under [1] should mented by narrative description in the specification be withdrawn. (see MPEP § 1503.01, subsection II). This descrip- Examiner Note: tion is incorporated into the claim by use of the lan- In bracket 1, insert basis of rejection. guage “as shown and described.” See MPEP § 1503.01, subsection III. ¶ 15.39 Obviousness Under 35 U.S.C. 103(a) Repeated It remains the examiner’s position that the [1] design claimed is I. 35 U.S.C. 112, FIRST AND SECOND obvious under 35 U.S.C. 103(a) over [2]. PARAGRAPHS Examiner Note: In bracket 1, insert name of design. Enablement and Scope of Protection

¶ 15.39.01 35 U.S.C. 103(a) Rejection Repeated (Multiple Any analysis for compliance with 35 U.S.C. 112 References) should begin with a determination of whether the It remains the examiner’s position that the claim is obvious under 35 U.S.C. 103(a) over [1] in view of [2]. claims satisfy the requirements of the second para- graph before moving on to the first paragraph. See In ¶ 15.39.02 Final Rejection Under 35 U.S.C. 103(a) (Single re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA Reference) 1971). Therefore, before any determination can be The claim is again and FINALLY REJECTED under 35 U.S.C. made as to whether the disclosure meets the require- 103(a) over [1]. ments of 35 U.S.C. 112, first paragraph, for enable- Examiner Note: ment, a determination of the scope of protection See form paragraphs in MPEP Chapter 700, for “Action is sought by the claim must be made. However, since the Final” and “Advisory after Final” paragraphs. drawing disclosure and any narrative description in ¶ 15.40 Final Rejection Under 35 U.S.C. 103(a) (Multiple the specification are incorporated into the claim by References) the use of the language “as shown and described,” any The claim is again and FINALLY REJECTED under 35 U.S.C. determination of the scope of protection sought by the 103(a) as being unpatentable over [1] in view of [2]. claim is also a determination of the subject matter that must be enabled by the disclosure. Hence, if the Examiner Note: See form paragraphs in MPEP Chapter 700 for “Action is appearance and shape or configuration of the design Final” and “Advisory after Final” paragraphs. for which protection is sought cannot be determined or understood due to an inadequate visual disclosure, then the claim, which incorporates the visual disclo- 1504.04 Considerations Under 35 U.S.C. sure, fails to particularly point out and distinctly claim the subject matter applicant regards as their , 112 [R-5] in violation of the second paragraph of 35 U.S.C. 112. 35 U.S.C. 112. Specification. Furthermore, such disclosure fails to enable a The specification shall contain a written description of the designer of ordinary skill in the art to *>make an arti- invention, and of the manner and process of making and using it, cle having< the shape and appearance of the design in such full, clear, concise, and exact terms as to enable any per- for which protection is sought. In such case, a rejec- son skilled in the art to which it pertains, or with which it is most tion of the claim under both the first and second para- nearly connected, to make and use the same, and shall set forth the best mode contemplated by the of carrying out his inven- graphs of 35 U.S.C. 112 would be warranted. An tion. evaluation of the scope of the claim under 35 U.S.C The specification shall conclude with one or more claims par- 112, second paragraph, to determine whether the dis- ticularly pointing out and distinctly claiming the subject matter closure of the design meets the enablement require- which the applicant regards as his invention. ment of 35 U.S.C. 112, first paragraph, cannot be ***** based on the drawings alone. The scope of a claimed

1500-35 Rev. 5, Aug. 2006 1504.04 MANUAL OF EXAMINING PROCEDURE design is understood to be limited to those surfaces or article embodying it.” Ex parte Cady, 1916 C.D. 57, portions of the article shown in the drawing in full 61, 232 O.G. 619, 621 (Comm’r Pat. 1916). lines in combination with any additional written The undisclosed surfaces not seen during sale or description in the specification. The title does not use are not required to be described in the specifica- define the scope of the claimed design but merely tion even though the title of the design is directed to identifies the article in which it is embodied. See the complete article because the design is embodied MPEP § 1503.01, subsection I. It is assumed that the only in those surfaces which are visible. Ex parte claim has been crafted to protect that which the appli- Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. cant “regards as his invention.” In re Zahn, 617 F.2d 1938). While it is not necessary to show in the draw- 261, 204 USPQ 988 (CCPA 1980). Therefore, when ing those visible surfaces that are flat and devoid of visible portions of the article embodying the design surface ornamentation, they should be described in are not shown, it is because they form no part of the the specification by way of a **>descriptive state- claim to be protected. It is prima facie evidence that ment< if they are considered part of the claimed the scope of the claimed design is limited to those sur- design. Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 faces “as shown” in the application drawing(s) in the (Comm’r Pat. 1938). Such **>descriptive statement< absence of any additional written disclosure. See may not be used to describe visible surfaces which MPEP § 1503.01, subsection II. “[T]he adequacy of include structure that is clearly not flat. Philco Corp. the disclosure must be determined by reference to the v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 scope asserted.” Philco Corp. v. Admiral Corp., 199 F. (D. Del. 1961). See also MPEP § 1503.02. Supp. 797, 131 USPQ 413, 418 (D. Del. 1961). How- Applications filed in which the title (in the claim) ever, it should be understood that when a surface or defines an entire article but the drawings and the spec- portion of an article is disclosed in full lines in the ification fail to disclose portions or surfaces of the drawing it is considered part of the claimed design article that would be visible either during use or on and its shape and appearance must be clearly and sale, will not be considered to violate the require- accurately depicted in order to satisfy the require- ments of the first and second paragraphs of 35 U.S.C. ments of the first and second paragraphs of 35 U.S.C. 112. Therefore, amendment to the title will not be 112. required in such applications. However, examiners Only those surfaces of the article that are visible at should include a statement in the first on the point of sale or during use must be disclosed to the merits (including a notice of allowability) indicat- meet the requirement of 35 U.S.C. 112, first and sec- ing that the surface(s) or portion(s) of the article that ond paragraphs. “The drawing should illustrate the would be normally visible but are not shown in the design as it will appear to purchasers and users, since drawing or described in the specification are under- the appearance is the only thing that lends patentabil- stood to form no part of the claimed design and there- ity to it under the design law.” Ex parte Kohler, 1905 fore, the determination of of the claimed C.D. 192, 192, 116 O.G. 1185, 1185 (Comm’r Pat. design is based on the views of the article shown in 1905). The lack of disclosure of those surfaces of the the drawing and the description in the specification. article which are hidden during sale or use does not Form paragraph 15.85 may be used for this purpose. violate the requirements of the first and second para- When a claim is rejected under 35 U.S.C. 112, first graphs of 35 U.S.C. 112 because the “patented orna- and second paragraphs, as nonenabling and indefinite mental design has no use other than its visual due to an insufficient drawing disclosure, examiners appearance....” In re Harvey, 12 F.3d 1061, 1064, must specifically identify in the Office action what the 29 USPQ2d 1206, 1208 (Fed. Cir. 1993). Therefore, deficiencies are in the drawing. A mere statement that to make the “visual appearance” of the design merely the claim is nonenabling and indefinite due to the involves the reproduction of what is shown in the poor quality of the drawing is not a sufficient explana- drawings; it is not necessary that the functionality of tion of the deficiencies in the drawing disclosure. the article be reproduced as this is not claimed. The Examiners must specifically point out those portions function of a design is “that its appearance adds of the drawing that are insufficient to permit an under- attractiveness, and hence commercial value, to the standing of the shape and appearance of the design

Rev. 5, Aug. 2006 1500-36 DESIGN PATENTS 1504.04 claimed, and, if possible, suggest how the rejection **> may be overcome. Form paragraphs 15.21 and 15.20.02 may be used. ¶ 15.85 Undisclosed visible surface(s)/portion(s) of article When inconsistencies between the views of the not forming part of the claimed design drawings are so great that the overall appearance of The [1] of the article [2] not shown in the drawing or the design is unclear, the claim should be rejected described in the specification. It is understood that the appearance of any part of the article not shown in the drawing or described in under 35 U.S.C. 112, first and second paragraphs, as the specification forms no part of the claimed design. In re Zahn, nonenabling and indefinite, and the rejection should 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, the deter- specifically identify all of the inconsistencies between mination of patentability is based on the design for the article the views of the drawing. Otherwise, inconsistencies shown and described. between drawing views will be objected to by the Examiner Note: examiner and correction required by the applicant. 1. In bracket 1, insert surface or surfaces which are not shown. See MPEP § 1503.02. 2. In bracket 2, insert “is” or “are”. If the visual disclosure of the claimed design as < originally filed is of such poor quality that its overall ¶ 15.21 Rejection, 35 U.S.C. 112, First And Second shape and appearance cannot be understood, applicant Paragraphs should be advised that the claim might be fatally The claim is rejected under 35 U.S.C. 112, first and second defective by using form paragraph 15.65. paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in As indicated above, a narrative description in the the art to make and use the same, and fails to particularly point out specification can supplement the drawing disclosure and distinctly claim the subject matter which applicant regards as to define the scope of protection sought by the claim. the invention. The claim is indefinite and nonenabling [1]. Furthermore, such description is incorporated into the claim by the use of the language “and described” Examiner Note: therein. However, if a description in the specification 1. This form paragraph should not be used when it is appropri- refers to embodiments or modified forms not shown ate to make one or more separate rejections under the first and/or the second paragraph of 35 U.S.C. 112. in the drawing, or includes vague and nondescriptive 2. In bracket 1, a complete explanation of the basis for the words such as “variations” and “equivalents,” or a rejection should be provided. statement indicating that the claimed design is not limited to the exact shape and appearance shown in ¶ 15.20.02 Suggestion To Overcome Rejection Under 35 the drawing, the claim should be rejected under U.S.C. 112, First and Second Paragraphs 35 U.S.C. 112, first and second paragraphs, as nonen- It is suggested that applicant may submit large, clear informal abling and indefinite. The reason being the descrip- drawings or photographs which show [1] in order that the exam- iner may be in a position to determine if the claim may be clarified tion fails to enable a designer of ordinary skill in the without the addition of new matter (35 U.S.C. 132, 37 CFR art to *>make an article having< the shape and 1.121). In the alternative, applicant may disclaim the areas or por- appearance of those other embodiments, modified tions of the design which are considered indefinite and nonen- forms or “variations” and “equivalents” referred to in abling by converting them to broken lines and amend the specification to include a statement that the portions of the [2] the description in the absence of additional drawing shown in broken lines form no part of the claimed design. views. Furthermore, in the absence of additional Examiner Note: drawing views, the description, which is incorporated 1. In bracket 1, identify the areas or portions of the design into the claim, fails to particularly point out and dis- which are unclear. tinctly claim the shape and appearance of those other 2. In bracket 2, insert title of the article. embodiments, modified forms or “variations” and ¶ 15.65 Amendment May Not Be Possible “equivalents” that applicants regard as their invention. The claim might be fatally defective; that is, it might not be Form paragraph 15.21 may be used to reject a claim possible to [1] without introducing new matter (35 U.S.C. 132, 37 for the above reasons. CFR 1.121).

1500-37 Rev. 5, Aug. 2006 1504.04 MANUAL OF PATENT EXAMINING PROCEDURE

Examiner Note: ing configuration revealed by such an amendment In bracket 1, identify portion of the claimed design which is would not be apparent in the application as filed and, insufficiently disclosed. therefore, it could not be established that applicant ¶ 15.73 Corrected Drawing Sheets Required was in possession of this amended configuration at the time the application was filed. However, an Failure to submit replacement correction sheets overcoming all of the deficiencies in the drawing disclosure set forth above, or an amendment that changes the scope of a design by explanation why the drawing corrections or additional drawing either reducing certain portions of the drawing to bro- views are not necessary will result in the rejection of the claim ken lines or converting broken line structure to solid under 35 U.S.C. 112, first and second paragraphs, being made lines is not a change in configuration as defined by the FINAL in the next Office action. court in Salmon. The reason for this is because appli- cant was in possession of everything disclosed in the drawing at the time the application was filed and the New Matter mere reduction of certain portions to broken lines or conversion of broken line structure to solid lines is not New matter is subject matter which has no anteced- a departure from the original disclosure. Examiners ent basis in the original specification, drawings or are cautioned that if broken line structure is converted claim (MPEP § 608.04). An amendment to the claim to solid lines by way of amendment, the shape and must have antecedent basis in the original disclosure. configuration of that structure must have been fully 35 U.S.C. 132; 37 CFR 1.121(f). Prior to final disclosed and enabling at the time the application was action, all amendments will be entered in the applica- filed. An amendment which alters the appearance of tion and will be considered by the examiner. Ex parte the claimed design by removing two-dimensional, Hanback, 231 USPQ 739 (Bd. Pat. App. & Inter. superimposed surface treatment may be permitted if it 1986). An amendment to the claim which has no ante- is clear from the application that applicant had posses- cedent basis in the specification and/or drawings as sion of the underlying configuration of the design originally filed introduces new matter because that without the surface treatment at the time of filing of subject matter is not described in the application as the application. See In re Daniels, 144 F.3d originally filed. The claim must be rejected under 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 35 U.S.C. 112, first paragraph. An amendment to the 1998). disclosure not affecting the claim (such as environ- ment in the title or in broken lines in the drawings), Amendments to the title must have antecedent basis which has no antecedent basis in the application as in the original application to be permissible. If an originally filed, must be objected to under 35 U.S.C. amendment to the title directed to the article in which 132 as lacking support in the application as originally the design is embodied has no antecedent basis in the filed and a requirement must be made to cancel the original application, the claim will be rejected under new matter. 35 U.S.C. 112, first paragraph, as failing to comply The scope of a design claim is defined by what is with the written description requirement thereof. Ex shown in full lines in the application drawings. In re parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. Inter. 1992). If an amendment to the title directed to 1988). The claim may be amended by broadening or the environment in which the design is used has no narrowing its scope within the bounds of the disclo- antecedent basis in the original application, it will be sure as originally filed. objected to under 35 U.S.C. 132 as introducing new matter into the disclosure. See MPEP § 1503.01, sub- A change in the configuration of the claimed design section I. is considered a departure from the original disclosure and introduces prohibited new matter (37 CFR Examples of permissible amendments filed with the 1.121(f)). See In re Salmon, 705 F.2d 1579, 217 original application include: (A) a preliminary amend- USPQ 981 (Fed. Cir. 1983). This includes the removal ment filed simultaneously with the application papers, of three-dimensional surface treatment that is an inte- that is specifically identified in the original oath/dec- gral part of the configuration of the claimed design, laration as required by 37 CFR 1.63 and MPEP for example, beading, grooves, and ribs. The underly- § 608.04(b); and (B) the inclusion of a disclaimer in

Rev. 5, Aug. 2006 1500-38 DESIGN PATENTS 1504.04 the original specification or on the drawings/photo- designer of ordinary skill in the art that applicant was in posses- graphs as filed. See 37 CFR 1.152 and MPEP sion of the design now claimed at the time the application was § 1503.01 and § 1503.02. filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 An example of a permissible amendment submitted (CCPA 1981). after the filing of the application would be an amend- Specifically, there is no support in the original disclosure [2]. ment that does not involve a departure from the con- To overcome this rejection, applicant may attempt to demon- figuration of the original disclosure (37 CFR strate that the original disclosure establishes that he or she was in 1.121(f)). possession of the amended claim or [3]. An example of an impermissible amendment which Examiner Note: introduces new matter would be an amendment to the 1. In bracket 1, specify whether new drawing or amendment to claim without antecedent basis in the original disclo- the drawing, title or specification. sure which would change the configuration or surface 2. In bracket 2, specifically identify what is new matter so that appearance of the original design by the addition of the basis for the rejection is clear. previously undisclosed subject matter. In re Berkman, 3. In bracket 3, insert specific suggestion how rejection may be overcome depending on the basis; such as, “the bracket in figures 642 F.2d 427, 209 USPQ 45 (CCPA 1981). 3 and 4 of the new drawing may be corrected to correspond to the When an amendment affecting the claim is submit- original drawing” or “the specification may be amended by delet- ted that introduces new matter into the drawing, spec- ing the descriptive statement.” ification or title and a rejection under 35 U.S.C. 112, < first paragraph is made, the examiner should specifi- cally identify in the Office action the subject matter ¶ 15.65 Amendment May Not Be Possible which is not considered to be supported by the origi- The claim might be fatally defective; that is, it might not be nal disclosure. A statement by the examiner that possible to [1] without introducing new matter (35 U.S.C. 132, 37 merely generalizes that the amended drawing, specifi- CFR 1.121). cation or title contains new matter is not sufficient. Examiner Note: Examiners should specifically identify the differences In bracket 1, identify portion of the claimed design which is or changes made to the claimed design that are con- insufficiently disclosed. sidered to introduce new matter into the original dis- closure, and if possible, suggest how the amended ¶ 15.51.01 Amendment to Disclosure Not Affecting Claim - drawing, specification or title can be corrected to 35 U.S.C. 132 Objection (New Matter) overcome the rejection. Form paragraph 15.51 may be The [1] is objected to under 35 U.S.C. 132 and 37 CFR 1.121 as introducing new matter not supported by the original disclo- used. sure. The original disclosure does not reasonably convey to a If an amendment that introduces new matter into designer of ordinary skill in the art that applicant was in posses- the claim is the result of a rejection under 35 U.S.C. sion of the amended subject matter at the time the application was 112, first and second paragraphs for lack of enable- filed. See In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). ment and indefiniteness, and it is clear that the disclo- Specifically, there is no support in the original disclosure [2]. sure of the claimed design as originally filed cannot To overcome this objection, applicant may attempt to demon- be corrected without the introduction of new matter, strate that the original disclosure establishes that he or she was in the record of the application should reflect that the possession of the amended subject matter or [3]. claim is seen to be fatally defective. Form paragraph 15.65 may be used to set forth this position. Examiner Note: 1. In bracket 1, specify whether new drawing or amendment to the drawing, title or specification. **> 2. In bracket 2, specifically identify what is new matter so that the basis for the objection is clear. ¶ 15.51 35 U.S.C. 112, First Paragraph Rejection (New 3. In bracket 3, insert specific suggestion how the objection Matter) may be overcome depending on the basis; such as, “the broken The claim is rejected under 35 U.S.C. 112, first paragraph as line showing of environmental structure in Fig. 1 of the new draw- failing to comply with the description requirement thereof since ing may be omitted to correspond to the original drawing” or “the the [1] introduces new matter not supported by the original disclo- title may be amended by deleting the reference to environmental sure. The original disclosure does not reasonably convey to a structure”.

1500-39 Rev. 5, Aug. 2006 1504.04 MANUAL OF PATENT EXAMINING PROCEDURE

III. 35 U.S.C. 112, SECOND PARAGRAPH 1. This rejection should be used where there is another rejection in the Office action. For issue with an examiner’s amendment, see Defects in claim language give rise to a rejection of form paragraph 15.69.01. the claim under the second paragraph of 35 U.S.C. 2. In bracket 1, insert --or the like-- or --or similar article--. 3. This form paragraph should not be used when “or the like” or 112. The fact that claim language, including terms of “or similar article” in the title is directed to the environment of the degree, may not be precise, does not automatically article embodying the design. render the claim indefinite under 35 U.S.C. 112, sec- ond paragraph. “[T]he definiteness of the language ¶ 15.69.01 Remove Indefinite Language (“Or The Like”) employed must be analyzed – not in a vacuum, but by Examiner’s Amendment always in light of the teachings of the and The phrase [1] in the claim following the title renders the claim indefinite. By authorization of [2] in a telephone interview on [3], of the particular application disclosure as it would be the phrase has been cancelled from the claim and at each occur- interpreted by one possessing the ordinary level of rence of the title throughout the papers, except the oath or declara- skill in the pertinent art.” In re Moore, 439 F.2d 1232, tion (35 U.S.C. 112, second paragraph, and 37 CFR 1.153). See 1235, 169 USPQ 236, 238 (CCPA 1971). A claim Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). may appear indefinite when read in a vacuum, but Examiner Note: may be definite upon reviewing the application dis- In bracket 1, insert objectionable phrase, e.g., --or the like--, -- closure or prior art teachings. Moreover, an otherwise or similar article--, etc. definite claim in a vacuum may be uncertain when reviewing the application disclosure and prior art. Rejections under 35 U.S.C. 112, second paragraph, Moore, 439 F.2d at 1235 n.2, 169 USPQ at 238 n.2. should be made when the scope of protection sought See also MPEP § 2173.05(b). by the claim cannot be determined from the disclo- sure. For instance, a drawing disclosure in which the Use of phrases in the claim such as “or similar arti- boundaries between claimed (solid lines) and cle,” “or the like,” or equivalent terminology has been unclaimed (broken lines) portions of an article are not held to be indefinite. See Ex parte Pappas, defined or cannot be understood may be enabling 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). How- under 35 U.S.C. 112, first paragraph, in that the shape ever, the use of broadening language such as “or and appearance of the article can be reproduced, but the like,” or “or similar article” in the title when such disclosure fails to particularly point out and dis- directed to the environment of the article embodying tinctly claim the subject matter that applicant regards the design should not be the basis for a rejection under as the invention. Form paragraph 15.22 may be used. 35 U.S.C. 112, second paragraph. See MPEP § 1503.01, subsection I. ¶ 15.22 Rejection, 35 U.S.C. 112, 2nd Paragraph The claim is rejected under 35 U.S.C. 112, second paragraph, Examiners are reminded that there is no per se as being indefinite for failing to particularly point out and dis- rule, and that the definiteness of claim language must tinctly claim the subject matter which applicant regards as the be evaluated on the facts and circumstances of each invention. application. The following form paragraphs may be The claim is indefinite [1]. used. Examiner Note: 1. Use this form paragraph when the scope of the claimed ¶ 15.22.02 Rejection, 35 U.S.C. 112, 2nd Paragraph (“Or design cannot be determined. the Like” In Claim) 2. In bracket 1, provide a full explanation of the basis for the The claim is rejected under 35 U.S.C. 112, second paragraph, rejection. as being indefinite for failing to particularly point out and dis- tinctly claim the subject matter which applicant regards as the The claim should be rejected as indefinite when it invention. The claim is indefinite because of the use of the phrase cannot be determined from the designation of the “[1]” following the title. Cancellation of said phrase in the claim design as shown in the drawing, referenced in the title and each occurrence of the title throughout the papers, except the and described in the specification what article of man- oath or declaration, will overcome the rejection. See Ex parte ufacture is being claimed, e.g., a design claimed as a Pappas, 23 USPQ2d 1636 (Bd. App. & Inter. 1992) and 37 CFR 1.153. “widget” which does not identify a known or recog- nizable article of manufacture. The following form Examiner Note: paragraphs may be used.

Rev. 5, Aug. 2006 1500-40 DESIGN PATENTS 1504.05

¶ 15.22.03 Rejection, 35 U.S.C. 112, Second Paragraph claim**>. More than one embodiment of a design (Title Fails to Specify a Known Article of Manufacture) may be protected by a single claim. However, such The claim is rejected under 35 U.S.C. 112, second paragraph, embodiments may be presented only if they involve a as indefinite in that the title, as set forth in the claim, fails to iden- single inventive concept according to the obvious- tify an article of manufacture and the drawing disclosure does not inherently identify the article in which the design is embodied. Ex ness-type double patenting practice for designs. In re parte Strijland, 26 USPQ2d 1259, 1263 (Bd. Pat. App. & Int. Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1992). Therefore, any attempt to clarify the title by specifying the 1959).< Therefore, the examiner will require restric- article in which the design is embodied may introduce new matter. tion in each design application which contains more See 35 U.S.C. 132 and 37 CFR 1.121. than one patentably distinct design. ¶ 15.21.01 Rejection, 35 U.S.C. 112 (Second Paragraph) Restriction will be required under 35 U.S.C. 121 if (Information Requested) a design *>claims< multiple The claim is rejected for failing to particularly point out and designs that are ** patentably distinct from each other distinctly claim the invention as required in 35 U.S.C. 112, second **. The issue of whether a search and examination of paragraph. The title of the article in which the design is embodied an entire application can be made without serious bur- or applied is too ambiguous and therefore indefinite for the exam- iner to make a proper examination of the claim under 37 CFR den to an examiner (as noted in MPEP § 803) is not 1.104. applicable to design applications when determining Applicant is therefore required to provide a sufficient explana- whether a restriction requirement should be made. tion of the nature and intended use of the article in which the Clear admission on the record by the applicant that claimed design is embodied or applied, so that a proper classifica- the embodiments are not patentably distinct will not tion and reliable search can be made. See 37 CFR 1.154(b)(1); overcome a requirement for restriction if the embodi- MPEP 1503.01. Additional information, if available, regarding analogous fields of search, pertinent prior art, advertising bro- ments do not **>meet the following two require- chures and the filing of copending applications would also ments: (A) the embodiments must have overall prove helpful. If a utility application has been filed, please furnish appearances with basically the same design character- its application number. istics; and (B) the differences between the embodi- This information should be submitted in the form of a separate ments must be insufficient to patentably distinguish paper, and should not be inserted in the specification (37 CFR one design from the other. Regarding the second 1.56). See also 37 CFR 1.97, 1.98 and 1.99. requirement, without evidence, such an admission is Where the design claim would otherwise be patent- merely a conclusionary statement.< If multiple able but for the presence of any rejection under designs are held to be patentably indistinct and can be 35 U.S.C. 112, first and/or second paragraphs, form covered by a single claim, any rejection of one over paragraph 15.58.01 may be used. prior art will apply equally to all. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). ¶ 15.58.01 Claimed Design Is Patentable (35 U.S.C. 112 Rejections) I. INDEPENDENT The claimed design is patentable over the references cited. However, a final determination of patentability will be made upon Design inventions are independent if there is no resolution of the above rejection. apparent relationship between two or more disparate Form paragraphs 15.38 and 15.40.01 may be used articles disclosed in the drawings; for example, a pair in a second or subsequent actioh, where appropriate of eyeglasses and a door handle; a bicycle and a cam- (see MPEP § 1504.02). era; an automobile and a bathtub. Also note examples in MPEP § *>806.06<. Restriction in such cases is 1504.05 Restriction [R-5] clearly proper. This situation may be rarely presented General principles of utility restriction are set forth since design patent applications are seldom filed con- in Chapter 800 of the MPEP. These principles are taining disclosures of independent articles. also applicable to design restriction practice with the II. DISTINCT INVENTIONS exception of those differences set forth in this section. Unlike a utility patent application, which can con- **>In determining patentable distinctness, the tain plural claims directed to plural inventions, a examiner must compare the overall appearances of the design patent application may only have a single multiple designs. Each design must be considered as a

1500-41 Rev. 5, Aug. 2006 1504.05 MANUAL OF PATENT EXAMINING PROCEDURE whole, i.e., the elements of the design are not consid- fication should make clear that multiple embodiments ered individually as they may be when establishing a are disclosed and should particularize the differences prima facie case of obviousness under 35 U.S.C. between the embodiments. If the disclosure of any 103(a). Designs are not distinct inventions if: (A) the embodiment relies on the disclosure of another multiple designs have overall appearances with basi- embodiment for completeness to satisfy the require- cally the same design characteristics; and (B) the dif- ments of 35 U.S.C. 112, first paragraph, the differ- ferences between the multiple designs are insufficient ences between the embodiments must be identified to patentably distinguish one design from the other. either in the figure descriptions or by way of a Differences may be considered patentably insufficient **>descriptive statement< in the specification of the when they are de minimis or obvious to a designer of application as filed. For example, the second embodi- ordinary skill in the art. Therefore, in determining the ment of a cabinet discloses a single view showing question of patentable distinctness under 35 U.S.C. only the difference in the front door of the cabinet of 121 in a design application, a search of the prior art the first embodiment; the figure description should may be necessary. Both of the above considerations state that this view “is a second embodiment of Figure are important. Differences between the designs may 1, the only difference being the configuration of the prove to be obvious in view of the prior art, but if the door, it being understood that all other surfaces are the overall appearances are not basically the same, the same as those of the first embodiment.” This type of designs remain patentably distinct. Embodiments statement in the description is understood to incorpo- claiming different scopes of the same design can be rate the disclosure of the first embodiment to com- patentably distinct using the two-step analysis above. plete the disclosure of the second embodiment. When an application illustrates a component, which is However, in the absence of such a statement in the a subcombination of another embodiment, the sub- specification of an application as filed, the disclosure combination often has a distinct overall appearance of one embodiment will normally not be permitted to and a restriction should be required. When an applica- provide antecedent basis for any written or visual tion illustrates only a portion of the design, which is amendment to the disclosure of other embodiments. the subject of another embodiment, that portion often has a distinct overall appearance and a restriction The obviousness standard under 35 U.S.C. 103(a) should be required.< must be applied in determining whether multiple embodiments may be retained in a single application. A. Multiple Embodiments - Difference in See MPEP § 1504.03. That is, it must first be deter- Appearance mined whether the embodiments have overall appear- ances that are basically the same as each other. If the It is permissible to illustrate more than one embodi- appearances of the embodiments are considered to be ment of a design invention in a single application. basically the same, then it must be determined However, such embodiments may be presented only if whether the differences are either minor between the they involve a single inventive concept **>. Two embodiments and not a patentable distinction, or designs involve a single inventive concept when the obvious to a designer of ordinary skill in view of the two designs are patentably indistinct according to the analogous prior art . If embodiments meet both of the standard of obviousness-type double patenting.< See above criteria they may be retained in a single appli- In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA cation. If embodiments do not meet either one of the 1959). Embodiments that are patentably distinct over above criteria, restriction must be required. It should one another do not constitute a single inventive con- be noted, that if the embodiments do not have overall cept and thus may not be included in the same design appearances that are basically the same, restriction application. In re Platner, 155 USPQ 222 (Comm’r must be required since their appearances are patent- Pat. 1967). The disclosure of plural embodiments ably distinct. In such case it doesn’t matter for restric- does not require or justify more than a single tion purposes, if the differences between the claim, which claim must be in the formal terms appearances of the embodiments are shown to be stated in MPEP § 1503.01, subsection III. The speci- obvious in view of analogous prior art.

Rev. 5, Aug. 2006 1500-42 DESIGN PATENTS 1504.05

Form paragraph 15.27.02 or 15.27.03, if appropri- Accordingly, they are deemed to be obvious variations and are ate, may be used to notify applicant that restriction is being retained and examined in the same application. not required because the embodiments are not patent- Examiner Note: ably distinct. In bracket 3, add embodiments as necessary. ¶ 15.27.02 Restriction Not Required - Change In The following form paragraphs may be used in a Appearance (First Action - Non Issue) restriction requirement. Examiners must include a This application discloses the following embodiments: brief explanation of the differences between the Embodiment 1 - Figs. [1] appearances of the embodiments that render them pat- Embodiment 2 - Figs. [2] entably distinct. [3] Multiple embodiments of a single inventive concept may be ¶ 15.27 Restriction Under 35 U.S.C. 121 included in the same design application only if they are patentably This application discloses the following embodiments: indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 Embodiment 1 - Figs. [1] (CCPA 1959). Embodiments that are patentably distinct from one Embodiment 2 - Figs. [2] another do not constitute a single inventive concept and thus may [3] not be included in the same design application. See In re Platner, Multiple embodiments of a single inventive concept may be 155 USPQ 222 (Comm’r Pat. 1967). included in the same design application only if they are patentably The above identified embodiments are considered by the indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 examiner to present overall appearances that are basically the (CCPA 1959). Embodiments that are patentably distinct from one same. Furthermore, the differences between the appearances of another do not constitute a single inventive concept and thus may the embodiments are considered minor and patentably indistinct, not be included in the same design application. See In re Platner, or are shown to be obvious in view of analogous prior art cited. 155 USPQ 222 (Comm’r Pat. 1967). The [4] create(s) patentably Accordingly, they are deemed to be obvious variations and are distinct designs. being retained and examined in the same application. Any rejec- Because of the differences identified, the embodiments are tion of one embodiment over prior art will apply equally to all considered to either have overall appearances that are not basi- other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ cally the same, or if they are basically the same, the differences 71 (Bd. App. 1965). No argument asserting patentability based on are not minor and patentably indistinct or are not shown to be the differences between the embodiments will be considered once obvious in view of analogous prior art. the embodiments have been determined to comprise a single The above embodiments divide into the following patentably inventive concept. Failure of applicant to traverse this determina- distinct groups of designs: tion in reply to this action will be considered an admission of lack Group I: Embodiment [5] of patentable distinction between the above identified embodi- Group II: Embodiment [6] ments. [7] Examiner Note: Restriction is required under 35 U.S.C. 121 to one of the above identified patentably distinct groups of designs. In bracket 3, add embodiments as necessary. A reply to this requirement must include an election of a single ¶ 15.27.03 Restriction Not Required - Change In group for prosecution on the merits, even if this requirement is Appearance (First Action Issue) traversed, 37 CFR 1.143. Any reply that does not include election of a single group will be held nonresponsive. Applicant is also This application discloses the following embodiments: requested to direct cancellation of all drawing figures and the cor- Embodiment 1 - Figs. [1] responding descriptions which are directed to the nonelected Embodiment 2 - Figs. [2] groups. [3] Should applicant traverse this requirement on the grounds that Multiple embodiments of a single inventive concept may be the groups are not patentably distinct, applicant should present included in the same design application only if they are patentably evidence or identify such evidence now of record showing the indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 groups to be obvious variations of one another. If the groups are (CCPA 1959). Embodiments that are patentably distinct from one determined not to be patentably distinct and they remain in this another do not constitute a single inventive concept and thus may application, any rejection of one group over prior art will apply not be included in the same design application. See In re Platner, equally to all other embodiments. See Ex parte Appeal No. 315- 155 USPQ 222 (Comm’r Pat. 1967). 40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patent- The above identified embodiments are considered by the ability based on the differences between the groups will be con- examiner to present overall appearances that are basically the sidered once the groups have been determined to comprise a same. Furthermore, the differences between the appearances of single inventive concept. the embodiments are considered minor and patentably indistinct, In view of the above requirement, action on the merits is or are shown to be obvious in view of analogous prior art cited. deferred pending compliance with the requirement in accordance

1500-43 Rev. 5, Aug. 2006 1504.05 MANUAL OF PATENT EXAMINING PROCEDURE with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. USPQ 71 (Bd. App. 1965). No argument asserting patentability 1960). based on the differences between the groups will be considered once the groups have been determined to comprise a single inven- Examiner Note: tive concept. 1. In bracket 3, add embodiments as necessary. In view of the above requirement, action on the merits is 2. In bracket 4, insert an explanation of the difference(s) deferred pending compliance with the requirement in accordance between the embodiments. with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 3. In bracket 7, add groups as necessary. 1960).

¶ 15.27.01 Restriction Under 35 U.S.C. 121 (Obvious Examiner Note: Variations Within Group) This application discloses the following embodiments: 1. In bracket 3, add embodiments as necessary. Embodiment 1 - Figs. [1] 2. In bracket 6, add groups as necessary. Embodiment 2 - Figs. [2] 3. In bracket 7, insert an explanation of the difference(s) [3] between the groups. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably ¶ 15.28 Telephone Restriction Under 35 U.S.C. 121 indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 This application discloses the following embodiments: (CCPA 1959). Embodiments that are patentably distinct from one Embodiment 1 - Figs. [1] another do not constitute a single inventive concept and thus may Embodiment 2 - Figs. [2] not be included in the same design application. See In re Platner, [3] 155 USPQ 222 (Comm’r Pat. 1967). The above embodiments divide into the following patentably Multiple embodiments of a single inventive concept may be distinct groups of designs: included in the same design application only if they are patentably Group I: Embodiment [4] indistinct. See In re Rubinfield, 123 USPQ 210 (CCPA 1959). Group II: Embodiment [5] Embodiments that are patentably distinct from one another do not [6] constitute a single inventive concept and thus may not be included The embodiments disclosed within each group have overall in the same design application. See In re Platner, 155 USPQ 222 appearances that are basically the same. Furthermore, the differ- (Comm’r Pat. 1967). The [4] create(s) patentably distinct designs. ences between them are considered minor and patentably indis- See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). tinct, or are shown to be obvious in view analogous prior art cited. Because of the differences identified, the embodiments of each Therefore, they are considered by the examiner to be obvious Group are considered to either have overall appearances that are variations of one another within the group. These embodiments not basically the same, or, if they are basically the same, the dif- thus comprise a single inventive concept and are grouped ferences are not minor and patentably indistinct or are not shown together. However, the [7] patentably distinguishes each group to be obvious in view of analogous prior art. from the other(s). The above disclosed embodiments divide into the following Because of the differences identified, the embodiments of each patentably distinct groups of designs: Group are considered to either have overall appearances that are Group I: Embodiment [5] not basically the same, or if they are basically the same, the differ- Group II: Embodiment [6] ences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art. [7] Restriction is required under 35 U.S.C. 121 to one of the pat- Restriction is required under 35 U.S.C. 121 to one of the pat- entably distinct groups of the designs. entably distinct groups of designs. A reply to this requirement must include an election of a single During a telephone discussion with [8] on [9], a provisional group for prosecution on the merits, even if this requirement is election was made [10] traverse to prosecute the design(s) of traversed, 37 CFR 1.143. Any reply that does not include election group [11]. Affirmation of this election should be made by appli- of a single group will be held nonresponsive. Applicant is also cant in replying to this Office action. requested to direct cancellation of all drawing figures and the cor- Group [12] is withdrawn from further consideration by the responding descriptions which are directed to the nonelected examiner, 37 CFR 1.142(b), as being for a nonelected design(s). groups. Examiner Note: Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the 1. In bracket 3, add embodiments as necessary. groups to be obvious variations of one another. If the groups are 2. In bracket 4, insert an explanation of the difference(s) determined not to be patentably distinct and they remain in this between the embodiments. application, any rejection of one group over prior art will apply 3. In bracket 7, add groups as necessary. equally to all other groups. See Ex parte Appeal No. 315-40, 152 4. In bracket 10, insert --with-- or --without--.

Rev. 5, Aug. 2006 1500-44 DESIGN PATENTS 1504.05

¶ 15.28.01 Telephone Restriction Under 35 U.S.C.121 B. Combination/Subcombination - Difference in (Obvious Variations Within Group) Scope This application discloses the following embodiments: Embodiment 1 – Figs. [1] A design claim covers the entire design as a whole. Embodiment 2 – Figs. [2] Furthermore, claim protection to the whole design [3] does not extend to any individual part or portion Multiple embodiments of a single inventive concept may be thereof. See KeyStone Retaining Wall Systems Inc. v. included in the same design application only if they are patentably Westrock Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 Cir. 1993). Embodiments directed to a design as a (CCPA 1959). Embodiments that are patentably distinct from one whole (combination) as well as individual parts or another do not constitute a single inventive concept and thus may portions (subcombination) thereof may not be not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). included in a single application if the appearances are The above embodiments divide into the following patentably patentably distinct. In such instance restriction would distinct groups of designs: be required since patentably distinct combination/sub- Group I: Embodiment [4] combination subject matter must be supported by sep- Group II: Embodiment [5] arate claims. However, a design claim may cover [6] embodiments of different scope directed to the same The embodiments disclosed within each group have overall inventive concept within a single application if the appearances that are basically the same. Furthermore, the differ- designs are not patentably distinct. In re Rubinfield, ences between them are considered minor and patentably indis- 270 F.2d 391, 123 USPQ 210 (CCPA 1959). The tinct, or are shown to be obvious in view of analogous prior art court held that the inventive concept of a design is not cited. Therefore, they are considered by the examiner to be obvi- limited to its embodiment in a single specific article, ous variations of one another within the group. These embodi- and as long as the various embodiments are not pat- ments thus comprise a single inventive concept and are grouped together. However, the [7] patentably distinguishes each group entably distinct, they may be protected by a single from the other(s). claim. Blumcraft of Pittsburgh v. Ladd, 144 USPQ Because of the differences identified, the embodiments of each 562 (D.D.C. 1965). The determination that the design Group are considered to either have overall appearances that are of the subcombination/element is patentably indistinct not basically the same, or if they are basically the same, the differ- from the combination means that the designs are not ences are not minor and patentably indistinct or are not shown to patentable (novel and unobvious) over each other and be obvious in view of analogous prior art. may remain in the same application. If the embodi- Restriction is required under 35 U.S.C. 121 to one of the pat- ments are patentably distinct, the designs are consid- entably distinct groups of designs. ered to be separate inventions which require separate During a telephone discussion with [8] on [9], a provisional election was made [10] traverse to prosecute the design(s) of claims, and restriction to one or the other is necessary. group [11]. Affirmation of this election should be made by appli- See In re Kelly, 200 USPQ 560 (Comm’r Pat. 1978); cant in replying to this Office action. Ex parte Sanford, 1914 C.D. 69, 204 O.G. 1346 Group [12] is withdrawn from further consideration by the (Comm’r Pat. 1914); Ex parte Heckman, 135 USPQ examiner, 37 CFR 1.142(b), as being for a nonelected design(s). 229 (P.O. Super. Exam. 1960). In determining Examiner Note: whether embodiments of different scope can be 1. In bracket 3, add embodiments as necessary. retained in a single application they must have overall 2. In bracket 6, add groups as necessary. appearances that are basically the same, and the dif- 3. In bracket 7, insert an explanation of the differences between ference in scope must be minor and not a patentable the groups. distinction. That is, they must, by themselves, be con- 4. In bracket 10, insert --with--or --without--. sidered obvious over each other under 35 U.S.C. 103(a) without the aid of analogous prior art. The rea- ¶ 15.31 Provisional Election Required (37 CFR 1.143) son for this, as stated above, is because claim protec- Applicant is advised that the reply to be complete must include tion to the whole design does not extend to any a provisional election of one of the enumerated designs, even individual part or portion thereof. Therefore, if the though the requirement may be traversed (37 CFR 1.143). difference in scope between embodiments has an impact on the overall appearance that distinguishes

1500-45 Rev. 5, Aug. 2006 1504.05 MANUAL OF PATENT EXAMINING PROCEDURE one over the other, they must be restricted since the Examiner Note: difference in scope creates patentably distinct designs In bracket 3, add embodiments as necessary. that must be supported by separate claims. Form para- Form paragraph 15.29 or 15.30, if appropriate, may graph 15.27.04 or 15.27.05, if appropriate, may be be used to make a restriction requirement. used to notify applicant that restriction is not required because the embodiments required are not patentably ¶ 15.29 Restriction Under 35 U.S.C. 121 (Segregable distinct. Parts or Combination/Subcombination) This application discloses the following embodiments: ¶ 15.27.04 Restriction Not Required – Change In Scope Embodiment 1 – Figs. [1] drawn to a [2]. (First Action – Non Issue) Embodiment 2 – Figs. [3] drawn to a [4]. This application discloses the following embodiments: [5] Embodiment 1 – Figs. [1] Restriction to one of the following inventions is required under Embodiment 2 – Figs. [2] 35 U.S.C. 121: Group I – Embodiment [6] [3] Group II – Embodiment [7] Designs which involve a change in scope may be included in [8] the same design application only if they are patentably indistinct. The designs as grouped are distinct from each other since However, design patent protection does not extend to patentably under the law a design patent covers only the invention disclosed distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. as an entirety, and does not extend to patentably distinct segrega- 69, 204 O.G. 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh ble parts; the only way to protect such segregable parts is to apply v. Ladd, 144 USPQ 562 (D.D.C. 1965). for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG The above identified embodiments are considered by the 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, examiner to present overall appearances that are basically the 144 USPQ 562 (D.D.C. 1965). It is further noted that patentably same. Furthermore, the difference in scope between embodiments distinct combination/subcombination subject matter must be sup- is considered minor and patentably indistinct. Accordingly, they ported by separate claims, whereas only a single claim is permis- are deemed to be obvious variations and are being retained and sible in a design patent application. See In re Rubinfield, 270 F.2d examined in the same application. Any rejection of one embodi- 391, 123 USPQ 210 (CCPA 1959). ment over prior art will apply equally to all other embodiments. [9] Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No Because the designs are distinct for the reason(s) given above, argument asserting patentability based on the differences between and have acquired separate status in the art, restriction for exami- the embodiments will be considered once the embodiments have nation purposes as indicated is proper (35 U.S.C. 121). been determined to comprise a single inventive concept. Failure A reply to this requirement must include an election of a single of applicant to traverse this determination in reply to this Office group for prosecution on the merits, even if this requirement is action will be considered an admission of lack of patentable dis- traversed. 37 CFR 1.143. Any reply that does not include an elec- tinction between the embodiments. tion of a single group will be held nonresponsive. Applicant is Examiner Note: also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected In bracket 3, add embodiments as necessary. groups. ¶ 15.27.05 Restriction Not Required – Change In Scope Should applicant traverse this requirement on the grounds that (First Action Issue) the groups are not patentably distinct, applicant should present This application discloses the following embodiments: evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are Embodiment 1 – Figs. [1] determined not to be patentably distinct and they remain in this Embodiment 2 – Figs. [2] application, any rejection of one group over the prior art will [3] apply equally to all other groups. See Ex parte Appeal No. 315-40, Designs which involve a change in scope may be included in 152 USPQ 71 (Bd. App. 1965). No argument asserting patentabil- the same design application only if they are patentably indistinct. ity based on the differences between the groups will be considered However, design patent protection does not extend to patentably once the groups have been determined to comprise a single inven- distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. tive concept. 69, 204 O.G. 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh In view of the above requirement, action on the merits is v. Ladd, 144 USPQ 562 (D.D.C. 1965). deferred pending compliance with the requirement in accordance The above identified embodiments are considered by the with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. examiner to present overall appearances that are basically the 1960). same. Furthermore, the difference in scope between embodiments is considered minor and patentably indistinct. Accordingly, they Examiner Note: are deemed to be obvious variations and are being retained and 1. In bracket 5, add embodiments as necessary. examined in the same application. 2. In bracket 8, add groups as necessary.

Rev. 5, Aug. 2006 1500-46 DESIGN PATENTS 1504.05

3. In bracket 9, add comments, if necessary. Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. ¶ 15.30 Telephone Restriction Under 35 U.S.C. 121 However, design protection does not extend to patentably distinct (Segregable Parts or Combination/Subcombination) segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 This application discloses the following embodiments: O.G. 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, Embodiment 1 – Figs. [1] drawn to a [2]. 144 USPQ 562 (D.D.C.1965). Embodiment 2 – Figs. [3] drawn to a [4]. The above identified embodiments are considered by the [5] examiner to present overall appearances that are basically the Restriction to one of the following inventions is required under same. Furthermore, the differences between embodiments are 35 U.S.C. 121: considered minor and patentably indistinct, or are shown to be Group I – Embodiment [6] obvious in view of analogous prior art cited. Accordingly, they are Group II – Embodiment [7] deemed to be obvious variations and are being retained and exam- [8] ined in the same application. Any rejection of one embodiment The designs as grouped are distinct from each other since over prior art will apply equally to all other embodiments. Ex under the law a design patent covers only the invention disclosed parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No as an entirety, and does not extend to patentably distinct segrega- argument asserting patentability based on the differences between ble parts; the only way to protect such segregable parts is to apply the embodiments will be considered once the embodiments have for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG been determined to comprise a single inventive concept. Failure 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, of applicant to traverse this determination in reply to this action 144 USPQ 562 (D.D.C. 1965). It is further noted that patentably will be considered an admission of lack of patentable distinction distinct combination/subcombination subject matter must be sup- between the embodiments. ported by separate claims, whereas only a single claim is permis- sible in a design patent application. See In re Rubinfield, 270 F.2d Examiner Note: 391, 123 USPQ 210 (CCPA 1959). 1. In bracket 5, add embodiments as necessary. [9] 2. Insert an explanation of the differences between the designs During a telephone discussion with [10] on [11], a provisional in the explanations of the embodiments; for example, Figs. 1 – 5 election was made [12] traverse to prosecute the invention of directed to a cup and saucer; Figs. 6 – 9 directed to a saucer. Group [13]. Affirmation of this election should be made by appli- 3. It is possible and proper that embodiments may be listed in cant in replying to this Office action. both explanatory paragraphs. Group [14] withdrawn from further consideration by the exam- iner, 37 CFR 1.142(b) as being for a nonelected invention. ¶ 15.27.07 Restriction Not Required (Change in Appearance and Scope – First Action Issue) Examiner Note: This application discloses the following embodiments: 1. In bracket 5, add embodiments as necessary. Embodiment 1 – Figs. [1] drawn to a [2]. 2. In bracket 8, add groups as necessary. Embodiment 2 – Figs. [3] drawn to a [4]. 3. In bracket 9, insert additional comments, if necessary. [5] Embodiment(s) [6] involve a difference in appearance. Multi- Form paragraph 15.27.06 or 15.27.07, if appropri- ple embodiments of a single inventive concept may be included in ate, may be used to notify applicant that restriction is the same design application only if they are patentably indistinct. not required because the designs are not patentably In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). distinct. Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included ¶ 15.27.06 Restriction Not Required (Change in in the same design application. In re Platner, 155 USPQ 222 Appearance and Scope – First Action Non Issue) (Comm’r Pat. 1967). This application discloses the following embodiments: Embodiment(s) [7] directed to the combination(s) in relation to Embodiment 1 - Figs. [1] drawn to a [2]. Embodiment(s) [8] directed to the subcombination(s)/element(s). Embodiment 2 - Figs. [3] drawn to a [4]. Designs which involve a change in scope may be included in the [5] same design application only if they are patentably indistinct. Embodiments [6] involve a difference in appearance. Multiple However, design protection does not extend to patentably distinct embodiments of a single inventive concept may be included in the segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 same design application only if they are patentably indistinct. In O.G. 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). 144 USPQ 562 (D.D.C.1965). Embodiments that are patentably distinct from one another do not The above identified embodiments are considered by the constitute a single inventive concept and thus may not be included examiner to present overall appearances that are basically the in the same design application. In re Platner, 155 USPQ 222 same. Furthermore, the differences between embodiments are (Comm’r Pat. 1967). considered minor and patentably indistinct, or are shown to be Embodiment(s) [7] directed to the combination(s) in relation to obvious in view of analogous prior art cited. Accordingly, they Embodiment(s) [8] directed to the subcombination(s)/element(s). were deemed to be obvious variations and are being retained and

1500-47 Rev. 5, Aug. 2006 1504.05 MANUAL OF PATENT EXAMINING PROCEDURE examined in the same application. Accordingly, they were deemed one another within the group and, therefore, patentably indistinct. to comprise a single inventive concept and have been examined These embodiments thus comprise a single inventive concept and together. are grouped together. Restriction is required under 35 U.S.C. 121 to one of the pat- Examiner Note: entably distinct groups of designs. 1. In bracket 5, add embodiments as necessary. A reply to this requirement must include an election of a single 2. Insert an explanation of the differences between the designs group for prosecution on the merits even if this requirement is tra- in the explanations of the embodiments; for example, Figs. 1 – 5 versed. 37 CFR 1.143. Any reply that does not include an election directed to a cup and saucer; Figs. 6 – 9 directed to a saucer. of a single group will be held nonresponsive. Applicant is also 3. It is possible and proper that embodiments may be listed in requested to direct cancellation of all drawing figures and the cor- both explanatory paragraphs. responding descriptions which are directed to the nonelected groups. The following form paragraphs may be used in a Should applicant traverse this requirement on the grounds that restriction requirement. the groups are not patentably distinct, applicant should present Examiners must include a brief explanation of the evidence or identify such evidence now of record showing the differences between embodiments that render them groups to be obvious variations of one another. If the groups are patentably distinct. determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply ¶ 15.27.08 Restriction with Differences in Appearance and equally to all other groups. Ex parte Appeal No. 315-40, 152 Scope USPQ 71 (Bd. App. 1965). No argument asserting patentability This application discloses the following embodiments: based on the differences between the groups will be considered Embodiment 1: Figs. [1] drawn to a [2]. once the groups have been determined to comprise a single inven- tive concept. Embodiment 2: Figs. [3] drawn to a [4]. In view of the above requirement, action on the merits is [5] deferred pending compliance with the requirement in accordance The above embodiments divide into the following patentably with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. distinct groups of designs: 1960). Group I: Embodiment [6] Group II: Embodiment [7] Examiner Note: [8] 1. In bracket 5, add embodiments as necessary. Group(s) [9] involve a difference in appearance. Multiple 2. In bracket 8, add embodiments as necessary. embodiments of a single inventive concept may be included in the 3. Insert an explanation of the differences between the designs same design application only if they are patentably indistinct. In in the explanations of the embodiments; for example, Figs. 1 – 5 re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). directed to a cup and saucer; Figs. 6 – 9 directed to a saucer. Embodiments that are patentably distinct from one another do not 4. It is possible and proper that embodiments may be listed in constitute a single inventive concept and thus may not be included both explanatory paragraphs. in the same design application. In re Platner, 155 USPQ 222 5. In bracket 10, insert an explanation of the differences (Comm’r Pat. 1967). The [10] creates patentably distinct designs. between the designs. Because of the differences identified, the embodiments are considered to either have overall appearances that are not basi- ¶ 15.28.02 Telephone Restriction with Differences in cally the same, or if they are basically the same, the differences Appearance and Scope are not minor and patentably indistinct or are not shown to be This application discloses the following embodiments: obvious in view of analogous prior art. Embodiment 1: Figs. [1] drawn to a [2]. Group(s) [11] directed to the combination(s) in relation to Embodiment 2: Figs. [3] drawn to a [4]. Group(s) [12] directed to the subcombination(s)/element(s). The [5] designs as grouped are distinct from each other since under the The above embodiments divide into the following patentably law a design patent covers only the design disclosed as an entirety, distinct groups of designs: and does not extend to patentably distinct segregable parts; the Group I: Embodiment [6] only way to protect such segregable parts is to apply for separate Group II: Embodiment [7] patents. Ex parte Sanford, 1914 C.D. 69, 204 O.G. 1346 (Comm’r [8] Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 Group(s) [9] involve a difference in appearance. Multiple USPQ 562 (D.D.C.1965). It is further noted that combination/sub- embodiments of a single inventive concept may be included in the combination subject matter, if patentably distinct, must be sup- same design application only if they are patentably indistinct. In ported by separate claims, whereas only a single claim is re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). permissible in a design patent application. In re Rubinfield, 270 Embodiments that are patentably distinct from one another do not F.2d 391, 123 USPQ 210 (CCPA 1959). constitute a single inventive concept and thus may not be included In any groups that include multiple embodiments, the embodi- in the same design application. In re Platner, 155 USPQ 222 ments are considered by the examiner to be obvious variations of (Comm’r Pat. 1967). The [10] creates patentably distinct designs.

Rev. 5, Aug. 2006 1500-48 DESIGN PATENTS 1504.05

Because of the differences identified, the embodiments are The following form paragraphs may be used to considered to either have overall appearances that are not basi- notify applicant that the nonelected invention(s) are cally the same, or if they are basically the same, the differences withdrawn from consideration. are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art. ¶ 15.34 Groups Withdrawn From Consideration After Group(s) [11] directed to the combination(s) in relation to Traverse Group(s) [12] directed to the subcombination(s)/element(s). The Group [1] withdrawn from further consideration by the exam- designs as grouped are distinct from each other since under the iner, 37 CFR 1.142(b), as being for a nonelected design, the law a design patent covers only the design disclosed as an entirety, requirement having been traversed in the reply filed on [2]. and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate ¶ 15.35 Cancel Nonelected Design (Traverse) patents. Ex parte Sanford, 1914 C.D. 69, 204 O.G. 1346 (Comm’r The restriction requirement maintained in this application is or Pat. 1914); Blumcraft of Pittsburg v. Ladd, 144 USPQ 562 has been made final. Applicant must cancel Group [1] directed to (D.D.C.1965). It is further noted that combination/subcombina- the design(s) nonelected with traverse in the reply filed on [2], or tion subject matter, if patentably distinct, must be supported by take other timely appropriate action (37 CFR 1.144). separate claims, whereas only a single claim is permissible in a design patent application. In re Rubinfield, 270 F.2d 391, 123 ¶ 15.36 Groups Withdrawn From Consideration Without USPQ 210 (CCPA 1959). Traverse Group [1] withdrawn from further consideration by the exam- In any groups that include multiple embodiments, the embodi- iner, 37 CFR 1.142(b), as being for the nonelected design. Elec- ments are considered by the examiner to be obvious variations of tion was made without traverse in the reply filed on [2]. one another within the group and, therefore, patentably indistinct. These embodiments thus comprise a single inventive concept and ¶ 15.37 Cancellation of Nonelected Groups, No Traverse are grouped together. In view of the fact that this application is in condition for Restriction is required under 35 U.S.C. 121 to one of the pat- allowance except for the presence of Group [1] directed to a entably distinct groups of designs. design or designs nonelected without traverse in the reply filed on During a telephone discussion with [13] on [14], a provisional [2], and without the right to petition, such Group(s) have been election was made [15] traverse to prosecute the invention of canceled. Group [16]. Affirmation of this election should be made by appli- cant in replying to this Office action. III. TRAVERSAL OF RESTRICTION RE- Group [17] is withdrawn from further consideration by the QUIREMENT examiner, 37 CFR 1.142(b), as being for a nonelected invention. If a response to a restriction requirement includes Examiner Note: an election with traverse on the grounds that the 1. In bracket 5, add embodiments as necessary. groups are not patentably distinct, applicant must 2. In bracket 8, add groups as necessary. present evidence or identify such evidence of record 3. Insert an explanation of the differences between the designs showing the groups to be obvious variations of one in the explanations of the embodiments; for example, Figs. 1 – 5 another. Traversal of a restriction requirement alone directed to a cup and saucer; Figs. 6 – 9 directed to a saucer. without an explanation in support thereof will be 4. It is possible and proper that embodiments may be listed in treated as an election without traverse. See MPEP § both explanatory paragraphs. 818.03(a) and form paragraph 8.25.02. 5. In bracket 10, insert an explanation of the differences A traversal of a restriction requirement based on between the designs. there being no serious burden to an examiner to 6. In bracket 15, insert --with-- or --without--. search and examine an entire application (as noted in ¶ 15.33 Qualifying Statement To Be Used In Restriction MPEP § 803) is not applicable to design patent appli- When A Common Embodiment Is Included In More Than cations. The fact that the embodiments may be One Group searched together cannot preclude a requirement for The common embodiment is included in more than a single restriction if their appearances are considered patent- group as it is patentably indistinct from the other embodiment(s) ably distinct, since patentably distinct embodiments in those groups and to give applicant the broadest possible choices cannot be supported by a single formal design claim. in his or her election. If the common embodiment is elected in this Also, clear admission on the record by the applicant application, then applicant is advised that the common embodi- ment should not be included in any continuing application to that the embodiments are not patentably distinct (as avoid a rejection on the ground of double patenting under 35 noted in MPEP § 809.02(a)) will not overcome a U.S.C. 171 in the new application. requirement for restriction if the embodiments do not

1500-49 Rev. 5, Aug. 2006 1504.06 MANUAL OF PATENT EXAMINING PROCEDURE have overall appearances that are basically the same Double patenting rejections are based on a compar- as each other. ison of claims. While there is a direct correlation When a traversal specifically points out the sup- between the drawings in a design application and the posed errors in a restriction, examiners must reevalu- claim, examiners must be aware that no such correla- ate the requirement in view of these remarks. If the tion is necessary in a utility application or patent. Sev- restriction requirement is to be maintained, it must be eral utility patents may issue with the identical repeated and made final in the next Office action and drawing disclosure but with claims directed to differ- the arguments answered. See MPEP § 821.01. No ent inventions. So any consideration of possible dou- application should be allowed on the next Office ble patenting rejections between a utility application action where a response to a restriction requirement or patent with a design application cannot be based on includes an election with traverse, unless the traversal the utility drawing disclosure alone. Anchor Hocking is withdrawn in view of a telephone interview, or the Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, examiner withdraws the restriction requirement. 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility 1504.06 Double Patenting [R-5] claims without any reliance whatsoever on the draw- ings. There are generally two types of double patenting rejections. One is the “same invention” type double If a provisional double patenting rejection (of any patenting rejection based on 35 U.S.C. 171 which type) is the only rejection remaining in two conflict- states in the singular that an inventor “may obtain a ing applications, the examiner should withdraw that patent.” The second is the “nonstatutory-type” double rejection in one of the applications (e.g., the applica- patenting rejection based on a judicially created doc- tion with the earlier filing date) and permit the appli- trine grounded in public policy and which is primarily cation to issue as a patent. The examiner should intended to prevent prolongation of the patent term by maintain the provisional double patenting rejection in prohibiting claims in a second patent not patentably the other application which rejection will be con- distinct from claims in a first patent. Nonstatutory verted into a double patenting rejection when the first double patenting includes rejections based on one- application issues as a patent. If more than two appli- way determination of obviousness, and two-way cations conflict with each other and one is allowed, determination of obviousness. the remaining applications should be cross rejected against the others as well as the allowed application. The charts in MPEP § 804 outline the procedure for For this type of rejection to be appropriate, there must handling all double patenting rejections. be either at least one inventor in common, or a com- Double patenting rejections are based on a compar- mon assignee. If the claims in copending design appli- ison of the claims in a patent and an application or cations or a design patent and design applications between two applications; the disclosure of the patent have a common assignee but different inventive enti- or application may be relied upon only to define the ties, rejections under 35 U.S.C. 102(e), (f) and (g)/ claim. 35 U.S.C. 171 specifically states that “a patent” 103(a) must be considered in addition to the double may be obtained if certain conditions are met; this use patenting rejection. See MPEP § 804, § 2136, § 2137 of the singular makes it clear that only one patent may and § 2138. issue for a design. Determining if a double patenting rejection is I. “SAME INVENTION” DOUBLE PATENT- appropriate involves answering the following inquir- ING REJECTIONS ies: Is the same design being claimed twice? If the answer is yes, then a rejection under 35 U.S.C. 171 A design - design statutory double patenting rejec- should be given on the grounds of “same invention” tion based on 35 U.S.C. 171 prevents the issuance of type double patenting. If not, are the designs directed a second patent for a design already patented. For this to patentably indistinct variations of the same inven- type of double patenting rejection to be proper, identi- tive concept? If the answer is yes, then a rejection cal designs with identical scope must be twice based on the nonstatutory type double patenting claimed. In re Goodman, 11 F.3d 1046, 29 USPQ2d should be given. 2010 (Fed. Cir. 1993). A design - utility “same inven-

Rev. 5, Aug. 2006 1500-50 DESIGN PATENTS 1504.06 tion” double patenting rejection is based on judicial tion as that set forth in claim [1] of copending Application No. [2]. doctrine as there is no statutory basis for this rejection See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969). because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can This is a provisional double patenting rejection because the claims have not in fact been patented. be applied against both claims. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). The “same Examiner Note: invention” type of double patenting rejection, whether Form paragraph 15.23.02 should follow all “same invention” statutory or nonstatutory, cannot be overcome by a type double patenting rejections. terminal disclaimer. In re Swett, 145 F.2d 631, 172 USPQ 72 (CCPA 1971). II. NONSTATUTORY DOUBLE PATENTING ¶ 15.23.02 Summary for “Same Invention” – Type Double Patenting Rejections REJECTIONS Applicant is advised that a terminal disclaimer may not be used A rejection based on nonstatutory double patenting to overcome a “same invention” type double patenting rejection. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); is based on a judicially created doctrine grounded in MPEP § 804.02. public policy so as to prevent the unjustified or improper timewise extension of the right to exclude Examiner Note: granted by a patent. In re Goodman, 11 F.3d 1046, This form paragraph should follow all “same invention” type 29 USPQ2d 2010 (Fed. Cir. 1993). double patenting rejections. A nonstatutory double patenting rejection of the ¶ 15.23 35 U.S.C. 171 Double Patenting Rejection obviousness-type applies to claims directed to the (Design-Design) same inventive concept with different appearances or The claim is rejected under 35 U.S.C. 171 on the ground of differing scope which are patentably indistinct from double patenting since it is claiming the same design as that each other. Nonstatutory categories of double patent- claimed in United States Design Patent No. [1]. ing rejections which are not the “same invention” type Examiner Note: may be overcome by the submission of a terminal dis- Form paragraph 15.23.02 should follow all “same invention” claimer. type double patenting rejections. **>In determining whether an obviousness-type ¶ 15.23.01 35 U.S.C. 171 Provisional Double Patenting double patenting rejection is appropriate, the exam- Rejection (Design-Design) iner must compare the overall appearance of the The claim is provisionally rejected under 35 U.S.C. 171 on the claimed design in the application with the overall ground of double patenting since it is claiming the same design as appearance of the claimed design in the conflicting that claimed in copending Application No. [1]. This is a provi- application or patent. The claim in the patent or con- sional double patenting rejection since the conflicting claims have not in fact been patented. flicting application must be considered as a whole, i.e., the elements of the claimed design of the refer- Examiner Note: ence are not considered individually as they may be Form paragraph 15.23.02 should follow all “same invention” when establishing a prima facie case of obviousness type double patenting rejections. under 35 U.S.C. 103(a). After the factual inquiries ¶ 15.24.07 Double Patenting Rejection (Design-Utility) mandated under Graham v. John Deere Co., 383 U.S. The claim is rejected under the judicially created doctrine of 1, 148 USPQ 459 (1966), have been made, as with a double patenting as being directed to the same invention as that rejection under 35 U.S.C. 103(a), the examiner must set forth in claim [1] of United States Patent No. [2]. See In re then determine whether the results of the inquiries Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969). support a conclusion of prima facie obviousness-type Examiner Note: double patenting. To establish a prima facie case of Form paragraph 15.23.02 should follow all “same invention” obviousness-type double patenting: (A) the conflict- type double patenting rejections. ing design claims must have overall appearances with ¶ 15.24.08 Provisional Double Patenting Rejection basically the same design characteristics; and (B) the (Design-Utility) differences between the two designs must be insuffi- The claim is provisionally rejected under the judicially created cient to patentably distinguish one design from the doctrine of double patenting as being directed to the same inven- other. Differences may be considered patentably

1500-51 Rev. 5, Aug. 2006 1504.06 MANUAL OF PATENT EXAMINING PROCEDURE insufficient when they are de minimis or obvious to than a year before the filing date of the application. If a designer of ordinary skill in the art. While the con- the patent is more than a year older than the applica- flicting application or patent (if less than a year older tion, the patent is considered to be “prior art” which than the application) used to establish a prima facie may be applied in a rejection under 35 U.S.C. 102(b)/ case of obviousness-type double patenting is not con- 103(a). The purpose of a terminal disclaimer is to sidered “prior art,”< the principle involved is the obviate a double patenting rejection by removing same. In re Zickendraht, 319 F.2d 225, 138 USPQ 22 potential harm to the public by issuing a second (CCPA 1963)(see concurring opinion of Judge Rich). patent. See MPEP § 804. In determining whether to make an obviousness- If the issue of double patenting is raised between a type double patenting rejection between designs hav- patent and a continuing application, examiners are ing differing scope, the examiner should compare the reminded that this ground of rejection can only be reference claim with the application claim. A rejec- made when the filing of the continuing application is tion is appropriate if: voluntary and not the direct, unmodified result of restriction requirement under 35 U.S.C. 121. See (A) The difference in scope is minor and patent- MPEP § 804.01. ably indistinct between the claims being compared; (B) Patent protection for the design, fully dis- Examiners should particularly note that a design- closed in and covered by the claim of the reference, design nonstatutory double patenting rejection does would be extended by the allowance of the claim in not always have to be made in both of the conflicting the later filed application; and applications. For the most part, these rejections will be made in each of the conflicting applications; but, if (C) No terminal disclaimer has been filed. the rejection is only appropriate in one direction, it is This kind of obviousness-type double patenting proper to reject only one application. The criteria for rejection in designs will occur between designs which determining whether a one-way obviousness determi- may be characterized as a combination (narrow claim) nation is necessary or a two-way obviousness deter- and a subcombination/element thereof (broad claim). mination is necessary is set forth in MPEP § 804. See discussion in MPEP § 1504.05, subsection II, B. However, in design-utility situations, a two-way obvi- If the designs are patentably indistinct and are ousness determination is necessary for the rejection to directed to the same inventive concept the examiner be proper. In re Dembiczak, 175 F.3d 994, must determine whether the subject matter of the nar- 50 USPQ2d 1614 (Fed. Cir. 1999). rower claim is fully disclosed in and covered by the The following form paragraphs may be used in broader claim of the reference. If the reference does making a double patenting rejection. Explanation not fully disclose the narrower claim, then a double should be provided in the appropriate brackets. patenting rejection should not be made. The addi- tional disclosure necessary to establish that the appli- ¶ 15.24.06 Basis for Nonstatutory Double Patenting, cant was in possession of the narrower claim at the “Heading Only” time the broader claim was filed may be in a title or The non-statutory double patenting rejection is based on a judi- **>descriptive statement< as well as in a broken line cially created doctrine grounded in public policy (a policy showing in the drawings. If the broader claim of the reflected in the statute) so as to prevent the unjustified or improper reference does not disclose the additional subject mat- timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. See In ter claimed in the narrower claim, then applicant re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In could not have claimed the narrower claim at the time re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van the application with the broader claim was filed and a Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, rejection under nonstatutory double patenting would 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, be inappropriate. 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A nonstatutory double patenting rejection may be A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejec- made between a patent and an application or provi- tion based on a nonstatutory double patenting ground provided the sionally between applications. Such rejection over a conflicting application or patent is shown to be commonly owned patent should only be given if the patent issued less with this application. See 37 CFR 1.130(b).

Rev. 5, Aug. 2006 1500-52 DESIGN PATENTS 1504.10

Effective January 1, 1994, a registered attorney or agent of Examiner Note: record may sign a terminal disclaimer. A terminal disclaimer 1. In bracket 1, insert conflicting patent number. signed by the assignee must fully comply with 37 CFR 3.73(b). 2. In bracket 2, insert secondary reference(s). 3. In bracket 3, insert an explanation of how the conflicting Examiner Note: claim in the patent is modified. This form paragraph must precede all nonstatutory double pat- 4. In bracket 4, identify the secondary reference(s) teaching the enting rejections as a heading, except “same invention” type. modification(s). ¶ 15.24 Obviousness-type Double Patenting Rejection 5. This form paragraph must be preceded by form paragraph (Single Reference) 15.24.06 and followed by form paragraph 15.68. The claim is rejected under the judicially created doctrine of ¶ 15.24.04 Provisional Obviousness-Type Double the obviousness-type double patenting of the claim in United Patenting Rejection (Multiple References) States Patent No. [1]. Although the conflicting claims are not The claim is provisionally rejected under the judicially created identical, they are not patentably distinct from each other because doctrine of the obviousness-type double patenting of the claim of [2]. copending Application No. [1] in view of [2]. At the time appli- Examiner Note: cant made the design, it would have been obvious to a designer of ordinary skill in the art to [3] as demonstrated by [4]. This is a 1. In bracket 1, insert prior U.S. Patent Number. provisional obviousness-type double patenting rejection because 2. In bracket 2, the differences between the conflicting claims the conflicting claims have not in fact been patented. must be identified and indicated as being minor and not distin- guishing the overall appearance of one over the other. Examiner Note: 3. This form paragraph must be preceded by form paragraph 1. In bracket 1, insert conflicting application number. 15.24.06 and followed by form paragraph 15.67. 2. In bracket 2, insert secondary reference(s). ¶ 15.24.03 Provisional Obviousness-Type Double 3. In bracket 3, insert an explanation of how the conflicting claim in the copending application is modified. Patenting Rejection (Single Reference) 4. In bracket 4, identify the secondary reference(s) teaching the The claim is provisionally rejected under the judicially created modification(s). doctrine of the obviousness-type double patenting of the claim of 5. This form paragraph must be preceded by form paragraph copending Application No. [1]. Although the conflicting claims 15.24.06 and followed by form paragraph 15.68. are not identical, they are not patentably distinct from each other because [2]. This is a provisional obviousness-type double pat- ¶ 15.68 Rationale for 35 U.S.C. 103(a) Rejection (Multiple enting rejection because the conflicting claims have not in fact References) been patented. This modification of the basic reference in light of the second- Examiner Note: ary prior art is proper because the applied references are so related 1. In bracket 1, insert conflicting application number. that the appearance of features shown in one would suggest the 2. In bracket 2, the differences between the conflicting claims application of those features to the other. See In re Rosen, 673 must be identified and indicated as being minor and not distin- F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d guishing the overall appearance of one over the other. 1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is noted that case law 3. This form paragraph must be preceded by form paragraph has held that a designer skilled in the art is charged with knowl- 15.24.06 and followed by form paragraph 15.67. edge of the related art; therefore, the combination of old elements, ¶ 15.67 Rationale for 35 U.S.C. 103(a) Rejection (Single herein, would have been well within the level of ordinary skill. Reference) See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). It is well settled that it is unobviousness in the overall appear- ance of the claimed design, when compared with the prior art, 1504.10 Priority Under 35 U.S.C. rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. 119(a)-(d) [R-5] See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961). 35 U.S.C. 172. Right of priority. The right of priority provided for by subsections (a) through ¶ 15.25 Obviousness-Type Double Patenting Rejection (d) of section 119 of this title and the time specified in section (Multiple References) 102(d) shall be six months in the case of designs. The right of pri- The claim is rejected under the judicially created doctrine of ority provided for by section 119(e) of this title shall not apply to the obviousness-type double patenting of the claim(s) in United designs. States Patent No. [1] in view of [2]. At the time applicant made the design, it would have been obvious to a designer of ordinary The provisions of 35 U.S.C. 119(a)-(d) apply to skill in the art to [3] as demonstrated by [4]. design patent applications. However, in order to

1500-53 Rev. 5, Aug. 2006 1504.10 MANUAL OF PATENT EXAMINING PROCEDURE obtain the benefit of an earlier foreign filing date, the (A) the name of the treaty under which the appli- United States application must be filed within cation was filed, 6 months of the earliest date on which any foreign (B) the name of at least one country other than the application for the same design was filed. Design United States in which the application has the effect applications may not make a claim for priority of a of, or is equivalent to, a regular national filing and under 35 U.S.C. 119(e). (C) the name and location of the national or inter- ¶ 15.01 Conditions Under 35 U.S.C. 119(a)-(d) governmental authority which received the applica- tion. Applicant is advised of conditions as specified in 35 U.S.C. 119(a)-(d). An application for a design patent for an invention filed in this country by any person who has, or whose legal repre- ¶ 15.02 Right of Priority Under 35 U.S.C. 119(b) sentatives have previously filed an application for a design patent, No application for design patent shall be entitled to the right of or equivalent protection for the same design in a foreign country priority under 35 U.S.C. 119(b) unless a claim therefor and a cer- which offers similar privileges in the case of applications filed in tified copy of the original foreign application, specification and the United States or in a WTO member country, or to citizens of drawings upon which it is based are filed in the United States the United States, shall have the same effect as the same applica- Patent and Trademark Office before the issue fee is paid, or at tion would have if filed in this country on the date on which the such time during the pendency of the application as required by application for patent for the same invention was first filed in such the Director not earlier than six (6) months after the filing of the foreign country, if the application in this country is filed within six application in this country. Such certification shall be made by the (6) months from the earliest date on which such foreign applica- , or other proper authority of the foreign country in tion was filed. which filed, and show the date of the application and of the filing of the specification and other papers. The Director may require a ¶ 15.01.01 Conditions Under 35 U.S.C. 172 Not Met translation of the papers filed if not in the English language, and such other information as deemed necessary. The claim for priority under 35 U.S.C. 119(a)-(d) to the [1] application is acknowledged, however, the claim for priority can- not be based on such application since it was filed more than six The notation requirement on design patent applica- (6) months before the filing of the application in the United States. tion file wrappers when foreign priority is claimed is 35 U.S.C 172. set forth in MPEP § 202.03.

Examiner Note: ¶ 15.04 Priority Under Bilateral or Multilateral Treaties 1. In bracket, insert the name of the foreign country. The United States will recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under such ¶ 15.03 Untimely Priority Papers bilateral or multilateral treaties as the Hague Agreement Concern- ing the International Deposit of Industrial Designs, the Benelux Receipt is acknowledged of the filing on [1] of a certified copy Designs Convention and European Community Design. In filing of the [2] application referred to in the oath or declaration. A a claim for priority of a foreign application previously filed under claim for priority cannot be based on said application, since the such a treaty, certain information must be supplied to the United United States application was filed more than six (6) months States Patent and Trademark Office. In addition to the application thereafter (35 U.S.C. 172). number and the date of filing of the application, the following information is requested: (1) the name of the treaty under which The United States will recognize claims for the the application was filed; (2) the name of at least one country right of priority under 35 U.S.C. 119(a)-(d) based on other than the United States in which the application has the effect applications filed under such bilateral or multilateral of, or is equivalent to, a regular national filing; and (3) the name treaties as the “Hague Agreement Concerning the and location of the national or international governmental author- International Deposit of Industrial Designs,” “Uni- ity which received such application. form Benelux Act on Designs and Models” and ** “European Community Design.” In filing a claim for priority of a foreign application previously filed under Attention is also directed to the paragraphs dealing such a treaty, certain information must be supplied to with the requirements where an actual model was the United States Patent and Trademark Office. In originally filed in Germany (MPEP § 201.14(b)). addition to the application number and the date of fil- See MPEP Chapter 200 and 37 CFR 1.55 for fur- ing of the foreign application, the following informa- ther discussion of the practice and procedure under tion is required: 35 U.S.C. 119(a)-(d).

Rev. 5, Aug. 2006 1500-54 DESIGN PATENTS 1504.20

1504.20 Benefit Under 35 U.S.C. 120 sought. See 37 CFR 1.78. The following format is sug- gested: “This is a continuation (or division) of Application [R-5] No.______, filed ______, now (abandoned, pending or U.S. Patent No.______).” 35 U.S.C. 120. Benefit of earlier filing date in the United States. < An application for patent for an invention disclosed in the man- ner provided by the first paragraph of section 112 of this title in an Attention is directed to the requirements for “con- application previously filed in the United States, or as provided by tinuing” applications set forth in MPEP § 201.07, section 363 of this title, which is filed by an inventor or inventors § 201.08, and § 201.11. Applicants are entitled to named in the previously filed application shall have the same claim the benefit of the filing date of earlier applica- effect, as to such invention, as though filed on the date of the prior tions for later claimed inventions under 35 U.S.C. 120 application, if filed before the patenting or abandonment of or ter- mination of proceedings on the first application or on an applica- only when the earlier application discloses that inven- tion similarly entitled to the benefit of the filing date of the first tion in the manner required by 35 U.S.C. 112, first application and if it contains or is amended to contain a specific paragraph. In all continuation and divisional applica- reference to the earlier filed application. No application shall be tions, a determination must be made by the examiner entitled to the benefit of an earlier filed application under this sec- as to whether the conditions for priority under tion unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pen- 35 U.S.C. 120 have been met. **>The claimed design dency of the application as required by the Director. The Director in a continuation application and in a divisional appli- may consider the failure to submit such an amendment within that cation must be disclosed in< the original time period as a waiver of any benefit under this section. The application. If this condition is not met, the applica- Director may establish procedures, including the payment of a tion is not entitled to the benefit of the earlier filing surcharge, to accept an unintentionally delayed submission of an amendment under this section. date and the examiner should notify applicant accord- ingly by specifying the reasons why applicant is not If applicant is entitled under 35 U.S.C. 120 to the entitled to claim the benefit under 35 U.S.C. 120. benefit of an earlier U.S. filing date, the statement Form paragraphs 2.09 and 2.10 may be used followed that, “This is a division [continuation] of design by a specific explanation as to why the later filed Application No.— — — —, filed — — —.” should application fails to comply with the requirements of appear in the first sentence of the specification. As set 35 U.S.C 120. The examiner should also require forth in 37 CFR 1.78(a)(2), the specification must applicant to cancel the claim for *>benefit< in the contain or be amended to contain such a reference in first sentence>(s)< of the specification >or submit a the first sentence>(s)< following the title unless the supplemental application data sheet, where appropri- reference is included in an application data sheet (37 ate<. CFR 1.76). The failure to timely submit such a refer- *>For applications filed prior to September 21, ence is considered a waiver of any benefit under 35 2004, in< the absence of a statement in the application U.S.C. 120. as originally filed incorporating by reference the dis- Form paragraph 15.26 may be used to remind closure of an earlier filed application, the disclosure in applicant that a reference to the prior application must a continuing application may not be amended to con- be included in the first sentence>(s)< of the specifica- form to that of the earlier filed application for which tion or in an application data sheet. priority is claimed. A mere statement that an applica- **> tion is a continuation or division of an earlier filed application is not an incorporation of anything into ¶ 15.26 Identification of Prior Application(s) in the application containing such reference for purposes Nonprovisional Applications - Benefit Claimed of satisfying the disclosure requirements of 35 U.S.C. Applicant is reminded of the following requirement: 112, first paragraph. In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). See also MPEP In a continuation or divisional application (other than a 608.01(p). >For applications filed on or after Septem- continued prosecution application filed under 37 CFR 1.53(d)), the first sentence(s) of the specification or the ber 21, 2004, 37 CFR 1.57(a) provides that a claim application data sheet (37 CFR 1.76) should include a refer- under 37 CFR 1.78 for the benefit of a prior-filed ence to the prior application(s) from which benefit is application, that was present on the filing date of

1500-55 Rev. 5, Aug. 2006 1504.20 MANUAL OF PATENT EXAMINING PROCEDURE the application, is considered an incorporation by ref- Examiner Note: erence as to inadvertently omitted material. See This form paragraph should be used to notify applicant that the MPEP § 201.17.< C-I-P application is not entitled to the benefit of the parent appli- cation under 35 U.S.C. 120. When the first application is found to be fatally defective under 35 U.S.C. 112 because of insufficient < disclosure to support an allowable claim and such Where a continuation-in-part application claims position has been made of record by the examiner, a benefit under 35 U.S.C. 120 of the filing date of an second design patent application filed as an alleged earlier application, **>which in turn claims the prior- “continuation-in-part” of the first application to sup- ity under 35 U.S.C. 119(a)-(d) of a foreign applica- ply the deficiency is not entitled to the benefit of the tion, and the conditions of 35 U.S.C. 120 are not met, earlier filing date. See Hunt Co. v. Mallinckrodt a determination as to whether the foreign application Chemical Works, 177 F.2d 583, 83 USPQ 277 (F2d for patent/registration has matured into a form of Cir. 1949) and cases cited therein. Also, a design patent protection must be made.< To determine the application filed as a “continuation-in-part” that status of the foreign application, the charts in MPEP changes the shape or configuration of a design dis- § 1504.02 should be used. ** If the foreign applica- closed in an earlier application is not entitled to the tion for patent/registration has matured into a form of benefit of the filing date of the earlier application. See patent protection and would anticipate or render the In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. claim in the alleged CIP application obvious, the Cir. 1983). However, a later filed application that design shown in the foreign application papers would changes the scope of a design claimed in an earlier qualify as prior art under 35 U.S.C. 102(d)/172 and filed application by reducing certain portions of the the claim should be rejected under 35 U.S.C. 102/103. drawing to broken lines is not a change in configura- >The claim for the benefit of the earlier filing date tion as defined by the court in Salmon. See MPEP under 35 U.S.C. 120 as a continuation-in-part should § 1504.04, subsection II. be denied and the claim for priority under 35 U.S.C. Unless the filing date of an earlier application is 119(a)-(d) should also be denied.< Form paragraph actually needed, for example, in the case of an inter- 15.75 may be used. ference or to avoid an intervening reference, there is **> no need for the examiner to make a determination in a ¶ 15.75 Preface to Rejection in Alleged CIP Based on 35 continuation-in-part application as to whether the U.S.C. 102(d)/172 requirement of 35 U.S.C. 120 is met. Note the hold- Reference to this design application as a continuation-in-part ings in In re Corba, 212 USPQ 825 (Comm’r Pat. under 35 U.S.C. 120 is acknowledged. Applicant is advised that 1981). the design disclosed in the parent application is not the same Form paragraph 15.74 may be used in a first Office design as the design disclosed in this application. Therefore, this action on the merits in any application identified as a application does not satisfy the written description requirement of 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not continuation-in-part which claims *>benefit< under entitled to benefit of the earlier filing date. 35 U.S.C. 120 to a prior application. The parent application claimed foreign priority under 35 **> U.S.C. 119(a) - (d). Insofar as the foreign application has matured into a patent/registration more than six months before the filing ¶ 15.74 Continuation-In-Part date of the present application, it qualifies as prior art under 35 U.S.C. 102(d)/172. Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that Examiner Note: the design disclosed in the parent application is not the same This form paragraph should be followed with a rejection under design as the design disclosed in this application. Therefore, this 35 U.S.C. 102 or 103(a) depending on the difference(s) between application does not satisfy the written description requirement of this claim and the design shown in the priority papers. 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date. However, unless the < filing date of the earlier application is actually needed, such as to avoid intervening prior art, the entitlement to priority in this CIP If the status of the foreign application cannot be application will not be considered. See In re Corba, 212 USPQ determined the following form paragraph should be 825 (Comm’r Pat. 1981). used instead.

Rev. 5, Aug. 2006 1500-56 DESIGN PATENTS 1504.30

**> (3) The applicant must file a request for expedited exami- nation including: ¶ 15.75.01 C-I-P Caution, Claim to Foreign Priority in (i) The fee set forth in § 1.17(k); and Earlier Filed Application (ii) A statement that a preexamination search was con- Reference to this application as a continuation-in-part under 35 ducted. The statement must also indicate the field of search and U.S.C. 120 is acknowledged. Applicant is advised that the design include an information disclosure statement in compliance with disclosed in the parent application is not the same design as the § 1.98. design disclosed in this applicatoin. Therefore, this application (b) The Office will not examine an application that is not in does not satisfy the written description requirement of 35 U.S.C. condition for examination (e.g, missing basic filing fee) even if 112, first paragraph, under 35 U.S.C. 120 and is not entitled to the applicant files a request for expedited examination under this benefit of the earlier filing date. section. However, unless the filing date of the earlier application is actually needed, such as to avoid intervening prior art, entitlement 37 CFR 1.155 establishes an expedited procedure to priority in this CIP application will not be considered. See In re for design applications. This expedited procedure Corba, 212 USPQ 825 (Comm’r Pat. 1981). became effective on September 8, 2000 and is avail- The parent application claimed foreign priority under 35 able to all design applicants who first conduct a pre- U.S.C. 119(a) - (d). Applicant is reminded that if the foreign appli- cation to which priority was claimed matured into a form of patent liminary examination search and file a request for protection prior to the filing of this application it qualifies as prior expedited treatment accompanied by the fee specified art under 35 U.S.C. 102(d)/172. in 37 CFR 1.17(k). This expedited treatment is intended to fulfill a particular need by affording rapid < design patent protection that may be especially impor- Where the conditions of 35 U.S.C. 120 are met, a tant where marketplace conditions are such that new design application may be considered a continuing designs on articles are typically in vogue for limited application of an earlier utility application. Con- periods of time. versely, this also applies to a utility application rely- A design application may qualify for expedited ing on the benefit of the filing date of an earlier filed examination provided the following requirements are design application. See In re Chu, 66 F.3d 292, met: 36 USPQ2d 1089 (Fed. Cir. 1995); In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). In (A) A request for expedited examination is filed addition, a design application may claim benefit from (Form PTO/SB/27 may be used); an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application. (B) The design application is complete and it Note also In re Berkman, 642 F.2d 427, 209 USPQ includes drawings in compliance with 37 CFR 1.84 45 (CCPA 1981) where the benefit of a design patent (see 37 CFR 1.154 and MPEP § 1503 concerning the application filing date requested under 35 U.S.C. 120 requirements for a complete design application); was denied in the later filed utility application of the (C) A statement is filed indicating that a preexam- same inventor. The Court of Customs and Patent ination search was conducted (a search made by a for- Appeals took the position that the design application eign patent office satisfies this requirement). The did not satisfy 35 U.S.C. 112, first paragraph, as statement must also include a list of the field of search required under 35 U.S.C. 120. such as by U.S. Class and Subclass (including domes- 1504.30 Expedited Examination [R-5] tic patent documents, foreign patent documents and nonpatent literature); 37 CFR 1.155. Expedited examination of design applications (D) An information disclosure statement in com- (a) The applicant may request that the Office expedite the pliance with 37 CFR 1.98 is filed; examination of a design application. To qualify for expedited examination. (E) The basic design application filing fee set (1) The application must include drawings in compliance forth in 37 CFR 1.16(*>b<) is paid; and with § 1.84; (2) The applicant must have conducted a preexamination (F) The fee for expedited examination set forth in search; and 37 CFR 1.17(k) is paid.

1500-57 Rev. 5, Aug. 2006 1504.30 MANUAL OF PATENT EXAMINING PROCEDURE

EXPEDITED EXAMINATION PROCEDURE specified at 37 CFR 1.17(k)) qualifies the application for expedited examination. Design applications requesting expedited examina- tion and complying with the requirements of 37 CFR Upon a decision by the Design TC Director to 1.155 are examined with priority and undergo expe- grant the request for expedited examination, the fees dited processing throughout the entire course of pros- are immediately processed, the application papers are ecution in the Office, including appeal, if any, to the promptly assigned an application number, and the Board of Patent Appeals and Interferences. All pro- application is dispatched to an examiner for expedited cessing is expedited from the date the request is examination. In addition, the applicant is notified that granted. examination is being expedited. The expedited treat- Design applicants seeking expedited examination ment under 37 CFR 1.155 occurs through initial may file a design application in the Office together examination processing and throughout the entire with a corresponding request under 37 CFR 1.155 by prosecution in the Office. Whereas, an application hand-delivering the application papers and the request granted special status pursuant to a successful “peti- **>to the Customer Service Window located at the tion to make special” under MPEP § 708.02 is priori- Randolph Building, 401 Dulany Street, Alexandria, tized while it is on the examiner’s docket so that the VA 22314.< For applicants who choose to file a application will be examined out of turn responsive to design application and the corresponding request each successive communication from the applicant under 37 CFR 1.155 by mail, the envelope should be requiring Office action. For a patentable design appli- addressed to: cation, the expedited treatment under 37 CFR 1.155 would be a streamlined filing-to-issuance procedure. Mail Stop Expedited Design This procedure further expedites design application Commissioner for Patents processing by decreasing clerical processing time as P.O. Box 1450 well as the time spent routing the application between processing steps. Alexandria, VA 22313-1450 Although a request under 37 CFR 1.155 may be Mail Stop Expedited Design should only be used filed subsequent to the filing of the design application, for the initial filing of design applications accompa- it is recommended that the request and the corre- nied by a corresponding request for expedited exami- sponding design application be filed together in order nation under 37 CFR 1.155. Mail Stop Expedited to optimize expeditious processing. Design should NOT be used for a request under 37 CFR 1.155 filed subsequent to the filing of the corre- If an application requesting expedited examination sponding design application. Instead, a subsequently is incomplete (not in condition for examination), an filed request under 37 CFR 1.155 should be made by appropriate notice will be mailed to the applicant facsimile transmission to the centralized facsimile identifying the reasons why the application is incom- number *>571-273-8300< with the notation “SPE- plete and requiring correction thereof. The Office will CIAL PROCEDURES SUBMISSION” included at not examine an application that is not in condition for the top of the first page and the corresponding appli- examination even if the applicant files a request for cation number identified. expedited examination. Design application filings addressed to Mail Stop If an application requesting expedited examination Expedited Design will be forwarded immediately to fails to comply with one or more of the requirements the Design TC Director’s office. Whether an applica- for expedited examination under 37 CFR 1.155, but tion requesting expedited examination is hand-deliv- the application is otherwise complete, the applicant ered to the **>Customer Service Window< or mailed will be promptly notified and required to comply with to Mail Stop Expedited Design, expedited processing all requirements under 37 CFR 1.155 within a short- is initiated at the Design TC Director’s office pro- ened time period extendable under 37 CFR 1.136(a). vided the application (including the design application Unless all requirements under 37 CFR 1.155 are filing fee) is in condition for examination and a com- timely met, the application will await action in its reg- plete request under 37 CFR 1.155 (including the fee ular turn.

Rev. 5, Aug. 2006 1500-58 DESIGN PATENTS 1509

Once a request under 37 CFR 1.155 is granted, must be followed. All changes to the examiners will expedite examination by examining shall be explained, in detail, beginning on a separate the application out-of-turn. Examiners are strongly sheet accompanying the papers including the amend- encouraged to use telephone interviews to resolve ment to the drawing. A marked-up copy of any minor problems. Clerical processing of the applica- amended drawing figure, including annotations indi- tion will be expedited as well. cating the changes made, should be submitted. The If the overall appearance of two or more patentably marked-up copy must be clearly labeled as “Anno- distinct embodiments of an article as disclosed in tated Marked-up Drawings” and it must be presented the drawings are different in appearance or scope, in the amendment or remarks section that explains the restriction will be required in accordance with change to the drawing. MPEP § 1504.05. If applicant refuses to make an A reissue application must be filed with a copy of election without traverse, the application will not all drawing views of the design patent regardless of be further examined at that time, and the application whether certain views are being cancelled or amended will await action in its regular turn. Divisional appli- in the reissue application. Inasmuch as the drawing is cations directed to nonelected inventions will not the primary means for showing the design being qualify for expedited examination unless the divi- claimed, it is important for purposes of comparison sional application meets on its own all requirements that the reissue of the design patent shows a changed for expedited examination under 37 CFR 1.155. Simi- drawing view in both its canceled and amended ver- larly, expedited status will not carry over to a continu- sions and/or show a previously printed drawing view ing application, including a CPA, unless the that has been canceled but not replaced. In addition to continuing application meets on its own all require- drawing views that are unchanged from the original ments for expedited examination under 37 CFR design patent, the drawing in the reissue application 1.155. may include the following views, all of which will be Once a request for expedited examination is printed as part of the design reissue patent: granted, prosecution will proceed according to the (1) CANCELED drawing view. Such a drawing procedure under 37 CFR 1.155. There is no provision view must be surrounded by brackets and must be for “withdrawal” from expedited examination proce- labeled as “Canceled.” For example, FIG. 3 (Can- dure. celed). If a drawing view is canceled but not replaced 1505 Allowance and Term of Design the corresponding figure description in the reissue specification must also be cancelled. However, if a Patent drawing view is cancelled and replaced by an 35 U.S.C. 173. Term of design patent. amended drawing view the corresponding figure Patents for designs shall be granted for the term of fourteen description in the reissue specification may or may years from the date of grant. not need to be amended. 1509 Reissue of a Design Patent [R-5] (2) AMENDED drawing view. Such a drawing view must be labeled as “Amended.” For example, See MPEP Chapter 1400 for practice and procedure FIG. 3 (Amended). When an amended drawing view in reissue applications. See also MPEP § 1457 regard- is present, there may or may not be a corresponding ing design reissue applications. canceled drawing view. If there is such a correspond- For design reissue application fee, see 37 CFR ing canceled drawing view, the amended and canceled 1.16(*>e<). For fee for issuing a reissue design drawing views should have the same figure number. patent, see 37 CFR 1.18(b). The specification of the reissue application need not The term of a design patent may not be extended by indicate that there is both a canceled version and an reissue. Ex parte Lawrence, 70 USPQ 326 (Comm’r amended version of the drawing view. Pat. 1946). If a reissue application is filed for the pur- (3) NEW drawing view. Such a drawing view must pose of correcting the drawing of a design patent, be labeled as “New” For example, FIG. 5 (New). The either by canceling views, amending views or adding new drawing view should have a new figure number, new views, the provisions of 37 CFR 1.173(b)(3) that is, a figure number that did not appear in the orig-

1500-59 Rev. 5, Aug. 2006 1510 MANUAL OF PATENT EXAMINING PROCEDURE inal design patent. The specification of the reissue any appropriate portion of the patent application dis- application must include a figure description of the closure including the drawing. However, if appearing new drawing view. on the drawing, the notice must be limited in print size If a drawing view includes both a cancelled and from 1/8 inch to 1/4 inch and must be placed within amended version, and the change in the amended ver- the “sight” of the drawing immediately below the fig- sion is for the purpose of converting certain solid lines ure representing the copyright material. If placed on a to broken lines, the reissue specification must include drawing in conformance with these provisions, the a statement indicating the purpose of the broken lines. notice will not be objected to as extraneous matter under 37 CFR 1.84. 1510 Reexamination (B) The content of the copyright notice must be limited to only those elements required by law. For See MPEP Chapter 2200 for practice and procedure example, “© 1983 John Doe” would be legally suffi- for reexamination applications. cient under 17 U.S.C. 401 and properly limited. 1511 Protest (C) Inclusion of a copyright notice will be permit- ted only if the following waiver is included at the See MPEP Chapter 1900 for practice and procedure beginning (preferably as the first paragraph) of the in protest. specification to be printed for the patent: 1512 Relationship Between Design A portion of the disclosure of this patent document con- tains material to which a claim for copyright is made. The Patent, Copyright, and Trademark copyright owner has no objection to the facsimile repro- [R-2] duction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark I. DESIGN PATENT/COPYRIGHT OVER- Office patent file or records, but reserves all other copy- right rights whatsoever. LAP (D) Inclusion of a copyright notice after a Notice There is an area of overlap between copyright and of Allowance has been mailed will be permitted only design patent statutes where the author/inventor can if the criteria of 37 CFR 1.312 have been satisfied. secure both a copyright and a design patent. Thus an ornamental design may be copyrighted as a work of Any departure from these conditions may result in a art and may also be subject matter of a design patent. refusal to permit the desired inclusion. If the waiver The author/inventor may not be required to elect required under condition (C) above does not include between securing a copyright or a design patent. See the specific language “(t)he copyright owner has no In re Yardley, 493 F.2d 1389, 181 USPQ 331. In objection to the facsimile reproduction by anyone of Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (1954), the patent document or the patent disclosure, as it the Supreme Court noted the election of protection appears in the U.S. Patent and Trademark Office doctrine but did not express any view on it since a patent file or records....”, the copyright notice will be design patent had been secured in the case and the objected to as improper. issue was not before the Court. See form paragraph 15.55 which repeats this infor- See form paragraph 15.55 which repeats this infor- mation. mation. >

II. INCLUSION OF COPYRIGHT NOTICE ¶ 15.55 Design Patent-Copyright Overlap There is an area of overlap between Copyright and Design It is the policy of the U.S. Patent and Trademark Patent Statutes where an author/inventor can secure both a Copy- Office to permit the inclusion of a copyright notice in right and a Design Patent. Thus, an ornamental design may be copyrighted as a work of art and may also be the subject matter of a design patent application, and thereby any patent a Design Patent. The author/inventor may not be required to elect issuing therefrom, under the following conditions. between securing a copyright or a design patent. See In re Yardley, 181 USPQ 331 (CCPA 1974). In Mazer v. Stein, 100 USPQ 325 (A) A copyright notice must be placed adjacent to (U.S. 1954), the Supreme Court noted the election of protection the copyright material and, therefore, may appear at doctrine but did not express any view on it since a Design Patent

Rev. 5, Aug. 2006 1500-60 DESIGN PATENTS 1512 had been secured in the case and the issue was not before the rights are separate and distinct from those pertaining Court. to trademarks, and that no right accruing from one is It is the policy of the Patent and Trademark Office to permit the dependent or conditioned by the right concomitant to inclusion of a copyright notice in a Design Patent application, and thereby any patent issuing therefrom, under the following condi- the other. tions: See form paragraph 15.55.01 which repeats this (1) A copyright notice must be placed adjacent to the copy- information. right material and, therefore, may appear at any appropriate por- > tion of the patent application disclosure including the drawing. However, if appearing on the drawing, the notice must be limited ¶ 15.55.01 Design Patent - Trademark Overlap in print size from 1/8 inch to 1/4 inch and must be placed within A design patent and a trademark may be obtained on the same the “sight” of the drawing immediately below the figure repre- subject matter. The Court of Customs and Patent Appeals, in In re senting the copyright material. If placed on a drawing in conform- Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (CCPA ance with these provisions, the notice will not be objected to as 1964), later reaffirmed by the same court at 372 F.2d 539, 152 extraneous matter under 37 CFR 1.84. USPQ 593 (CCPA 1967), has held that the underlying purpose (2) The content of the copyright notice must be limited to and essence of patent rights are separate and distinct from those only those elements required by law. For example, “© 1983 John pertaining to trademarks, and that no right accruing from the one Doe” would be legally sufficient under 17 U.S.C. 401 and prop- is dependent upon or conditioned by any right concomitant to the erly limited. other. (3) Inclusion of a copyright notice will be permitted only if the following waiver is included at the beginning (preferably as < the first paragraph) of the specification to be printed for the patent: IV. INCLUSION OF TRADEMARKS IN DE- SIGN PATENT APPLICATIONS A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copy- A. Specification right owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, The use of trademarks in design patent application as it appears in the Patent and Trademark Office patent file specifications is permitted under limited circum- or records, but reserves all other copyrights whatsoever. stances. See MPEP § 608.01(v). This section assumes (4) Inclusion of a copyright notice after a Notice of Allow- that the proposed use of a trademark is a legal use ance has been mailed will be permitted only if the criteria of 37 under Federal trademark law. CFR 1.312 have been satisfied. B. Title Any departure from these conditions may result in a refusal to permit the desired inclusion. If the waiver required under condi- It is improper to use a trademark alone or coupled tion (3) above does not include the specific language “(t)he copy- with the word “type” (e.g., Band-Aid type Bandage) right owner has no objection to the facsimile reproduction by in the title of a design. Examiners must object to the anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or use of a trademark in the title of a design application records...,” the copyright notice will be objected to as improper. and require its deletion therefrom. < C. Drawings The files of design patents D-243,821, D-243,824, and D-243,920 show examples of an earlier similar When a trademark is used in the drawing disclosure procedure. of a design application, the specification must include a statement preceding the claim identifying the trade- III. DESIGN PATENT/TRADEMARK OVER- mark material forming part of the claimed design and LAP the name of the owner of the registered trademark. Form paragraph 15.76 may be used. A design patent and a trademark may be obtained on the same subject matter. The CCPA, in In re Mogen ¶ 15.76 Trademark in Drawing David Wine Corp., 328 F.2d 925, 140 USPQ 575 The [1] forming part of the claimed design is a registered trade- mark of [2]. The specification must be amended to include a (CCPA 1964), later reaffirmed by the same court at statement preceding the claim identifying the trademark material 372 F.2d *>539<, 152 USPQ 593 (CCPA 1967), held forming part of the claimed design and the name of the owner of that the underlying purpose and essence of patent the trademark.

1500-61 Rev. 5, Aug. 2006 1513 MANUAL OF PATENT EXAMINING PROCEDURE

Examiner Note: 1513 Miscellaneous 1. In bracket 1, identify the trademark material. 2. In bracket 2, identify the trademark owner. With respect to copies of references being supplied to applicant in a design patent application, see MPEP Any derogatory use of a trademark in a design § 707.05(a). application is prohibited and will result in a rejection Effective May 8, 1985, the Statutory Invention of the claim under 35 U.S.C. 171 as being offensive Registration (SIR), 35 U.S.C. 157, and 37 CFR 1.293 and, therefore, improper subject matter for design - 1.297 replaced the former patent protection. Cf. Dallas Cowboys Cheerleaders, Program. The Statutory Invention Registration (SIR) Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, Program applies to utility, plant, and design applica- 203 USPQ 161 (2d Cir. 1979) and Coca-Cola Co. v. tions. See MPEP Chapter 1100. Gemini Rising Inc., 346 F. Supp. 1183, 175 USPQ 56 (E.D.N.Y. 1972). ●●●●●●●●●●●●●●●●●●●●●●●●●●●●●

Rev. 5, Aug. 2006 1500-62 Chapter 1600 Plant Patents

The term “plant” has been interpreted to mean 1601 Introduction: The Act, Scope, Type of Plants “plant” in the ordinary and accepted sense and not in Covered the strict scientific sense and thus excludes bacteria. 1602 Rules Applicable In re Arzberger, 112 F. 2d 834, 46 USPQ 32 (CCPA 1603 Elements of a Plant Application 1940). The term “plant” thus does not include asexual 1604 Applicant, Oath or Declaration propagating material, per se. Ex parte Hibberd, 1605 Specification and Claim 227 USPQ 443, 447 (Bd. Pat. App. & Int. 1985). 1606 Drawings An asexually reproduced plant may alternatively be 1607 Specimens protected under 35 U.S.C. 101, as the Plant 1608 Examination (35 U.S.C. 161) is not an exclusive form of protection 1609 Report of Agricultural Research Service which conflicts with the granting of utility patents to 1610 The Action plants. Ex parte Hibberd, 227 USPQ 443 (Bd. Pat. 1611 Issue App. & Int. 1985). Inventions claimed under 35 U.S.C. 101 may include the same asexually repro- 1612 UPOV Convention duced plant which is claimed under 35 U.S.C. 161, as 1613 Right of Priority Based Upon Application for well as plant materials and processes involving plant Plant Breeder’s Rights materials. The filing of a terminal disclaimer may be used in appropriate situations to overcome an obvi- ousness-type double patenting rejection based on claims to the asexually reproduced plant and/or fruit 1601 Introduction: The Act, Scope, and propagating material thereof in an application Type of Plants Covered under 35 U.S.C. 101 and the claim to the same asexu- ally reproduced plant in an application under The right to a plant patent stems from: 35 U.S.C. 161.

35 U.S.C. 161. Patents for plants. 35 U.S.C. 163. Grant. Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, In the case of a plant patent, the grant shall include the right to mutants, hybrids, and newly found seedlings, other than a tuber exclude others from asexually reproducing the plant, and from propagated plant or a plant found in an uncultivated state, may using, offering for sale, or selling the plant so reproduced, or any obtain a patent therefor, subject to the conditions and require- of its parts, throughout the United States, or from importing the ments of this title. plant so reproduced, or any parts thereof, into the United States. The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided. As provided in 35 U.S.C. 161, the rights associated with a plant patent include the rights associated with a Asexually propagated plants are those that are utility patent, and the “right to exclude” has additional reproduced by means other than from seeds, such as terms provided in 35 U.S.C. 163. A plant patent issu- by the rooting of cuttings, by layering, budding, graft- ing from an application filed after June 7, 1995 has a ing, inarching, etc. Plants capable of sexual reproduc- term which expires 20 years after the filing date of the tion are not excluded from consideration if they have application, or any earlier filing date claimed under also been asexually reproduced. 35 U.S.C. 120, 121 or 365(c). See MPEP § 2701. With reference to tuber propagated plants, for Plant patent applications will be published pursuant to which a plant patent cannot be obtained, the term 35 U.S.C. 122(b). “tuber” is used in its narrow horticultural sense as meaning a short, thickened portion of an underground 1602 Rules Applicable branch. Such plants covered by the term “tuber propa- gated” are the Irish potato and the Jerusalem arti- 37 CFR 1.161. Rules applicable. choke. This exception is made because this group The rules relating to applications for patent for other inventions alone, among asexually reproduced plants, is propa- or discoveries are also applicable to applications for patents for gated by the same part of the plant that is sold as food. plants except as otherwise provided.

1600-1 August 2001 1603 MANUAL OF PATENT EXAMINING PROCEDURE

1603 Elements of a Plant Application 1604 Applicant, Oath or Declaration

37 CFR 1.163. Specification and arrangement of 37 CFR 1.162. Applicant, oath or declaration. application elements in a plant application. The applicant for a plant patent must be the person who has ***** invented or discovered and asexually reproduced the new and dis- (b) The elements of the plant application, if applicable, tinct variety of plant for which a patent is sought (or as provided should appear in the following order: in §§ 1.42, 1.43 and 1.47). The oath or declaration required of the (1) Plant application transmittal form. applicant, in addition to the averments required by § 1.63, must (2) Fee transmittal form. state that he or she has asexually reproduced the plant. Where the (3) Application data sheet (see § 1.76). plant is a newly found plant, the oath or declaration must also (4) Specification. state that it was found in a cultivated area. (5) Drawings (in duplicate). (6) Executed oath or declaration (§ 1.162). A Plant Patent Application (35 U.S.C. 161) Decla- ***** ration, Form PTO/SB/03, may be used to submit a declaration. Form PTO/SB/81 may be used to appoint An application for a plant patent consists of the an attorney or agent. See MPEP § 402. same parts as other applications. For information per- taining to the oath or declaration, specification and In an application for a plant patent, there can be claim, or drawings, see MPEP § 1604, § 1605, or joint inventors. See Ex parte Kluis, 70 USPQ 165 (Bd. § 1606, respectively. App. 1945).

August 2001 1600-2 PLANT PATENTS 1604

Form PTO/SB/03. Plant Patent Application

1600-3 August 2001 1604 MANUAL OF PATENT EXAMINING PROCEDURE

August 2001 1600-4 PLANT PATENTS 1605

1605 Specification and Claim (d) The text of the specification or sections defined in para- graph (c) of this section, if applicable, should be preceded by a section heading in upper case, without underlining or bold type. 35 U.S.C. 162. Description, claim. 37 CFR 1.164. Claim. No plant patent shall be declared invalid for noncompliance with section 112 of this title if the description is as complete as is The claim shall be in formal terms to the new and distinct vari- reasonably possible. ety of the specified plant as described and illustrated, and may also recite the principal distinguishing characteristics. More than The claim in the specification shall be in formal terms to the one claim is not permitted. plant shown and described. The specification should include a complete 37 CFR 1.163. Specification and arrangement of detailed description of the plant and the characteristics application elements in a plant application. thereof that distinguish the same over related known (a) The specification must contain as full and complete a varieties, and its antecedents, expressed in botanical disclosure as possible of the plant and the characteristics thereof terms in the general form followed in standard botani- that distinguish the same over related known varieties, and its cal textbooks or publications dealing with the variet- antecedents, and must particularly point out where and in what ies of the kind of plant involved (evergreen tree, manner the variety of plant has been asexually reproduced. For a dahlia plant, rose plant, apple tree, etc.), rather than a newly found plant, the specification must particularly point out mere broad nonbotanical characterization such as the location and character of the area where the plant was discov- ered. commonly found in nursery or seed catalogs. The specification should also include the origin or parent- (b) The elements of the plant application, if applicable, age and the genus and species designation of the plant should appear in the following order: variety sought to be patented. The Latin name of the (1) Plant application transmittal form. genus and species of the plant claimed should be (2) Fee transmittal form. stated and preceded by the heading set forth in (3) Application data sheet (see § 1.76). 37 CFR 1.163(c)(4). The specification must particu- larly point out where, e.g., location or place of busi- (4) Specification. ness, and in what manner the variety of plant has been (5) Drawings (in duplicate). asexually reproduced. (6) Executed oath or declaration (§ 1.162). Form Paragraphs 16.01, 16.09, and 16.10 may be used to object to the disclosure under 37 CFR (c) The specification should include the following sections in order: 1.163(a). (1) Title of the invention, which may include an introduc- ¶ 16.01 Specification, Manner of Asexually Reproducing tory portion stating the name, citizenship, and residence of the The application is objected to under 37 CFR 1.163(a) because applicant. the specification does not “particularly point out where and in what manner the variety of plant has been asexually reproduced”. (2) Cross-reference to related applications (unless Correction is required. included in the application data sheet). (3) Statement regarding federally sponsored research or ¶ 16.09 Specification, Less Than Complete Description development. The disclosure is objected to under 37 CFR 1.163(a) because the specification presents less than a full and complete botanical (4) Latin name of the genus and species of the plant description and the characteristics which distinguish over related claimed. known varieties. More specifically: [1]. (5) Variety denomination. ¶ 16.10 Specification, Location of Plant Not Disclosed (6) Background of the invention. The disclosure is objected to under 37 CFR 1.163(a) because (7) Brief summary of the invention. the specification does not particularly point out the location and character of the area where the plant was discovered. (8) Brief description of the drawing. Where color is a distinctive feature of the plant, the (9) Detailed botanical description. color should be positively identified in the specifica- (10) A single claim. tion by reference to a designated color as given by a (11) Abstract of the disclosure. recognized color dictionary or color chart.

1600-5 August 2001 1606 MANUAL OF PATENT EXAMINING PROCEDURE

Form Paragraphs 16.02 and 16.03 may be used to Two copies of color drawings or photographs and a black and object to the disclosure or reject the claim, respec- white photocopy that accurately depicts, to the extent possible, the tively, because of a lack of a clear and complete dis- subject matter shown in the color drawing or photograph must be submitted. closure with regard to colors. If the drawings or photographs are in color, two ¶ 16.02 Colors Specified Do Not Correspond With Those Shown color copies of each drawing or photograph are The disclosure is objected to under 35 U.S.C. 112, first para- required. If the required copies of the drawings are not graph, because the [1] colors specified fail to correspond with included, the application will be accorded a filing those shown. date, but correction will be required before the appli- cation is forwarded for examination. The requirement ¶ 16.03 Rejection, 35 U.S.C. 112, 1st Paragraph, Non- Support for Colors under 37 CFR 1.165(b) for a black and white photo- The claim is rejected under 35 U.S.C. 112, first paragraph, as copy of any color drawing or photograph has been being unsupported by a clear and complete disclosure with regard waived. See 1246 O.G. 106 (May 22, 2001). to [1] colors, for the following reasons: [2]. 37 CFR 1.84. Standards for drawings. If the written description of a plant is deficient in certain respects (see, e.g., In re Greer, 484 F.2d 488, ***** 179 USPQ 301 (CCPA 1973)), a clarification or addi- (c) Identification of drawings. Identifying indicia, if pro- tional description of the plant, or even a wholesale vided, should include the title of the invention, inventor’s name, substitution of the original description so long as not and application number, or docket number (if any) if an applica- totally inconsistent and unrelated to the original tion number has not been assigned to the application. If this infor- description and photograph of the plant may be sub- mation is provided, it must be placed on the front of each sheet and centered within the top margin. mitted in reply to an Office action. Such submission will not constitute new matter under 35 U.S.C. 132. ***** Jessel v. Newland, 195 USPQ 678, 684 (Dep. (e) Type of paper. Drawings submitted to the Office must be Comm’r Pat. 1977). made on paper which is flexible, strong, white, smooth, non-shiny, The rules on Deposit of Biological Materials, and durable. All sheets must be reasonably free from cracks, 37 CFR 1.801-1.809, do not apply to plant patent creases, and folds. Only one side of the sheet may be used for the applications in view of the reduced disclosure require- drawing. Each sheet must be reasonably free from erasures and ments of 35 U.S.C. 162, even where a deposit of a must be free from alterations, overwritings, and interlineations. Photographs must be developed on paper meeting the sheet-size plant has been made in conjunction with a utility requirements of paragraph (f) of this section and the margin application (35 U.S.C. 101). requirements of paragraph (g) of this section. See paragraph (b) of A plant patent is granted only on the entire plant. It, this section for other requirements for photographs. therefore, follows that only one claim is necessary and (f) Size of paper. All drawing sheets in an application must only one is permitted. A method claim in a plant be the same size. One of the shorter sides of the sheet is regarded patent application is improper. An example of a as its top. The size of the sheets on which drawings are made must be: proper claim would be “A new and distinct variety of (1) 21.0 cm. by 29.7 cm. (DIN size A4), or hybrid tea rose plant, substantially as illustrated and (2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches). described herein.” (g) Margins. The sheets must not contain frames around the 1606 Drawings sight (i.e., the usable surface), but should have scan target points (i.e., cross-hairs) printed on two cater-corner margin corners. Each 37 CFR 1.165. Plant drawings. sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at (a) Plant patent drawings should be artistically and com- least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. petently executed and must comply with the requirements of (3/8 inch), thereby leaving a sight no greater than 17.0 cm. by § 1.84. View numbers and reference characters need not be 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, employed unless required by the examiner. The drawing must dis- and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/ close all the distinctive characteristics of the plant capable of 8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing visual representation. sheets. (b) The drawings may be in color. The drawing must be in color if color is a distinguishing characteristic of the new variety. *****

August 2001 1600-6 PLANT PATENTS 1608

(i) Arrangement of views. One view must not be placed ¶ 16.07 Drawing Figures Not Competently Executed upon another or within the outline of another. All views on the The disclosure is objected to under 37 CFR 1.165(a) because same sheet should stand in the same direction and, if possible, Fig. [1] not artistically and/or competently executed. stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary ¶ 16.11 Drawings in Improper Scale for the clearest illustration of the invention, the sheet may be The disclosure is objected to under 37 CFR 1.165(a) because turned on its side so that the top of the sheet, with the appropriate the drawings are of an inadequate scale to show the distinguishing top margin to be used as the heading space, is on the right-hand features of the plant. side. Words must appear in a horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the 1607 Specimens right side, except for graphs utilizing standard scientific conven- tion to denote the axis of abscissas (of X) and the axis of ordinates (of Y). 37 CFR 1.166. Specimens. The applicant may be required to furnish specimens of the ***** plant, or its flower or fruit, in a quantity and at a time in its stage of growth as may be designated, for study and inspection. Such (t) Numbering of sheets of drawings. The sheets of drawings specimens, properly packed, must be forwarded in conformity should be numbered in consecutive Arabic numerals, starting with with instructions furnished to the applicant. When it is not possi- 1, within the sight as defined in paragraph (g) of this section. ble to forward such specimens, plants must be made available for These numbers, if present, must be placed in the middle of the top official inspection where grown. of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle Specimens of the plant variety, its flower or fruit, of the top edge of the usable surface. The drawing sheet number- should not be submitted unless specifically called for ing must be clear and larger than the numbers used as reference by the examiner. characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an Form Paragraph 16.13 may be used to require spec- oblique line, with the first being the sheet number and the second imens. being the total number of sheets of drawings, with no other mark- ing. ¶ 16.13 Specimens Are Required (u) Numbering of views. Applicant [1] required to submit [2] in accordance with 37 CFR 1.166. (1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of 1608 Examination the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete 37 CFR 1.167. Examination. view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be pre- Applications may be submitted by the Patent and Trademark ceded by the abbreviation “FIG.” Where only a single view is used Office to the Department of Agriculture for study and report. in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear. The authority for submitting plant applications to the Department of Agriculture for report is given in: (2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brack- Executive Order No. 5464, October 17, 1930. Facili- ets, circles, or inverted commas. The view numbers must be larger tating the consideration of applications for plant patents. than the numbers used for reference characters.

***** I, Herbert Hoover, President of the United States of America, under the authority conferred upon me by act of (x) Holes. No holes should be made by applicant in the May 23, 1930 (Public No. 245) [now 35 U.S.C. 164], drawing sheets. entitled “An act to provide for plant patents,” and by vir- tue of all other powers vested in me relating thereto, do Form Paragraphs 16.06, 16.06.01, 16.07, and 16.11 hereby direct the Secretary of Agriculture: (1) to furnish may be used to object to the drawing disclosure. the Commissioner of Patents such available information of the Department of Agriculture, or (2) to conduct through the appropriate bureau or division of the depart- ¶ 16.06 Drawings Must Be in Duplicate ment such research upon special problems, or (3) to detail The disclosure is objected to under 37 CFR 1.165(b) because to the Commissioner of Patents such officers and employ- applicant has not provided copies of the drawing in duplicate. ees of the department, as the Commissioner may request Correction is required. for the purpose of carrying said act into effect.

1600-7 August 2001 1609 MANUAL OF PATENT EXAMINING PROCEDURE

35 U.S.C. 164. Assistance of Department of Agriculture. “Examination of the specification submitted indicates that the variety described is not identical with others with The President may by Executive order direct the Secretary of which our specialists are familiar.” Agriculture, in accordance with the requests of the Director, for the purpose of carrying into effect the provisions of this title with 1610 The Action respect to plants (1) to furnish available information of the Department of Agriculture, (2) to conduct through the appropriate bureau or division of the Department research upon special prob- The action on the application by the examiner will lems, or (3) to detail to the Director officers and employees of the include all matters as provided for in other types of Department. patent applications. See 37 CFR 1.161. With reference to the examination of the claim, the Plant applications are subject to the same examina- language must be such that it is directed to the “new tion process as any other national application. As and distinct variety of plant.” This is important as such, the statutory provisions with regard to patent- under no circumstance should the claim be directed to able subject matter, utility, , obviousness, dis- a new variety of flower or fruit in contradistinction to closure, and claim specificity requirements apply the plant bearing the flower or the tree bearing the (35 U.S.C. 101, 102, 103, and 112). The sole excep- fruit. This is in spite of the fact that it is accepted and tion in terms of applicability of these statutory provi- general botanical parlance to say “A variety of apple or a variety of blackberry” to mean a variety of apple sions is set forth in 35 U.S.C. 162. tree or a variety of blackberry plant. The prior art considered by the examiner is devel- Where the application is otherwise allowable, a oped by a search of appropriate subclasses of the claim which recites, for example “A new variety of United States patent classification system as well as apple characterized by,” may be amended by the patent and nonpatent literature data bases. Where insertion of __ tree __ after “apple” by an examiner’s appropriate, a report may be obtained from the Agri- amendment. cultural Research Service, Horticultural Research By the same token, the title of the invention must Branch, Department of Agriculture. relate to the entire plant and not to its flower or fruit, thus: Apple Tree, Rose Plant. 1609 Report of Agricultural Research Service Care should also be exercised that the specification does not contain unwarranted advertising, for exam- ple, “the disclosed plant being grown in the XYZ Where the examiner considers it necessary to the Nurseries of Topeka, Kansas.” It follows, also, that in examination of the plant patent application, a copy of the drawings any showing in the background of a the file and drawing of the application are forwarded plant, as a sign carrying the name of an individual, to the National Program Leader for Horticultural nursery, etc., is objectionable and deletion thereof is Crops, Agricultural Research Service (ARS), U.S. required. Nor should the specification include lauda- Department of Agriculture, along with a request for a tory expressions, such as, “The rose is prettier than report as to whether the plant variety disclosed is new any other rose.” Such expressions are wholly irrele- and distinct over known plant varieties. As the report vant. Where the fruit is described, statements in the specification as to the character and quality of prod- is merely advisory to the Office, it is placed in the file ucts made from the fruit are not necessary and should but is not given a paper number. The copy of the be deleted. report is customarily utilized by the examiner in the preparation of his or her action on the application. The Office action may include so much of any report of the ARS as the examiner deems necessary, The report may embody criticisms and objections or may embody no part of it. In the event of an inter- to the disclosure, may offer suggestions for correction view, the examiner, in his or her discretion, may show of such, or the report may merely state that: the entire report to the inventor or attorney.

August 2001 1600-8 PLANT PATENTS 1612

Form Paragraph 16.12 may be used to reference China, Colombia, Czech Republic, Denmark, Ecua- portions of the ARS report. dor, Estonia, Finland, France, Germany, Hungary, Ire- land, Israel, Italy, Japan, Kenya, Kyrgyzstan, Mexico, ¶ 16.12 Report From U.S. Dept. of Agriculture This application has been submitted to the U.S. Department of Netherlands, New Zealand, Norway, Panama, Para- Agriculture for a report. Pertinent portions follow: [1] guay, Poland, Portugal, Republic of Moldova, Russian Federation, Slovakia, Slovenia, South Africa, Spain, The report of the ARS is not in the nature of a pub- Sweden, Switzerland, Trinidad and Tobago, Ukraine, lication and matters raised therein within the personal United Kingdom, United States of America, and Uru- knowledge of the specialists of the ARS are not suffi- guay. Most states adhere to the 1978 text. The United cient basis for a rejection unless it is first ascertained States adheres to the 1991 text, and has a reservation by the examiner that the same can be supported by under Article 35(2) of the text (which allows plant affidavits by said specialists (37 CFR 1.104(d)(2)). patents rather than breeder’s rights certificates to be See Ex parte Rosenberg, 46 USPQ 393 (Bd. App. granted). 1939). The 1961, 1978, and 1991 texts guarantee to plant Form Paragraphs 16.04 and 16.08, as appropriate, breeders in each member state both national treatment may be used to reject the claim. and the right of priority in all other member states. In ¶ 16.04 Rejection, 35 U.S.C. 102 many states, new plant varieties are protected by The claim is rejected under 35 U.S.C. 102 as failing to patent- breeders’ rights laws rather than patent laws. Accord- ably distinguish over [1]. ingly, the Paris (Industrial Property) Convention can- ¶ 16.08 Rejection, 35 U.S.C. 112 not always be relied on to provide these and other The claim is rejected under 35 U.S.C. 112 [1] because [2]. rights. 1611 Issue Insofar as the patenting of asexually reproduced plants in the United States is concerned, both national The preparation of a plant patent application for treatment and the right of priority have been accorded issue involves the same procedure as for other appli- to foreign plant breeders since enactment of the plant cations (37 CFR 1.161), with the exception that where patent law in 1930 (now 35 U.S.C. 161-164). See there are color drawings, the better one of the two MPEP § 1613 for the right of priority based upon an judged, for example, by its sharpness or cleanliness is application for plant breeder’s rights. selected to be printed in the patent. Application of the UPOV Convention in the United The International Patent Classification symbols, States does not affect the examination of plant patent most recent edition, should be placed in the issuing applications, except in one instance. It is now neces- classification boxes on the file wrapper or on the Issue sary as a condition for receiving a plant patent to reg- Classification slip of all plant patent applications ister a variety denomination for that plant. Inclusion being sent to issue. of the variety denomination in the patent comprises its All plant patent applications should contain an registration. abstract when forwarded to the Office of Patent Publi- The registration process in general terms consists of cation. inclusion of a proposed variety denomination in the 1612 UPOV Convention plant patent application. The examiner must evaluate the proposed denomination in light of UPOV Conven- On November 8, 1981, the 1978 text of the “Inter- tion, Article 13. Basically, this Article requires that national Convention for the Protection of New Variet- the proposed variety denomination not be identical ies of Plants” (generally known by its French with or confusingly similar to other names utilized in acronym as the UPOV Convention) took effect in the the United States or other UPOV member countries United States and two other states that had not been for the same or a closely related species. In addition, party to the 1961 text, Ireland and New Zealand. As the proposed denomination must not mislead the aver- of September 24, 2000, 46 states were party to the age consumer as to the characteristics, value, or UPOV Convention: Argentina, Australia, Austria, identity of the patented plant. Ordinarily, the denomi- Belgium, Bolivia, Brazil, Bulgaria, Canada, Chile, nation proposed for registration in the United States

1600-9 August 2001 1613 MANUAL OF PATENT EXAMINING PROCEDURE must be the same as the denomination registered in not been set forth in the disclosure. 37 CFR 1.163(c)(4). Correc- another member state of UPOV. tion by adding such a name is required. Form Paragraph 16.05 may be used to object to the disclosure as lacking a common or market name or 1613 Right of Priority Based upon “denomination” of the plant. Application for Plant Breeder’s ¶ 16.05 Name or Denomination for Plant Missing Rights The disclosure is objected to under 37 CFR 1.121(e) because no “variety denomination” of the instant plant has been set forth in Pursuant to 35 U.S.C. 119(f), an application for a the disclosure. 37 CFR 1.163(c)(4). Correction by adding such a plant patent may rely upon an application for plant name is required. breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) for priority under ¶ 16.05.01 Latin Name of Genus and Species of the Plant 35 U.S.C. 119(a) through (c). Claimed Missing ●●●●●●●●●●●●●●●●●●●●●●●●●●●●●● The disclosure is objected to under 37 CFR 1.121(e) because the Latin name of the genus and species of the instant plant has

August 2001 1600-10 Chapter 1700 Miscellaneous

identifying prior art. The acceptance of payments 1701 Office Personnel Not To Express Opinion on from outside sources for prior art search activities Validity, Patentability, or Enforceability of may subject the employee to administrative disciplin- Patent ary action. 1701.01 Office Personnel Not To Testify When a field of search for an invention is 1702 Restrictions on Practice in Patent Matters requested, examiners should routinely inquire 1703 The Official Gazette whether the invention has been patented in the United 1704 Application Records and Reports States. If the invention has been patented, no field of 1705 Examiner Docket, Time, and Activity search should be suggested. Recordation ** Employees of the USPTO, particularly patent 1711 U.S.-Philippines Search Exchange examiners who examined an application which 1720 Dissemination of Court and Board of Patent matured into a patent or a reissued patent or who con- Appeals and Interferences Decisions ducted a reexamination proceeding, should not dis- 1721 Treatment of Court and Board of Patent cuss or answer inquiries from any person outside the Appeals and Interferences Decisions Affecting USPTO as to whether or not a certain reference or Patent and Trademark Office Policy and other particular evidence was considered during the Practice examination or proceeding and whether or not a claim 1730 Information Sources would have been allowed over that reference or other evidence had it been considered during the examina- 1701 Office Personnel Not To Express tion or proceeding. Likewise, employees are cautioned Opinion on Validity*>,< Patent- against answering any inquiry concerning any entry in ability>, or Enforceability< of the patent or reexamination file, including the extent Patent [R-3] of the field of search and any entry relating thereto. The record of the file of a patent or reexamination Every patent is presumed to be valid. 35 U.S.C. proceeding must speak for itself. 282, first sentence. Public policy demands that every Practitioners **>shall not make< improper inquir- employee of the United States Patent and Trademark ies of members of the patent examining corps. Inquir- Office (USPTO) refuse to express to any person any ies from members of the public relating to the matters opinion as to the validity or invalidity of, or the pat- discussed above must of necessity be refused and entability or unpatentability of any claim in any U.S. such refusal should not be considered discourteous or patent, except to the extent necessary to carry out an expression of opinion as to validity *>,< patent- ability >or enforceability. (A) an examination of a reissue application of the patent, The definitions set forth in 37 CFR 104.1 and the exceptions in 37 CFR 104.21 are applicable to this (B) a reexamination proceeding to reexamine the section.< patent, or (C) an interference involving the patent. 1701.01 Office Personnel Not To Testify The question of validity or invalidity is otherwise [R-3] exclusively a matter to be determined by a court. >Likewise, the question of enforceability or unen- It is the policy of the United States Patent and forceability is exclusively a matter to be determined Trademark Office (USPTO) that its employees, by a court.< Members of the patent examining corps including patent examiners, will not appear as wit- are cautioned to be especially wary of any inquiry nesses or give testimony in legal proceedings, except from any person outside the USPTO, including an under the conditions specified in 37 CFR Part 104, employee of another U.S. Government agency, the Subpart C. >The definitions set forth in 37 CFR 104.1 answer to which might indicate that a particular patent and the exceptions in 37 CFR 104.21 are applicable to should not have issued. No USPTO employee may this section.< Any employee who testifies contrary to pursue a bounty offered by a private sector source for this policy will be dismissed or removed.

1700-1 Rev. 8, July 2010 1701.01 MANUAL OF PATENT EXAMINING PROCEDURE

Whenever an employee of the USPTO, including a include United States v. Morgan, 313 U.S. 409, 422 patent examiner, is asked to testify or receives a sub- (1941) (improper to inquire into mental processes of poena, the employee shall immediately notify the quasi-judicial officer or to examine the manner and Office of the USPTO General Counsel. Inquiries extent to which the officer considered an administra- requesting testimony shall be also referred immedi- tive record); Western Electric Co. v. Piezo Technology, ately to the Office of the USPTO General Counsel. Inc., 860 F.2d 428, 8 USPQ2d 1853 (Fed. Cir. 1988) ** (patent examiner may not be compelled to answer Any individual desiring the testimony of an questions which probe the examiner’s technical employee of the USPTO, including the testimony of a knowledge of the subject matter of a patent); McCul- patent examiner or other quasi-judicial employee, loch Gas Processing Co. v. Department of Energy, must comply with the provisions of 37 CFR Part 104, 650 F.2d 1216, 1229 (Temp. Emer. Ct. App. 1981) Subpart C. (discovery of degree of expertise of individuals per- forming governmental functions not permitted); In re A request by a third party to take deposition testi- Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. mony of a patent examiner in a pending ex parte reex- 1988) (technical or scientific qualifications of exam- amination proceeding will generally be denied in iners-in-chief are not legally relevant in appeal under view of the ex parte nature of the reexamination pro- 35 U.S.C. 134 since board members need not be ceeding. skilled in the art to render obviousness decision); A request for testimony of an employee of the Lange v. Commissioner, 352 F. Supp. 166, 176 USPQ USPTO should be made to the Office of the USPTO 162 (D.D.C. 1972) (technical qualifications of exam- General Counsel at least 10 working days prior to the iners-in-chief not relevant in 35 U.S.C. 145 action). date of the expected testimony. In view of the discussion above, if an employee is >Patent examiners and other USPTO employees authorized to testify in connection with the performing or assisting in the performance of quasi- employee’s involvement or assistance in a quasi-judi- judicial functions, are forbidden to testify as experts cial proceeding which took place before the USPTO, or to express opinions as to the validity of any the employee will not be permitted to give testimony patent.< in response to questions that the Office determines are If an employee is authorized to testify, the impermissible. Impermissible questions include, but employee will be limited to testifying about facts are not limited to, questions directed to discovering within the employee’s personal knowledge. Employ- the mental processes or expertise of a quasi-judicial ees are prohibited from giving expert or opinion testi- official, such as: mony. Fischer & Porter Co. v. Corning Glass Works, 61 F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974). Like- (A) Information about that employee’s: wise, employees are prohibited from answering hypo- (1) Background; thetical or speculative questions. In re Mayewsky, 162 USPQ 86, 89 (E.D. Va. 1969) (deposition of an (2) Expertise; examiner must be restricted to relevant matters of fact (3) Qualifications to examine or otherwise and must avoid any hypothetical or speculative ques- consider a particular patent or trademark application; tions or conclusions based thereon); ShafferTool (4) Usual practice or whether the employee Works v. Joy Mfg. Co., 167 USPQ 170 (S.D. Tex. followed a procedure set out in any Office manual of 1970) (deposition of examiner should be limited to practice (including the MPEP or TMEP) in a particu- matters of fact and must not go into hypothetical or lar case; speculative areas or the bases, reasons, mental pro- (5) Consultation with another Office em- cesses, analyses, or conclusions of the examiner in ployee; acting upon a patent application). Employees will not be permitted to give testimony with respect to subject (6) Understanding of: matter which is privileged. Several court decisions (a) A patented invention, an invention limit testimony with respect to quasi-judicial func- sought to be patented, or patent application, patent, tions performed by employees. Those decisions reexamination or interference file;

Rev. 8, July 2010 1700-2 MISCELLANEOUS 1702

(b) Prior art; (D) The party agrees to notice the deposition at a (c) Registered subject matter, subject matter place convenient to the USPTO. The Conference sought to be registered, or a trademark application, Room in the Office of the USPTO General Counsel is registration, opposition, cancellation, interference, or deemed to be a place convenient to the Office; and concurrent use file; (E) The party agrees to supply a copy of the tran- (d) Any Office manual of practice; script of the deposition to the USPTO for its records. (e) Office regulations; Absent a written agreement meeting the conditions (f) Patent, trademark, or other law; or specified in paragraphs (A) through (E), a party must comply with the precise terms of 37 CFR 104.22(c) (g) The responsibilities of another Office and the USPTO will not permit a deposition without employee; issuance of a subpoena. (7) Reliance on particular facts or arguments; (B) To inquire into the manner in and extent to 1702 Restrictions on **>Practice in which the employee considered or studied material in Patent Matters< [R-3] performing a quasi-judicial function; or **> (C) To inquire into the bases, reasons, mental pro- 37 CFR 11.10. Restrictions on practice in patent matters. cesses, analyses, or conclusions of that Office (a) Only practitioners who are registered under § 11.6 or employee in performing the quasi-judicial function. individuals given limited recognition under § 11.9(a) or (b) are permitted to prosecute patent applications of others before the Any request for testimony addressed or delivered to Office; or represent others in any proceedings before the Office. the Office of the USPTO General Counsel shall com- (b) Post employment agreement of former Office employee. ply with 37 CFR 104.22(c). All requests must be in No individual who has served in the patent examining corps or writing. The need for a subpoena may be obviated elsewhere in the Office may practice before the Office after termi- nation of his or her service, unless he or she signs a written under- where the request complies with 37 CFR 104.22(c) if taking agreeing: the party requesting the testimony further meets the (1) To not knowingly act as agent or attorney for, or oth- following conditions: erwise represent, or assist in any manner the representation of, any other person: (A) The party requesting the testimony identifies (i) Before the Office, the civil action or other legal proceeding for which the (ii) In connection with any particular patent or patent testimony is being taken. The identification shall application, include the: (iii) In which said employee participated personally and substantially as an employee of the Office; and (1) Style of the case; (2) To not knowingly act within two years after terminat- (2) Civil action number; ing employment by the Office as agent or attorney for, or other- wise represent, or assist in any manner the representation of any (3) District in which the civil action is pend- other person: ing; (i) Before the Office, (4) Judge assigned to the case; and (ii) In connection with any particular patent or patent application, (5) Name, address, and telephone number of (iii) If such patent or patent application was pending counsel for all parties in the civil action. under the employee’s official responsibility as an officer or (B) The party agrees not to ask questions seeking employee within a period of one year prior to the termination of information which is precluded by 37 CFR 104.23; such responsibility. (3) The words and phrases in paragraphs (b)(1) and (b)(2) (C) The party shall comply with applicable provi- of this section are construed as follows: sions of the Federal Rules of Civil Procedure, includ- (i) Represent and representation mean acting as ing Rule 30, and give 10 working days notice to the patent attorney or patent agent or other representative in any Office of the USPTO General Counsel prior to the appearance before the Office, or communicating with an employee of the Office with intent to influence. date a deposition is desired. Fifteen working days (ii) Assist in any manner means aid or help another notice is required for any deposition which is desired person on a particular patent or patent application involving repre- to be taken between November 15 and January 15; sentation.

1700-3 Rev. 8, July 2010 1702 MANUAL OF PATENT EXAMINING PROCEDURE

(iii) Particular patent or patent application means any scope of his or her duties. A patent examiner would have “official patent or patent application, including, but not limited to, a provi- responsibility” for the patent applications assigned to him or her. sional, substitute, international, continuation, divisional, continua- (B) Ancillary matters and official responsibility. tion-in-part, or reissue patent application, as well as any protest, Administrative authority as used in paragraph (v) of this section reexamination, petition, appeal, or interference based on the means authority for planning, organizing and controlling a patent patent or patent application. or patent application rather than authority to review or make deci- (iv) Participate personally and substantially. (A) sions on ancillary aspects of a patent or patent application such as Basic requirements. The restrictions of § 11.10(a)(1) apply only to the regularity of budgeting procedures, public or community rela- those patents and patent applications in which a former Office tions aspects, or equal employment opportunity considerations. employee had “personal and substantial participation,” exercised Responsibility for such an ancillary consideration does not consti- “through decision, approval, disapproval, recommendation, the tute official responsibility for the particular patent or patent appli- rendering of advice, investigation or otherwise.” To participate cation, except when such a consideration is also the subject of the personally means directly, and includes the participation of a sub- employee’s proposed representation. ordinate when actually directed by the former Office employee in (C) Duty to inquire. In order for a former the patent or patent application. Substantially means that the employee, e.g., former patent examiner, to be barred from repre- employee’s involvement must be of significance to the matter, or senting or assisting in representing another as to a particular form a basis for a reasonable appearance of such significance. It patent or patent application, he or she need not have known, while requires more than official responsibility, knowledge, perfunctory employed by the Office, that the patent or patent application was involvement, or involvement on an administrative or peripheral pending under his or her official responsibility. The former issue. A finding of substantiality should be based not only on the employee has a reasonable duty of inquiry to learn whether the effort devoted to a patent or patent application, but also on the patent or patent application had been under his or her official importance of the effort. While a series of peripheral involve- responsibility. Ordinarily, a former employee who is asked to rep- ments may be insubstantial, the single act of approving or partici- resent another on a patent or patent application will become aware pation in a critical step may be substantial. It is essential that the of facts sufficient to suggest the relationship of the prior matter to participation be related to a “particular patent or patent applica- his or her former office, e.g., technology center, group or art unit. tion.” (See paragraph (b)(3)(iii) of this section.) If so, he or she is under a duty to make further inquiry. It would be prudent for an employee to maintain a record of only patent appli- (B) Participation on ancillary matters. An Office cation numbers of the applications actually acted upon by decision employee’s participation on subjects not directly involving the or recommendation, as well as those applications under the substantive merits of a patent or patent application may not be employee’s official responsibility which he or she has not acted “substantial,” even if it is time-consuming. An employee whose upon. official responsibility is the review of a patent or patent applica- tion solely for compliance with administrative control or budget- (D) Self-disqualification. A former employee, e.g., ary considerations and who reviews a particular patent or patent former patent examiner, cannot avoid the restrictions of this sec- application for such a purpose should not be regarded as having tion through self-disqualification with respect to a patent or patent participated substantially in the patent or patent application, application for which he or she otherwise had official responsibil- except when such considerations also are the subject of the ity. However, an employee who through self-disqualification does employee’s proposed representation. not participate personally and substantially in a particular patent or patent application is not subject to the lifetime restriction of (C) Role of official responsibility in determining paragraph (b)(1) of this section. substantial participation. Official responsibility is defined in para- (vi) Pending means that the matter was in fact referred graph (b)(3)(v) of this section. “Personal and substantial participa- to or under consideration by persons within the employee’s area of tion” is different from “official responsibility.” One’s official responsibility. responsibility may, however, play a role in determining the “sub- (4) Measurement of the two-year restriction period. The stantiality” of an Office employee’s participation. two-year period under paragraph (b)(2) of this section is measured (v) Official responsibility means the direct administra- from the date when the employee’s official responsibility in a par- tive or operating authority, whether intermediate or final, and ticular area ends, not from the termination of service in the Office, either exercisable alone or with others, and either personally or unless the two occur simultaneously. The prohibition applies to all through subordinates, to approve, disapprove, or otherwise direct particular patents or patent applications subject to such official Government actions. responsibility in the one-year period before termination of such (A) Determining official responsibility. Ordinarily, responsibility. those areas assigned by statute, regulation, Executive Order, job (c) Former employees of the Office. This section imposes description, or delegation of authority determine the scope of an restrictions generally parallel to those imposed in 18 U.S.C. employee’s “official responsibility”. All particular matters under 207(a) and (b)(1). This section, however, does not interpret these consideration in the Office are under the “official responsibility” statutory provisions or any other post-employment restrictions of the Director of the Office, and each is under that of any inter- that may apply to former Office employees, and such former mediate supervisor having responsibility for an employee who employees should not assume that conduct not prohibited by this actually participates in the patent or patent application within the section is otherwise permissible. Former employees of the Office,

Rev. 8, July 2010 1700-4 MISCELLANEOUS 1703 whether or not they are practitioners, are encouraged to contact (A) Patent number; the Department of Commerce for information concerning applica- (B) Title of the invention; ble post-employment restrictions. (C) Applicant’s name; (d) An employee of the Office may not prosecute or aid in any manner in the prosecution of any patent application before the (D) Applicant’s city and state of residence and, if Office. unassigned, applicant’s mailing address; (e) Practice before the Office by Government employees is (E) Assignee’s name, city and state of residence, subject to any applicable conflict of interest laws, regulations or if assigned; codes of professional responsibility.< (F) U.S. or PCT parent application data, if any; See also MPEP § 309. (G) Filing date; (H) Application number; 1703 The Official Gazette [R-8] (I) Foreign priority application data, if any; (J) International classification; The Official Gazette of the United States Patent (K) U.S. classification by class and subclass; and Trademark Office (Official Gazette) is published (L) Number of claims; electronically every Tuesday in two sections, the Offi- (M)Selected figure of the drawing, if any; cial Gazette – Patents and the Official Gazette – (N) A claim or claims; Trademarks. (O) For reissue patents, the original patent num- The Official Gazette — Patents reports the reexam- ber and issue date, and the original application num- ination certificates, reissues, plant patents, utility pat- ber and filing date; and ents, and design patents issued and statutory invention (P) Patent Application Publication Number and registrations (if any) published on that day. The Offi- Publication date, if any. cial Gazette — Patents (eOG:P) allows browsing through the issued patents for the week. The eOG:P The Official Gazette – Trademarks is published can be browsed by classification or type of patent, for electronically and contains an illustration of each example, utility, design, and plant. Specific patents trademark published for opposition, an alphabetical can be accessed by class/subclass or patentee name. list of registered trademarks, a classified list of regis- Links are provided to the various pages of the eOG:P: tered trademarks, an index of registrants, a list of can- celed trademark registrations, and a list of renewed (A) Browse by Class/Subclass page to access pat- trademark registrations. ents by a specific classification; The information in the Official Gazette pertaining (B) Classification of Patents page with links to to each issued patent and each trademark registration patents by a range of classifications; can be obtained from the Patent Grants Database and the U.S. Trademark Electronic Search System (TESS) (C) Browse Granted Patents page to access a respectively, both also available on the USPTO patent by patent number or link to patents by type; *>Web< site. (D) Index of Patentees page to browse by names Regular and special notices of the United States of inventors and assignees in either a cumulative Patent and Trademark Office are published in the alphabetical index or individual indexes by type of Official Gazette Notices, both as part of the Official patent. Each patentee listing contains a link to the Gazette — Patents (eOG:P) and as a separate publica- patent; tion. The notices that are included in this publication include notices of patent and trademark suits, dis- (E) Geographical Index of Inventors to link to claimers filed, Certificates of Correction issued, lists patents by the state or country of residence of the first of applications and patents available for license or listed inventor; and sale, notices of 37 CFR 1.47 applications, and general (F) Notices page containing the text of important information such as orders, notices, changes in rules, notices for the week. changes in classification, certain adverse decisions in interferences, the condition of work in the Office, reg- As to each patent, the following information is istration of attorneys and agents, reprimands, suspen- given: sions, and exclusions of registered attorneys and

1700-5 Rev. 8, July 2010 1704 MANUAL OF PATENT EXAMINING PROCEDURE agents, and notices to parties not reached by mail. The filing; and various summaries of the above reports at Official Gazette Notices are available on the United the art unit, Technology Center (TC), and corps lev- States Patent and Trademark Office *>Web< site els. (www.uspto.gov). Paper copies of the Official Gazette Notices are available from the Government Printing II. BIWEEKLY TIME AND ACTIVITY Office. Orders for the Official Gazette Notices should REPORTS be addressed and subscriptions should be made pay- able to the Superintendent of Documents, Govern- All reporting of examiner time and activity is on a ment Printing Office, Washington, D.C. 20402. biweekly basis. Each examiner’s examining and non- examining time, as **>entered in the Web Time and 1704 Application Records and Reports Attendance System is used by PALM< in the compu- [R-8] tation of productivity data. The biweekly reports pro- duced include the individual Biweekly Examiner Time and Activity Report which lists, by application The PALM (Patent Application Locating and Mon- number, all applications for which actions have been itoring) System is the automated data management counted during the biweekly period. The type of system used by the United States Patent and Trade- action counted for each application is also indicated mark Office (USPTO) for the retrieval and/or online on the report. This report also includes examiner time updating of the computer record of each patent appli- data, an action summary, and cumulative summaries cation. The PALM System also maintains examiner to date for the current quarter and fiscal year. Various time, activity, >and< docket >records<, and technical summary reports at the Art Unit, TC, and Corps levels support staff backlog records. are also produced. Information retrieval from PALM is by means of the PALM intranet. Transactions are entered via bar 1705 Examiner Docket, Time, and Activ- code readers, by keyed entries, or by making an ity Recordation [R-8] appropriate choice in a drop down menu. Among other items, classification, examiner docket, attorney, Actions prepared by examiners are submitted inventor, status, and prosecution history data as well >electronically and sent< to their respective legal as the location of each paper application can be instrument examiners for **>entry of the type of retrieved and updated online with PALM. Office action into the PALM System and for mail- ing.< I. DOCKET REPORTS ** The recording of changes to examiner dockets is Each examiner’s action that is counted and reported accomplished by PALM simultaneously with the to the PALM system will be listed by application recording of incoming and outgoing communications, number on the Biweekly Examiner Time and Activity transfers of applications to and from dockets, and Report. The examiner should check his/her Biweekly other types of updating of the application record. The Examiner Time and Activity Report to verify that all status of each examiner’s docket can be determined applications worked on for the biweekly report period by means of the PALM intranet and is supplemented are properly listed. by periodic printed or electronic reports. Docket Examples of examiner’s actions that are reported to reports that are generated by PALM include the indi- PALM by the legal instrument examiner, but are not vidual examiner new * and amended docket which listed on the Biweekly Examiner Time and Activity lists applications >as regular, special, or accelerated Report, include examiner’s amendments, actions in applications< in priority order; the individual exam- reexamination proceedings, interview summaries, iner rejected application docket; the individual exam- transfers of applications, and supplemental Office iner new application profile, which lists the totals of actions and miscellaneous Office letters which do not new applications in each docket, sorted by month of set a period for reply.

Rev. 8, July 2010 1700-6 MISCELLANEOUS 1705

**> Form PTO 1472. Examiner's Case Action Worksheet. Application Number U.S. DEPARTMENT OF COMMERCE PATENT AND TRADEMARK OFFICE

EXAMINER’S CASE ACTION WORKSHEET

Palm Transaction Code Legal Instrument Examiner Copy (Ctrl+C)

CHECK TYPE OF ACTION DATE OF COUNT

Non-Final Rejection Restriction/Election Final Rejection Only

Ex Parte Quayle Allowance Advisory Action

Examiner’s Answer Reply Brief Noted Non-Entry of Reply Brief

Defective Notice of Interference Disposal Suspension Appeal SPE (Examiner-Initiated) (Approval for Disposal) SPE (initial)

Defective Appeal Brief SIR Disposal Supplemental (use only after FAOM) Examiner’s Amendment

Miscellaneous Notice of Miscellaneous Office Letter Non-Responsive Office Letter (With Shortened Statutory Period Amendment (No Response Period Set) Set) (With One Month Time Period set)

Abandonment after Supplemental Action Response to BPAI Decision Rule 312 Amendment

Letter Restarting Period Interview Summary Authorization to for Response (e.g., Missing Change Previous References) Office Action SPE: (Initial)

Abandonment Express Abandonment Other Date:

Examiner’s Name: AU:

FORM PTO-1472 (Rev. 4-2002) <

1700-7 Rev. 8, July 2010 1711 MANUAL OF PATENT EXAMINING PROCEDURE

II. COUNTING OF FIRST ACTION ON THE ity Report, the examiner should promptly notify their MERITS (FAOM) supervisory patent examiner (SPE) and either the legal instrument examiner or PALM troubleshooter by Office actions on the merits consist of rejections providing all the pertinent information necessary to (final and non-final), Ex parte Quayle actions, and make the changes to the PALM system (e.g., examin- allowances. ing hours, application number, type of action, etc.). The first time an examiner performs one of the above merit actions, he/she receives credit >or a (B) The PALM troubleshooter or legal instrument count< for a First Action on the Merits (FAOM) on examiner will report the necessary changes and cor- the production reports. rections directly into PALM. These changes will be A second/subsequent but FAOM usually occurs listed on the next Biweekly Examiner Time and when the first action is a restriction/election action Activity Report. and the second action is an action on the merits. The (C) If any information is missing from the last examiner indicates the type of second action on the Biweekly Examiner Time and Activity Report of a Examiner’s Case Action Worksheet, and the PALM quarter (except at the end of a fiscal year) or is incor- system will automatically determine if it is a FAOM. rect, the examiner should promptly notify the PALM If the second action is a FAOM, the action will be troubleshooter or legal instrument examiner and his/ listed and credited on the Biweekly Examiner Time her supervisory patent examiner (SPE). The PALM and Activity Report as a Second/Subsequent FAOM. troubleshooter or legal instrument examiner will make III. COUNTING OF DISPOSALS the appropriate changes directly into the PALM sys- tem. The changes will be listed on the next Biweekly An examiner receives a “disposal” >or< count for Examiner Time and Activity Report. However, these the following actions: changes will not be reflected in the previous Quarter’s (A) Allowance; Report; the examiner’s SPE may manually make an adjustment to the records to show these changes. (B) Abandonment; (D) In order to ensure that all PALM reports are (C) Requests for Continued Examination; correct at the end of the fiscal year (rating period), a (D) Examiner’s Answer; special correction cycle is provided on the PALM sys- (E) International Preliminary Examination tem. If any information is missing from or is incorrect Report; on the last Biweekly Examiner Time and Activity (F) Statutory Invention Registration (SIR) dis- Report, the examiner should immediately notify the posal (only after a FAOM; see MPEP § 1101); and legal instrument examiner and his/her SPE. These (G) Interference wherein the application would be changes will be reflected in the examiner’s final in condition for allowance but for the interference. biweekly report for the entire fiscal year. These same items constitute the “disposals” for per- ** formance evaluation of examining art units and TCs. 1711 U.S.-Philippines Search Exchange However, disposals at the Office level consist only of allowances and abandonments. The United States-Philippines search exchange pro- For either an allowance or an abandonment after an gram involves patent applications filed in the United Examiner’s Answer or decision by a court or the States which are subsequently followed by corre- Board of Patent Appeals and Interferences, no dis- sponding applications filed in the Republic of the posal credit is received, though these actions are indi- Philippines and patent applications filed in the Philip- cated on the Biweekly Examiner Time and Activity pines subsequently followed by corresponding appli- Report. cations filed in the United States. The program operates as follows: IV. CORRECTION INFORMATION The applicant files his or her application in the (A) If any information is either missing from or United States Patent and Trademark Office (USPTO) incorrect on the Biweekly Examiner Time and Activ- which will process the application in the normal man-

Rev. 8, July 2010 1700-8 MISCELLANEOUS 1720 ner and examine the application in the usual time allowance, copies of documents cited during exami- sequence. nation, a copy of the last office action and, when nec- If the applicant should later file a corresponding essary, any earlier actions which may be included by application in the Philippines Patent Office, he or she reference in the last action. The Philippines Office may elect to use the special filing procedure. Under will then make its own complete office action based this special filing procedure, applicant files his or her upon the claims as amended with USPTO, performing application in the Philippines accompanied by a whatever checks desired and searching for copending notice of election to participate in the special proce- interfering applications. Alternatively, the Philippines dure, which notice of election contains a certification may request applicant to show cause why the results that the description (excluding references to related of the U.S. examination should not be accepted in the applications), claims, and drawings are identical to Philippines. All avenues of appeal will remain open to those of the corresponding application originally filed the applicant. in the United States. The earlier filed application must Where copending applications are cited and applied be fully identified, and, in applications without a during examination in the USPTO full examination claim of priority, a certified copy of the earlier filed will not be forwarded to the Philippines Patent Office, U.S. application must be submitted to the Philippines and the fact that a U.S. copending application was Patent Office. In addition, applicant must also agree cited would be noted as a matter of information, since that all amendments to his or her U.S. application will such references are inapplicable in the Philippines. also be made with respect to his or her application filed in the Philippines. Where the application originates in the Philippines Patent Office and is subsequently filed in the USPTO, In the USPTO, applicant will regularly file two cop- a similar procedure as outlined above, consonant with ies of each amendment. One copy must be marked U.S. law, will be followed. “Copy for Philippines Patent Office.” Upon termina- tion of prosecution, the USPTO shall remove all cop- It is believed that this program will facilitate the ies so marked from the U.S. file and promptly forward handling of U.S. origin applications filed in the the same to the Philippines Patent Office. Republic of the Philippines resulting in a savings in time and expense of prosecution to U.S. applicants. Election forms for participation in this special pro- gram must be signed in duplicate and simultaneously 1720 Dissemination of Court and Board of accompany the application to be filed in the Philip- pines. Patent Appeals and Interferences Upon receipt of properly filed notice of election, Decisions [R-3] the Philippines Patent Office will notify the USPTO of the election by forwarding one copy of the election I. COURT DECISIONS forms to the USPTO. The Philippines Patent Office will defer action on the Philippines application pend- The Office of the Solicitor forwards to the Office of ing receipt of information as to the disposition of the the Commissioner for Patents copies of all recent application by the USPTO. If no such information is court decisions in patent cases where a precedential received by the Philippines Office within a reasonable opinion is issued. The Office of the Commissioner for amount of time from the date of filing in the Philip- Patents will routinely forward these opinions to TC pines, the Philippines Office may, either on its own Directors, the **>Office of Patent Training<, and the initiative, or at applicant’s request, inquire as to the Director of the Office of Patent Quality Assurance. status of the U.S. application and, if desired, proceed TC Directors, in turn, are to make copies available with its own independent examination. to supervisors and other individuals as the TC Direc- Upon disposal of the application by the USPTO, tor determines to be appropriate. TC Directors are appropriate information will be sent to the Philippines encouraged to discuss the contents of the opinions in Patent Office which will include all necessary identi- their staff meetings, particularly where such meetings fying data, whether allowed or abandoned, notice of are being held to reinforce examination quality.

1700-9 Rev. 8, July 2010 1721 MANUAL OF PATENT EXAMINING PROCEDURE

II. BOARD OF PATENT APPEALS AND It may be necessary for the Director, General Coun- INTERFERENCES DECISIONS sel, Solicitor, Chief Administrative Patent Judge, Commissioner for Patents, *>Associate< Commis- A decision rendered by the Board of Patent Appeals sioner for Patent Examination Policy, Deputy Com- and Interferences (Board) is returned to the examiner missioner for **>Patents< and TC Director making through the TC Director and the examiner’s supervi- the recommendation to meet to review and discuss the sor. The examiner takes action consistent with the policy ramifications of the opinion and recommended decision rendered by the Board unless rehearing of guidance to enable the Director to decide how the the Board decision will be requested (MPEP USPTO will proceed. § 1214.04). The TC Director may circulate and dis- Communication of the decision on the policy impli- cuss the decision among some or all of the supervisors cations of the court or Board decision will normally in the TC, and the supervisors, in turn, may circulate take place by either notice in the Official Gazette and/ the decision among the examiners in their art units, or via memorandum to USPTO personnel. Ultimately, depending on the subject matter or issues in the deci- the policy implications of the decision will be offi- sions. cially incorporated into the Manual of Patent Examin- ing Procedure and Office of Patent Training 1721 Treatment of Court and Board of curriculum materials during the next update cycle for Patent Appeals and Interferences these reference materials. Decisions Affecting Patent and 1730 Information Sources [R-8] Trademark Office Policy and Prac- tice [R-8] I. IN GENERAL

In the event the Board of Patent Appeals and Inter- General information about patents, trademarks, ferences (Board) or court decision is one that signifi- products and services offered by the United States cantly adds to the body of law by, for example, Patent and Trademark Office (USPTO), and other addressing a new legal or procedural issue, or provid- related information is available by contacting the ing a new interpretation of a prior decision, such a USPTO Contact Center at: decision may result in an internal United States Patent and Trademark Office (USPTO) memorandum 800-PTO-9199 or 571-272-1000 pointing out the significance of the decision to the (TDD) 571-272-9950 examination process. When any examiner or supervisor in the Patent An automated message system is available 7 days a Examining Corps concludes that a recent decision week, 24 hours a day providing informational of the Board or a court affects existing USPTO policy responses to frequently asked questions and the abil- or practice, he or she should bring the matter to the ity to order certain documents. Customer service rep- attention of his/her TC Director through normal resentatives are available to answer questions, send chain-of-command procedures. materials or connect customers with other offices of the USPTO from 8:30 a.m. - 8:00 p.m. EST/EDT, When the TC Director believes that guidance to the Monday-Friday excluding federal holidays. Corps is warranted as a result of a decision, the TC Director should consult with the *>Associate< Com- For other technical patent information needs, the missioner for Patent Examination Policy and provide Inventors Assistance Center can be reached through a draft of the guidance that is recommended as appro- customer service representatives at the above num- priate under the circumstances. The *>Associate< bers, Monday through Friday (except federal holi- Commissioner for Patent Examination Policy will days) from 8:30 a.m. to 5:00 p.m. EST/EDT. then consult appropriate Office officials, as necessary, General information can also be obtained in person to formulate a recommendation to the Commissioner from the Public Search Facilities of the USPTO. See for Patents on the policy implications of the opinion. subsection IV. below.

Rev. 8, July 2010 1700-10 MISCELLANEOUS 1730

II. USPTO INTERNET SITE (b) Published Applications

A. General Information The Patent Applications Database provides both full-text and full-page images of all U.S. patent appli- The USPTO *>Web< site (http://www.uspto.gov or cations published since March 15, 2001. ftp.uspto.gov) provides a wealth of information to all users. The USPTO *>Web< site offers links to news (c) Status Information and notices (such as announcements, press releases, Status information relating to patent applications is Official Gazette Notices and Federal Register available through the Patent Application Information Notices), USPTO contacts and addresses, activities Retrieval (PAIR) system. There is both a public and and education related pages (such as the PTDL pro- private side to PAIR. In public PAIR, information is gram and the Kids Pages), patent specific information available relating to issued patents, published patent (such as issued patents and published patent applica- applications, and applications to which a patented or tions, general information pertaining to applying for a published application claims domestic priority. In pri- patent, electronic filing of patent applications, and ref- vate PAIR, an applicant (or his or her registered patent erence materials such as the MPEP and examination attorney or registered patent agent) can securely track guidelines), and trademark specific information (such the progress of his or her application(s) through the as the Trademark Manual of Examining Procedure USPTO. Private PAIR makes available information and the U.S. Trademark Electronic Search System relating to unpublished patent applications, but the (TESS)). In addition, the *>Web< site allows down- applicant must associate a Customer Number with the loading of a variety of USPTO forms (including PCT application to obtain access. See MPEP § 403 for forms), ordering copies of patents and trademarks, Customer Number practice. accessing a list of all current fees, paying patent main- tenance fees, replenishing deposit accounts, accessing (d) Image File Wrapper (IFW) various legal materials, linking to related *>Web< sites, etc. The Image File Wrapper (IFW) system uses image technology to replace the paper processing of patent B. Electronic Business applications in the Office. Paper components of these application files (including the specification, oath or The Patent Electronic Business Center (EBC) declaration, drawings, information disclosure state- assists USPTO customers in filing patent applications ments, amendments, Office actions, and file jacket electronically, submitting assignment documents for notations) have been scanned to create electronic recordation, retrieving data, checking the status of image files. For patent applications in the IFW sys- pending actions, and submitting information and tem, the IFW file is the Official file and no access is applications. The hours of operation of the EBC are granted to the original paper document sheets used to Monday through Friday 6 a.m. - midnight (EST/ create the IFW file. All processing and examination is EDT). The EBC can be reached by telephone at 866- conducted using the electronic images instead of the 217-9197 (toll-free) or 571-272-4100. The EBC may paper source documents. be reached by e-mail at [email protected] and by fax at If an IFW file has been created for a patented appli- 571-273-0177. cation, published application, or an application to which a patented or published application claims 1. USPTO Databases domestic priority, the IFW file (with the exception of non-patent literature) is accessible through public (a) Issued Patents PAIR. All patent applications filed after June 30, 2003 have been scanned into the IFW system and will be The Patent Grants Database provides access to the available in public PAIR as soon as they have been full-text of all U.S. patents issued since 1976, and to published or patented. Pending applications filed the full-page images of all U.S. patents issued since before June 30, 2003 are scanned into IFW as incom- 1790. ing papers are received in the Office. Non-patent liter-

1700-11 Rev. 8, July 2010 1730 MANUAL OF PATENT EXAMINING PROCEDURE ature (NPL) may be viewed using private PAIR (if an IV. USPTO SEARCH AND INFORMATION IFW file has been created) or obtained from the RESOURCE FACILITIES USPTO Office of Public Records. Questions about IFW images viewed in PAIR The following USPTO search and information should be directed to the Patent EBC. resource facilities are accessible to the public: (A) Public Search Facility (Madison East, first (e) Assignments on the Web (AOTW) floor, 600 Dulany St., Alexandria, VA 22314) at 571- 272-3275 Assignment information is available for issued pat- ents and published applications recorded since August (Hours: Weekdays, 8:00 a.m. to 8:00 p.m., EST/ 1980. EDT); * (B) Scientific and Technical Information Center 2. Transacting Electronic Business (1) Main Library (Madison West, first floor, (a) Filing Applications and Other Documents 600 Dulany St., Alexandria, VA 22314) at 571-272- 3547 The Electronic Filing System *>-Web (EFS-Web)< (2) Biotech/Chemical Library (Remsen 1D58) allows customers to electronically file patent applica- at 571-272-2520 tion documents securely via the Internet. **> See MPEP § 502.05 for more detailed information.< (Hours: Weekdays, 8:30 a.m. to 5:00 p.m., EST/EDT)>; and (b) Paying Fees and Replenishing Deposit (C) File Information Unit (Randolph Square, Accounts third floor, 2800 South Randolph St., Arlington, VA 22206) at 703-756-1800 The Office of Finance On-Line Shopping page may be used to pay maintenance fees or to maintain and (Hours: Weekdays, 7:00 a.m. to 6:00 p.m., EST/ replenish deposit accounts. EDT).<

(c) Ordering Copies and Publications V. REGISTERED PRACTIONERS

Copies of patent applications as filed and patent file The USPTO cannot recommend any particular wrappers that have been issued or published are avail- attorney or agent, or aid in the selection of an attorney able on-line from the Office of Public Records (OPR). or agent. A list of Attorneys and Agents Registered to Presentation patents may also be ordered on the web. Practice Before the U.S. Patent and Trademark Office Available service options, fees and delivery methods may be purchased on DVD-ROM from the USPTO’s vary by document type. Contact OPR at 1-800-972- Office of Electronic Information Products (571-272- 6382 or 571-272-3150 for more information. 5600). The DVD-ROM is also available on the USPTO *>Web< site (http://www.uspto.gov) from the III. PCT “Products and Services Catalog.” For questions and information concerning the To obtain a list of registered patent attorneys and Patent Cooperation Treaty (PCT), the PCT Help Desk agents for a particular area, customers may either is available to provide assistance and may be reached contact a customer service representative through the by telephone at 571-272-4300 between the hours of USPTO Contact Center (see “In General” above), or 9:00 am and 4:30 pm (EST/EDT), Monday through acquire the information from the USPTO *>Web< Friday, or by facsimile at 571-273-0419, 24 hours a site. The attorneys and agents list may be examined day. In addition, helpful information is available without charge at Patent and Trademark Depository through the internet at the Office of PCT Legal Libraries (PTDLs) and at many other libraries Administration page of the USPTO *>Web< site and throughout the U.S. Many large cities also have asso- at the World Intellectual Property Office *>Web< site ciations of patent attorneys and agents which may be (http://www.wipo.org/). consulted.

Rev. 8, July 2010 1700-12 MISCELLANEOUS 1730

VI. MISCELLANEOUS 571-273-3250. To order file histories for self-service copying, contact the File Information Unit at *>703- A. Recently Filed Applications 756-1800.< For information and questions concerning recently F. Maintenance Fees filed patent applications and filing receipts, contact the **>Application Assistance Unit< at 571-272- Information regarding maintenance fees may be 4000 (hours: weekdays, 8:30 a.m. to 5:00 p.m., EST/ obtained from the Patent Application Information EDT>)<. Retrieval (PAIR) system on the USPTO *>Web< site, or by contacting the Receipts Accounting Division at B. Pre-Grant Publication 571-272-6500. For inquiries concerning projected pre-grant publi- cation dates, contact the **>Application Assistance G. Ass ignme nts Unit at 571-272-4200.< For questions pertaining to filing assignments or C. Status Information other documents affecting title, contact the Assign- ment Division at 571-272-3350. Documents may be For information on the status of a patent applica- submitted to the Assignment Division by facsimile at tion, patent applicants who have access to PAIR 571-273-0140. See MPEP § 302.09 for additional should check PAIR. Alternatively, applicants may information. contact the **>Application Assistance Unit at 571- 272-4200.< H. Petitions

D. Correspondence For matters decided by the Office of Petitions, the appropriate USPTO personnel may be reached at 571- For information pertaining to mail, facsimile, or 272-3282. Petitions to withdraw an application from hand-delivery of correspondence to the USPTO, see issue may be sent by facsimile to 571-273-0025. All MPEP §§ 502 - 502.01. other facsimile transmissions to the Office of Petitions should be sent to the Central FAX Number 571-273- E. Copies of Documents 8300. Inquiries regarding certified or uncertified copies of documents, including patent applications-as-filed, I. PatentIn patent related file wrappers, patent copies, and repro- For information regarding orders for the PatentIn duced copies of individual replacement pages or pre- software program, call the ** Electronic Information vious revisions of the MPEP, should be directed to Products >Division< at 571-272-5600. For assistance the Office of Public **>Records’ Patent and Trade- downloading or using PatentIn, contact the Patent mark Copy Fulfillment Branch< at 571-272-3150 or Electronic Business Center (see subsection II.B. 1-800-972-6382. Orders may be placed by facsimile above). when paying by VISA®, MasterCard®, American Express®, Discover®, or USPTO Deposit Account at nnnnnnnnnnnnnnnnnnnnnnn

1700-13 Rev. 8, July 2010 MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 8, July 2010 1700-14 Chapter 1800 Patent Cooperation Treaty

1843 The International Search 1801 Basic Patent Cooperation Treaty (PCT) 1843.01 Prior Art for Chapter I Processing Principles 1843.02 Certain Subject Matter Need Not Be Searched 1802 PCT Definitions 1843.03 No Search Required if Claims Are Unclear 1803 Reservations Under the PCT Taken by 1843.04 Procedure for Claims Not Required To Be the United States of America Searched and for Claims That Are Unclear 1805 Where to File an International Application 1843.05 Time Limit for Establishing the International 1807 Agent or Common Representative and General Search Report and the Written Opinion of the Power of Attorney International Searching Authority 1808 Change in or Revocation of the Appointment 1844 The International Search Report of an Agent or a Common Representative 1844.01 Preparing the International Search Report 1810 Filing Date Requirements (Form PCT/ISA/210) 1812 Elements of the International Application 1845 Written Opinion of the International Searching 1817 PCT Member States Authority 1817.01 Designation of States in International 1845.01 Preparing the Written Opinion of the Applications Having an International Filing International Searching Authority (Form PCT/ Date on or After January 1, 2004 ISA/237) 1817.01(a) Designation of States and Precautionary 1845.02 Notification of Transmittal of the International Designations in International Applications Search Report and the Written Opinion of the Having an International Filing Date Before International Searching Authority, or the January 1, 2004 Declaration (Form PCT/ISA/220) 1817.02 Continuation or Continuation-in-Part 1846 Sections of the Articles, Regulations, and Indication in the Request Administrative Instructions Under the PCT 1819 Earlier ** Search Relevant to the International Searching 1820 Signature of Applicant Authority 1821 The Request 1848 Sequence Listings and Tables Related 1823 The Description to Sequence Listings 1823.01 Reference to Deposited Biological Material 1850 Unity of Invention Before the International 1823.02 Nucleotide and/or Amino Acid Sequence Searching Authority Listings, and Tables Related to Sequence 1851 Identification of Patent Documents Listings 1852 **>Taking Into Account Results of Earlier 1824 The Claims Search(es)< 1825 The Drawings 1853 Amendment Under PCT Article 19 1826 The Abstract 1857 International Publication 1827 Fees 1857.01 Prior Art Effect of the International Publication 1827.01 Refund of International Application Fees 1859 Withdrawal of International Application, 1828 Priority Claim and Document Designations, or Priority Claims 1828.01 Restoration of the Right of Priority 1860 International Preliminary Examination 1830 International Application Transmittal Letter Procedure for Applications Having an 1832 License Request for Foreign Filing Under the International Filing Date On or After January PCT 1, 2004 1834 Correspondence 1860.01 International Preliminary Examination 1834.01 Use of Telegraph, Teleprinter, Facsimile Procedure for Applications Having an Machine International Filing Date Before January 1, 1834.02 Irregularities in the Mail Service 2004 1836 Rectification of Obvious Mistakes 1862 Agreement With the International Bureau To 1840 The International Searching Authority Serve as an International Preliminary 1840.01 The European Patent Office as an International Examining Authority Searching Authority 1864 The Demand and Preparation for Filing of 1840.02 The Korean Intellectual Property Office as an Demand International Searching Authority 1864.01 Amendments Filed Under PCT Article 34 1842 Basic Flow Under the PCT 1864.02 Applicant’s Right To File a Demand

1800-1 Rev. 7, July 2008 MANUAL OF PATENT EXAMINING PROCEDURE

1864.03 States Which May Be Elected 1878.01(a)(1) Novelty for Purposes of the Written Opinion 1864.04 Agent’s Right To Act and the International Preliminary 1865 Filing of Demand Examination Report 1865.01 The European Patent Office as an International 1878.01(a)(2) Inventive Step for Purposes of the Written Preliminary Examining Authority Opinion and the International Preliminary 1866 Filling in of Headings on Chapter II Forms Examination Report 1867 Preliminary Examination Fees 1878.01(a)(3) for Purposes of the Written Opinion and the International 1868 Correction of Defects in the Demand Preliminary Examination Report 1869 Notification to International Bureau of Demand 1878.02 Reply to the Written Opinion of the ISA or 1870 Priority Document and Translation Thereof IPEA 1871 Processing Amendments Filed Under Article 19 1879 Preparation of the International Preliminary and Article 34 Prior to or at the Start of Examination Report International Preliminary Examination in 1879.01 Time Limit for Preparing Report in International Applications Having an International Applications Having an International Filing Date on or After January 1, International Filing Date On or After January 1, 2004 2004 1871.01 Processing Amendments Filed Under Article 19 1879.01(a) Time Limit for Preparing Report in and Article 34 Prior to or at the Start of International Applications Having an International Preliminary Examination in International Filing Date Before January 1, International Applications Having an 2004 International Filing Date Before January 1, 1879.02 Transmittal of the International Preliminary 2004 Examination Report 1872 Availability of the International Application 1879.03 Translations File for International Preliminary Examination 1879.04 Confidential Nature of the Report by the Examining Corps 1880 Withdrawal of Demand or Election 1874 Determination if International Preliminary 1881 Receipt of Notice of Election and Preliminary Examination Is Required and Possible Examination Report by the United States 1875 Unity of Invention Before the International Patent and Trademark Office Preliminary Examining Authority 1893 National Stage (U.S. National Application Filed 1875.01 Preparation of Invitation Concerning Unity Under 35 U.S.C. 371) 1875.02 Reply to Invitation Concerning Lack of Unity 1893.01 Commencement and Entry of Invention 1893.01(a) Entry via the U.S. Designated or Elected Office 1876 Notation of Errors and Informalities by the 1893.01(a)(1) Submissions Required by 30 Months from Examiner the Priority Date 1876.01 Request for Rectification and Notification of 1893.01(a)(2) Article 19 Amendment (Filed With the Action Thereon International Bureau) 1877 Nucleotide and/or Amino Acid Sequence 1893.01(a)(3) Article 34 Amendments (Filed with the Listings During the International Preliminary International Preliminary Examining Examination Authority) 1878 Preparation of the Written Opinion of the 1893.01(c) Fees International Preliminary Examining 1893.01(d) Translation Authority in International Applications Having 1893.01(e) Oath/Declaration an International Filing Date on or After 1893.02 Abandonment January 1, 2004 1893.03 Prosecution of U.S. National Stage Applica- 1878.01 Preparation of the Written Opinion in tions Before the Examiner International Applications Having an 1893.03(a) How To Identify That an Application Is a U.S. International Filing Date Before January 1, National Stage Application 2004 1893.03(b) The Filing Date of a U.S. National Stage 1878.01(a) Prior Art for Purposes of the Written Opinion Application and the International Preliminary Examination 1893.03(c) The Priority Date, Priority Claim, and Priority Report Papers for a U.S. National Stage Application

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1893.03(d) Unity of Invention and Trademark Office), and have that application 1893.03(e) Documents Received from the International acknowledged as a regular national or regional filing Bureau and Placed in a U.S. National Stage in as many Contracting States to the PCT as the appli- Application File cant “designates” or “elects,” that is, names, as coun- 1893.03(e)(1)Title of the Invention tries or regions in which patent protection is desired. 1893.03(f) Drawings and PCT Rule 11 (For international applications filed on or after Janu- 1893.03(g) Information Disclosure Statement in a National ary 1, 2004, the filing of an international application Stage Application will automatically constitute the designation of all 1895 A Continuation , Divisional, or Continuation- in-Part Application of a PCT Application contracting countries to the PCT on that filing date.) Designating the United States In the same manner, the PCT enables foreign appli- 1895.01 Handling of and Considerations in the cants to file a PCT international application, designat- Handling of Continuations , Divisions, and ing the United States of America, in their home Continuations-in-Part of PCT Applications language in their home patent office and have the 1896 The Differences Between a National application acknowledged as a regular U.S. national Application Filed Under 35 U.S.C. 111(a) and filing. The PCT also provides for an international a National Stage Application Submitted Under search report and written opinion (for international 35 U.S.C. 371 applications filed on or after January 1, 2004) that are established normally at 16 months from the priority INTRODUCTION date, and publication of the international application after 18 months from the priority date. Upon payment This chapter is designed to be a guide for patent of national fees and the furnishing of any required examiners in searching and examining applications translation, usually 30 months after the filing of any filed under the Patent Cooperation Treaty (PCT). priority application for the invention, or the interna- Applicants desiring additional information for filing tional filing date if no priority is claimed, the applica- international applications should obtain a copy of the tion will be subjected to national procedures for PCT Applicant’s Guide from the World Intellectual granting of patents in each of the designated coun- Property Organization (WIPO) in Geneva, Switzer- tries. For any countries remaining whose national land. laws are not compatible with the 30 month period set The Articles and Regulations under the PCT are forth in PCT Article 22(1), the filing of a demand for reproduced in Appendix T of this Manual and the an international preliminary examination electing Administrative Instructions are reproduced in Appen- such countries within 19 months from the priority dix AI of this Manual. The text of the PCT Applicant’s date will result in an extension of the period for enter- Guide, the monthly PCT Newsletter, the weekly PCT ing the national stage to 30 months from the priority Gazette, downloadable PCT forms, and additional date. An up-to-date list of such countries may be information about the processing of international found on WIPO’s web site (www.wipo.int/pct/en/ applications are available from WIPO’s website index.html). A brief description of the basic flow (www.wipo.int/pct). under the PCT is provided in MPEP § 1842. PCT applications are processed by the International Application Processing Division within the U.S. The PCT offers an alternative route to filing patent Patent and Trademark Office. applications directly in the patent offices of those countries which are Contracting States of the PCT. It 1801 Basic Patent Cooperation Treaty does not preclude taking advantage of the priority (PCT) Principles [R-6] rights and other advantages provided under the Paris Convention and the WTO administered Agreement on I. MAJOR CONCEPTS OF THE PCT Trade-Related Aspects of Intellectual Property (TRIPS Agreement). The PCT provides an additional The Patent Cooperation Treaty (PCT) enables the and optional foreign filing route to patent applicants. U.S. applicant to file one application, “an interna- tional application,” in a standardized format in The filing, search and publication procedures are English in the U.S. Receiving Office (the U.S. Patent provided for in Chapter I of the PCT. Additional pro-

1800-3 Rev. 7, July 2008 1801 MANUAL OF PATENT EXAMINING PROCEDURE cedures for a preliminary examination of PCT interna- copy (HC), remains in the receiving Office (PCT Arti- tional applications are provided for in optional PCT cle 12(1)). Once the receiving Office has transmitted Chapter II. copies of the application, the International Searching In most instances a national U.S. application is filed Authority becomes the focus of international process- first. An international application for the same subject ing. matter will then be filed subsequently within the pri- ority year provided by the Paris Convention and the III. INTERNATIONAL SEARCHING AU- priority benefit of the U.S. national application filing THORITY (ISA) date will be claimed. The basic functions of the International Searching II. RECEIVING OFFICE (RO) Authority (ISA) are to conduct a prior art search of inventions claimed in international applications; it The international application (IA) must be filed in does this by searching in at least the minimum docu- the prescribed receiving Office (RO)(PCT Article 10). mentation defined by the Treaty (PCT Articles 15 and The United States Patent and Trademark Office will 16 and PCT Rule 34), and for international applica- act as a receiving Office for United States residents tions filed on or after January 1, 2004, to issue a writ- and nationals (35 U.S.C. 361(a)). Under PCT Rule ten opinion (PCT Rule 43bis) which will normally be 19.1(a)(iii), the International Bureau of the World considered to be the first written opinion of the Inter- Intellectual Property Organization will also act as a national Preliminary Examining Authority where Receiving Office for U.S. residents and nationals. The international preliminary examination is demanded. receiving Office functions as the filing and formalities See PCT Rule 66.1bis. review organization for international applications. For most applications filed with the United States International applications must contain upon filing the Receiving Office, the applicant may choose (in the designation of at least one Contracting State in which Request form) * the U.S. Patent and Trademark patent protection is desired and must meet certain Office*>,< the European Patent Office>, or the standards for completeness and formality (PCT Arti- Korean Intellectual Property Office< to act as the cles 11(1) and 14(1)). International Searching Authority. However, the Where a priority claim is made, the date of the ear- European Patent Office may not be competent to act lier filed national application is used as the date for as an International Searching Authority for certain determining the timing of international processing, applications filed by nationals or residents of the including the various transmittals, the payment of cer- United States. See MPEP § 1840.01 for a discussion tain international and national fees, and publication of of applications and subject matter that will not be the application. Where no priority claim is made, the searched by the European Patent Office. The Interna- international filing date will be considered to be the tional Searching Authority is also responsible for “priority date” for timing purposes (PCT Article checking the content of the title and abstract (PCT 2(xi)). Rules 37.2 and 38.2). The international application is subject to the pay- An international search report (ISR), and for inter- ment of certain fees within 1 month from the date of national applications filed on or after January 1, 2004, filing. The receiving Office will grant an international a written opinion, will normally be issued by the filing date to the application, collect fees, handle International Searching Authority within 3 months informalities by direct communication with the appli- from the receipt of the search copy (usually about 16 cant, and monitor all corrections (35 U.S.C. 361(d)). months after the priority date) (PCT Rule 42). Copies By 13 months from the priority date, the receiving of the international search report and prior art cited Office should prepare and transmit a copy of the inter- will be sent to the applicant by the ISA (PCT Rules 43 national application, called the search copy (SC), to and 44.1). The international search report will contain the International Searching Authority (ISA); and for- a listing of documents found to be relevant and will ward the original, called the record copy (RC), to the identify the claims in the application to which they are International Bureau (IB) (PCT Rules 22.1 and 23). A pertinent. In applications filed on or after January 1, second copy of the international application, the home 2004, the ISA will normally issue a written opinion as

Rev. 7, July 2008 1800-4 PATENT COOPERATION TREATY 1801 to whether each claim appears to satisfy the PCT Arti- Article 21). The written opinion, on the other hand, cle 33 criteria of “novelty,” “inventive step,” and will not be made publicly available until the expira- “industrially applicable.” The written opinion may tion of 30 months from the priority date. See PCT also indicate defects in the form or content of the Rule 44ter. The international publication includes a international application under the PCT articles and front page containing bibliographical data, the regulations, as well as any observations the ISA abstract, and a figure of the drawing (PCT Rule 48). wishes to make on the clarity of the claims, the The publication also contains the search report and description, and the drawings, or on the question of any amendments to the claims submitted by the appli- whether the claims are fully supported by the descrip- cant. If the application is published in a language tion. other than English, the search report and abstract are Once the international search report and written also published in English. The International Bureau opinion are established, the ISA transmits one copy of publishes a PCT Gazette in the French and English each to the applicant and the International Bureau, languages which contains information similar to that and international processing continues before the on the front pages of published international applica- International Bureau. tions, as well as various indexes and announcements (PCT Rule 86). The International Bureau also trans- IV. INTERNATIONAL BUREAU (IB) mits copies of the publication of the international application to all designated Offices that have The basic functions of the International Bureau (IB) requested to receive the publication (PCT Article 20, are to maintain the master file of all international PCT Rule 47, and PCT Rule 93bis.1). applications and to act as the publisher and central coordinating body under the Treaty. The World Intel- V. DESIGNATED OFFICE (DO) and lectual Property Organization (WIPO) in Geneva, ELECTED OFFICE (EO) Switzerland performs the duties of the International Bureau. The designated Office is the national Office (for If the applicant has not filed a certified copy of the example, the USPTO) acting for the state or region priority document in the receiving Office with the designated under Chapter I. Similarly, the elected international application, or requested upon filing that Office is the national Office acting for the state or the receiving Office prepare and transmit to the Inter- region elected under Chapter II. national Bureau a copy of the prior U.S. national PCT Article 22(1) was amended, effective April 1, application, the priority of which is claimed, the 2002, to specify that a copy of the international appli- applicant must submit such a document directly to the cation, a translation thereof (as prescribed), and the International Bureau or the receiving Office not later national fee are due to the designated Office not later than 16 months after the priority date (PCT Rule 17). than at the expiration of 30 months from the priority The request (Form PCT/RO/101) contains a box date. Accordingly, the time period for filing the copy which can be checked requesting that the receiving of the international application, the translation, and Office prepare the certified copy. This is only possi- the fee under PCT Article 22 is now the same as the ble, of course, if the receiving Office is a part of the 30 month time period set forth in PCT Article 39. The same national Office where the priority application USPTO has adopted the 30 month time limit set forth was filed. in PCT Article 22(1). Most Contracting States have The applicant has normally 2 months from the date changed their national laws for consistency with PCT of transmittal of the international search report to Article 22(1) as amended. An up-to-date listing of amend the claims by filing an amendment and may Contracting States that have adopted Article 22(1) as file a brief statement explaining the amendment amended is maintained at WIPO’s website at http:// directly with the International Bureau (PCT Article 19 www.wipo.int/pct/en/texts/pdf/time_limits.pdf. For and PCT Rule 46). The International Bureau will then those few remaining Contracting States that have not normally publish the international application along adopted Article 22(1) as amended, if no “Demand” with the search report and any amended claims at the for international preliminary examination has been expiration of 18 months from the priority date (PCT filed within 19 months of the priority date, the appli-

1800-5 Rev. 7, July 2008 1801 MANUAL OF PATENT EXAMINING PROCEDURE cant may be required to complete the requirements for VI. INTERNATIONAL PRELIMINARY EX- entering the national stage within 20 months from the AMINING AUTHORITY (IPEA) priority date of the international application in the national offices of those states. When entering the The International Preliminary Examining Authority national stage following Chapter I, the applicant has (IPEA) normally starts the examination process when it is in possession of: the right to amend the application within the time limit set forth in PCT Rule 52.1. After this time limit (A) the demand; has expired (PCT Article 28 and PCT Rule 52), each (B) the amount due; designated Office will make its own determination as (C) if the applicant is required to furnish a trans- to the patentability of the application based upon its lation under PCT Rule 55.2, that translation; own specific national or regional laws (PCT Article (D) either the international search report or a 27(5)). notice of the declaration by the International Search- If the applicant desires to obtain the benefit of ing Authority (ISA) that no international search report delaying the entry into the national stage until 30 will be established; and months from the priority date in one or more countries (E) if the international application has a filing where the 30 month time limit set forth in PCT Article date on or after January 1, 2004, the written opinion 22(1) as amended does not apply, a Demand for inter- established under PCT Rule 43bis.1. national preliminary examination must be filed with an appropriate International Preliminary Examining However, for international applications having an Authority within 19 months of the priority date. Those international filing date on or after January 1, 2004, states in which the Chapter II procedure is desired the IPEA shall not start the international preliminary must be “elected” in the Demand. For international examination before the expiration of the later of three applications filed on or after January 1, 2004, the months from the transmittal of the international applicant should file the demand with the competent search report (or declaration that no international International Preliminary Examining Authority search report will be established) and written opinion; (IPEA) before the expiration of the later of the follow- or the expiration of 22 months from the priority date ing time limits: (A) three months from the date of unless the applicant expressly requests an earlier start, with the exception of the situations provided for in transmittal to the applicant of the international search PCT Rule 69.1(b)-(e). report and written opinion under PCT Rule 43bis.1, or of the declaration referred to in PCT Article 17(2)(a); The written opinion of the ISA is usually consid- or (B) 22 months from the priority date of the interna- ered the first written opinion of the IPEA unless the tional application. However, applicant may still desire IPEA has notified the International Bureau that writ- to file the demand by 19 months from the priority date ten opinions established by specified International for those countries that have not yet adopted PCT Searching Authorities shall not be considered a writ- ten opinion for this purpose. See PCT Rule 66.1bis. Article 22(1) as amended. Also, the IPEA may, at its discretion issue further The original Demand is forwarded to the Interna- written opinions provided sufficient time is available. tional Bureau by the IPEA. The International Bureau See PCT Rule 66.4. then notifies the various elected Offices that the appli- The IPEA establishes the international preliminary cant has entered Chapter II and sends a copy of any examination report (entitled “international prelimi- amendments filed under PCT Article 19 and any nary report on patentability” for applications having statement explaining the amendments to the IPEA. an international filing date on or after January 1, See PCT Rule 62. In applications filed on or after Jan- 2004), which presents the examiner’s final position as uary 1, 2004, the International Bureau also sends the to whether each claim is “novel,” involves “inventive IPEA a copy of the written opinion established by the step,” and is “industrially applicable” by 28 months International Searching Authority unless the Interna- from the priority date. A copy of the international pre- tional Searching Authority is also acting as IPEA. See liminary examination report is sent to the applicant PCT Rule 62.1(i). and to the International Bureau. The International

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Bureau then communicates a copy of the international The United States of America also made a reserva- preliminary examination report to each elected Office. tion under PCT Article 64(4) which relates to the The applicant must complete the requirements for prior art effective date of a U.S. patent issuing from an entering the national stage by the expiration of 30 international application. See 35 U.S.C. 102(e) and months from the priority date to avoid any question of 363. withdrawal of the application as to that elected Office; The above reservations under PCT Article 64(3) however, some elected Offices provide a longer and (4) are still in effect. period to complete the requirements. The U.S. Receiving Office continues to accept A listing of all national and regional offices, and the applications only in English. See 35 U.S.C. 361(c). corresponding time limits for entering the national PCT Rules *>20.1(c)<, 26.3ter(a) and 26.3ter(c) per- stage after PCT Chapter I and PCT Chapter II, may be mit an international filing date to be accorded even found on WIPO’s web site at: http://www.wipo.int/ though portions of an international application are in a pct/en/index.html. language not acceptable to the Receiving Office. PCT Rules *>20.1(c)<, 26.3ter(a) and 26.3ter(c) are not 1802 PCT Definitions [R-1] compatible with the national law applied by the The PCT contains definitions in PCT Article 2 and United States Patent and Trademark Office (USPTO) in PCT Rule 2, which are found in MPEP Appendix T. as Receiving Office. Thus, the USPTO has taken a Additional definitions are **>in 35 U.S.C. 351, found reservation on adherence to these Rules pursuant to in MPEP Appendix L, in 37 CFR 1.9 and 1.401, PCT Rules *>20.1(d)<, 26.3ter(b) and 26.3ter(d). As found in MPEP Appendix R, and in PCT Administra- a result, PCT Rules *>20.1(c)<, 26.3ter(a) and tive Instructions Section 101, found in< MPEP 26.3ter(c) shall not apply to the USPTO as Receiving Appendix AI. Office for as long as the aforementioned incompatibil- ity exists. 1803 Reservations Under the PCT * PCT Rules 49.5(c-bis) and 49.5(k) continue not to Taken by the United States of be compatible with the national law applied by the America [R-6] USPTO as a Designated Office. See 35 U.S.C. 371(c)(2). >Also, PCT Rules 49ter.1(a)-(d) and The United States of America had originally 49ter.2(a)-(g) are not compatible with the national declared that it was not bound by Chapter II (PCT law applied by the USPTO as a Designated Office. Article 64 (1)), but withdrew that reservation on July See 35 U.S.C. 119(a). Thus, the USPTO has taken a 1, 1987. reservation on adherence to these Rules pursuant to It has also declared that, as far as the United States PCT Rules 49.5(l), 49ter.1(g) and 49ter.2(h).< As a of America is concerned, international publication is result, PCT Rules 49.5(c-bis)>,< * 49.5(k)>, not required (PCT Article 64 (3)). Accordingly, under 49ter.1(a)-(d) and 49ter.2(a)-(g)< shall not apply to PCT Article 64(3)(b), if the United States is the only the USPTO as Designated Office for as long as the PCT Contracting State designated in an international aforementioned incompatibility exists. See the Inter- application, the international application will not be national Bureau’s notice published **>on the WIPO published by the International Bureau (IB) at 18 web site at: http://www.wipo.int/pct/en/texts/reserva- months. Even though the United States Patent and tions/res_incomp.pdf<. Trademark Office has begun pre-grant publication under 35 U.S.C. 122(b), the United States has not 1805 Where To File an International removed its reservation under PCT Article 64(3) Application [R-6] because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application 35 U.S.C. 361. Receiving Office. will, however, be published under 35 U.S.C. 122(b) if (a)The Patent and Trademark Office shall act as a Receiving Office for international applications filed by nationals or residents it enters the national stage in the United States. It will of the United States. In accordance with any agreement made be published again if it is allowed to issue as a United between the United States and another country, the Patent and States patent. Trademark Office may also act as a Receiving Office for interna-

1800-7 Rev. 7, July 2008 1805 MANUAL OF PATENT EXAMINING PROCEDURE tional applications filed by residents or nationals of such country receipt will be the next succeeding day which is not a who are entitled to file international applications. Saturday, Sunday, or Federal holiday (37 CFR 1.6). ***** Irrespective of the Certification practice under 37 CFR 1.8(a), facsimile transmission (without the See 37 CFR 1.421 - 1.423 as to who can file an benefit of the certificate under 37 CFR 1.8(a)) may be international application. used to submit certain papers in international applica- Only if at least one of the applicants is a resident or tions. However, facsimile transmission may not be national of the United States of America may an inter- used for the filing of an international application, the national application be filed in the United States filing of color drawings under 37 CFR 1.437, or the Receiving Office (PCT Article 9(1) and (3), PCT filing of a copy of the international application and Rules 19.1 and 19.2, 35 U.S.C. 361(a) and 37 CFR the basic national fee to enter the U.S. national stage 1.412(a), 1.421). The concepts of residence and under 35 U.S.C. 371. See 37 CFR 1.6(d)(3) and (4), nationality are defined in PCT Rule 18.1. For the pur- 1.8(a)(2)(i)(D), and 1.8(a)(2)(i)(F). The Demand for pose of filing an international application, the appli- international preliminary examination may be filed by cant may be either the inventor or the successor in facsimile transmission. See MPEP § 1834.01. title of the inventor (assignee or owner). However, the laws of the various designated States regarding the The United States Receiving Office and PCT Help requirements for applicants must also be considered Desk are available to offer guidance on PCT require- when filing an international application. For example, ments and procedures. See MPEP § 1730 for informa- the patent law of the United States of America tion on contacting the staff and other available means requires that, for the purposes of designating the for obtaining information. United States of America, the applicant(s) must be the WARNING - although the inventor(s) (35 U.S.C. 373, PCT Article 27(3)). at 35 U.S.C. 21(a) authorizes the Director to prescribe The United States Receiving Office is located at by rule that any paper or fee required to be filed in the 2900 Crystal Drive in Arlington, Virginia. Interna- Patent and Trademark Office will be considered filed tional applications and related papers may be depos- in the Office on the date on which it was deposited ited with the United States Receiving Office by with the United States Postal Service, PCT Rule addressing the papers to “Mail Stop PCT” and deliv- 20.1(a) provides for marking the “date of actual ering them to the Customer Service Window at the receipt on the request.” Although the “Express Mail” USPTO’s Alexandria headquarters. The street address provisions under 37 CFR 1.10 have not been con- is: U.S. Patent and Trademark Office, Customer Ser- tested to date regarding PCT applications, applicants vice Window, Mail Stop PCT, Randolph Building, should be aware of a possible different interpretation 401 Dulany Street, Alexandria, VA 22314. The mail- by foreign authorities. ing address for delivery by the U.S. Postal Service is: PCT Rule 19.4 provides for transmittal of an inter- Mail Stop PCT, Commissioner for Patents, P.O. Box national application to the International Bureau as 1450, Alexandria, Virginia 22313-1450. It should be Receiving Office in certain instances. For example, noted that the “Express Mail” provisions of 37 CFR when the international application is filed with the 1.10 apply to the filing of all applications and papers United States Receiving Office and the language in filed in the U.S. Patent and Trademark Office, includ- which the international application is filed is not ing PCT international applications and related papers accepted by the United States Receiving Office, or if and fees. It should be further noted, however, that the applicant does not have the requisite residence or PCT international applications and papers relating to nationality, the application may be forwarded to the international applications are specifically excluded International Bureau for processing in its capacity as a from the Certificate of Mailing or Transmission pro- Receiving Office. See 37 CFR 1.412(c)(6). The cedures under 37 CFR 1.8. See MPEP § 1834. If 37 Receiving Office of the International Bureau will con- CFR 1.8 is improperly used, the date to be accorded sider the international application to be received as of the paper will be the date of actual receipt in the the date accorded by the United States Receiving Office unless the receipt date falls on a Saturday, Sun- Office. This practice will avoid the loss of a filing day, or Federal holiday in which case the date of date in those instances where the United States

Rev. 7, July 2008 1800-8 PATENT COOPERATION TREATY 1807

Receiving Office is not competent to act, but where 1807 Agent or Common Representative the international application indicates an applicant to and General Power of Attorney be a national or resident of a PCT Contracting state or [R-7] is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office. Of 37 CFR 1.455. Representation in international applica- course, where questions arise regarding residence or tions. nationality, i.e., the U.S. is not clearly competent, the (a) Applicants of international applications may be repre- application will be forwarded to the International sented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant Bureau as Receiving Office. Note, where no residence appointed as a common representative (PCT Art. 49, Rules 4.8 or nationality is indicated, the U.S. is not competent, and 90 and § 11.9). If applicants have not appointed an attorney or and the application will be forwarded to the Interna- agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and tional Bureau as Receiving Office so long as the nec- who is entitled to file in the U.S. Receiving Office shall be consid- essary fee is paid. The fee is an amount equal to the ered to be the common representative of all the applicants. An transmittal fee. attorney or agent having the right to practice before a national office with which an international application is filed and for If all of the applicants are indicated to be residents which the United States is an International Searching Authority or or nationals of non-PCT Contracting States, PCT Rule International Preliminary Examining Authority may be appointed 19.4 does not apply, and the application is denied an to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate international filing date. attorney or agent who shall also then be of record (PCT Rule > 90.1(d)). The appointment of an attorney or agent, or of a com- mon representative, revokes any earlier appointment unless other- Any applicant who is a resident or national of a wise indicated (PCT Rule 90.6(b) and (c)). PCT Contracting State may also file their application (b) Appointment of an agent, attorney or common represen- directly with the International Bureau as receiving tative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or Office. An applicant may wish to consider filing in a separate power of attorney submitted either to the United directly with the International Bureau as receiving States Receiving Office or to the International Bureau. Office instead of the United States Receiving Office (c) Powers of attorney and revocations thereof should be in the situation where applicant is filing their interna- submitted to the United States Receiving Office until the issuance of the international search report. tional application after the expiration of the 12 month (d) The addressee for correspondence will be as indicated in priority period but within two months of the expira- section 108 of the Administrative Instructions. tion of the priority period, and where applicant desires to request restoration of the right of priority under the PCT Rule 90. Agents and Common Representatives 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 90.4.Manner of Appointment of Agent or Common Repre- sentative PCT Rule 19.4(a)(iii) in situations where the interna- tional application was filed with the United States (a) The appointment of an agent shall be effected by the Receiving Office after the expiration of the 12 month applicant signing the request, the demand, or a separate power of attorney. Where there are two or more applicants, the appointment priority period but within two months of the expira- of a common agent or common representative shall be effected by tion of the priority period, and where applicant desires each applicant signing, at his choice, the request, the demand or a to request restoration of the right of priority under the separate power of attorney. in spite of due care standard. (b) Subject to Rule 90.5, a separate power of attorney shall be submitted to either the receiving Office or the International Applications filed with, or forwarded to, the Inter- Bureau, provided that, where a power of attorney appoints an national Bureau must have a foreign filing license. agent under Rule 90.1(b), (c), or (d)(ii), it shall be submitted to the International Searching Authority or the International Preliminary < Examining Authority, as the case may be.

1800-9 Rev. 7, July 2008 1807 MANUAL OF PATENT EXAMINING PROCEDURE

(c) If the separate power of attorney is not signed, or if the (ii) a copy of it is attached to the request, the demand or required separate power of attorney is missing, or if the indication the separate notice, as the case may be; that copy need not be of the name or address of the appointed person does not comply signed. with Rule 4.4, the power of attorney shall be considered nonexist- (b) The general power of attorney shall be deposited with the ent unless the defect is corrected. receiving Office, provided that, where it appoints an agent under (d) Subject to paragraph (e), any receiving Office, any Inter- Rule 90.1(b), (c), or (d)(ii), it shall be deposited with the Interna- national Searching Authority, any International Preliminary tional Searching Authority or the International Preliminary Exam- Examining Authority and the International Bureau may waive the ining Authority, as the case may be. requirement under paragraph (b) that a separate power of attorney (c) Any receiving Office, any International Searching be submitted to it, in which case paragraph (c) shall not apply. Authority and any International Preliminary Examining Authority may waive the requirement under paragraph (a)(ii) that a copy of (e) Where the agent or the common representative submits the general power of attorney is attached to the request, the any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4, demand or the separate notice, as the case may be. the requirement under paragraph (b) for a separate power of attor- ney shall not be waived under paragraph (d). (d) Notwithstanding paragraph (c), where the agent submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 to ***** the receiving Office, the International Searching Authority or the International Preliminary Examining Authority, a copy of the gen- Where an appointment of an agent or common rep- eral power of attorney shall be submitted to that Office or Author- resentative is effected by a separate power of attorney, ity. that power of attorney must be submitted to either the ***** receiving Office or the International Bureau. How- “General” powers of attorney are recognized for the ever, a power of attorney appointing an agent or sub- purpose of filing and prosecuting an international agent to represent the applicant specifically before the application before the international authorities. See International Searching Authority or the International PCT Rule 90.5. Preliminary Examining Authority must be submitted directly to that Authority. See PCT Rule 90.4(b). Any general power of attorney must be filed with the receiving Office if the appointment was for the >The Customer Number Practice set forth in MPEP purposes of the international phase generally, or with § 403 may not be used in the international phase to the International Searching Authority or International appoint an agent or designate a correspondence Preliminary Examining Authority if the appointment address. A power of attorney making use of the Cus- was specifically to represent the applicant before that tomer Number Practice in the international phase to Authority. The appointment will then be effective in indicate the name or address of an appointed person relation to any particular application filed by that will be considered nonexistent unless the defect is applicant provided that the general power of attorney corrected. See PCT Rule 90.4(c).< is referred to in the request, the Demand or a separate notice, and that a copy of the general power of attor- I. “GENERAL” POWER OF ATTORNEY ney is attached to that request, Demand or separate notice. That copy of the signed original need not, PCT Rule 90. itself, be separately signed. Agents and Common Representatives II. WAIVER OF REQUIREMENT FOR A ***** POWER OF ATTORNEY

90.5.General Power of Attorney Pursuant to PCT Rules 90.4(d) and 90.5(c), which are applicable to international applications having an (a) Appointment of an agent in relation to a particular inter- international filing date on or after January 1, 2004, national application may be effected by referring in the request, the receiving Office, International Bureau, Interna- the demand, or a separate notice to an existing separate power of attorney appointing that agent to represent the applicant in relation tional Searching Authority and International Prelimi- to any international application which may be filed by that appli- nary Examining Authority may waive the requirement cant (i.e., a “general power of attorney”), provided that: for a separate power of attorney or copy of the general (i) the general power of attorney has been deposited in power of attorney in all cases except with respect to accordance with paragraph (b), and notice of withdrawals under PCT Rule 90bis (i.e.,

Rev. 7, July 2008 1800-10 PATENT COOPERATION TREATY 1808 notices withdrawing international applications, desig- who is entitled to file in the U.S. Receiving Office shall be consid- nations, priority claims, demands or elections). The ered to be the common representative of all the applicants. An USPTO, when acting in its capacity as a receiving attorney or agent having the right to practice before a national office with which an international application is filed and for Office, International Searching Authority, or Interna- which the United States is an International Searching Authority or tional Preliminary Examining Authority, will in most International Preliminary Examining Authority may be appointed cases waive the requirement for a separate power of to represent the applicants in the international application before attorney and copy of the general power of attorney in that authority. An attorney or agent may appoint an associate international applications having an international fil- attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a com- ing date on or after January 1, 2004. However, a sepa- mon representative, revokes any earlier appointment unless other- rate power of attorney or copy of the general power of wise indicated (PCT Rule 90.6(b) and (c)). attorney may still be required in certain cases, e.g., (b) Appointment of an agent, attorney or common represen- where an agent’s authority to act on behalf of the tative (PCT Rule 4.8) must be effected either in the Request form, applicant is in doubt. signed by applicant, in the Demand form, signed by applicant, or Model power of attorney and general power of in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau. attorney forms are available online from WIPO’s web (c) Powers of attorney and revocations thereof should be site (www.wipo.int/pct/en/index.html). submitted to the United States Receiving Office until the issuance of the international search report. 1808 Change in or Revocation of the Ap- (d) The addressee for correspondence will be as indicated in pointment of an Agent or a Com- section 108 of the Administrative Instructions. mon Representative [R-7] The appointment of an agent or a common repre- PCT Rule 90. sentative can be revoked. The document containing Agents and Common Representatives the revocation must be signed by the persons who made the appointment or by their successors in title. ***** The appointment of a sub-agent may also be revoked by the applicant concerned. If the appointment of an 90.6.Revocation and Renunciation agent is revoked, any appointment of a sub-agent by (a) Any appointment of an agent or common representative that agent is also considered revoked. >Also, as an may be revoked by the persons who made the appointment or by agent may not be appointed by Customer Number their successors in title, in which case any appointment of a sub- Practice in the international phase (see MPEP agent under Rule 90.1(d) by that agent shall also be considered as § 1807), an appointment of an agent may not be revoked. Any appointment of a subagent under Rule 90.1(d) may also be revoked by the applicant concerned. revoked by reference to a Customer Number.< (b) The appointment of an agent under Rule 90.1(a) shall, The appointment of an agent for the international unless otherwise indicated, have the effect of revoking any earlier phase in general automatically has the effect, unless appointment of an agent made under that Rule. otherwise indicated, of revoking any earlier appoint- (c) The appointment of a common representative shall, ment of an agent. The appointment of a common rep- unless otherwise indicated, have the effect of revoking any earlier resentative similarly has the effect, unless otherwise appointment of a common representative. (d) An agent or a common representative may renounce his indicated, of revoking any earlier appointment of a appointment by a notification signed by him. common representative. (e) Rule 90.4(b) and (c) shall apply, mutatis mutandis, to a Renunciation of an appointment may be made by document containing a revocation or renunciation under this Rule. means of a notification signed by the agent or com- 37 CFR 1.455. Representation in international applica- mon representative. The applicant is informed of the tions. renunciation by the International Bureau. (a) Applicants of international applications may be repre- The rules for signing and submission of a power of sented by attorneys or agents registered to practice before the attorney set forth in PCT Rule 90.4(b) and (c) also United States Patent and Trademark Office or by an applicant apply to a revocation or renunciation of an appoint- appointed as a common representative (PCT Art. 49, Rules 4.8 ment. See PCT Rule 90.6(e). and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more U.S. attorneys or agents wishing to withdraw from than one applicant, the applicant first named in the request and representation in international applications may

1800-11 Rev. 7, July 2008 1810 MANUAL OF PATENT EXAMINING PROCEDURE request to do so. To expedite the handling of requests For withdrawal of attorney or agent in the national for permission to withdraw as attorney, the request stage, see MPEP § 402.06. should be submitted to Mail Stop PCT and should indicate the present mailing addresses of the attorney 1810 Filing Date Requirements [R-6] who is withdrawing and of the applicant. >The Office PCT Article 11. will not accept address changes to a new practitioner Filing Date and Effects of the International Application or law firm absent the filing of a power of attorney to the new representative.< Because the United States (1) The receiving Office shall accord as the international fil- Patent and Trademark Office (USPTO) does not rec- ing date the date of receipt of the international application, pro- ognize law firms, each attorney of record must sign vided that that Office has found that, at the time of receipt: the notice of withdrawal, or the notice of withdrawal (i) the applicant does not obviously lack, for reasons of must contain a clear indication of one attorney signing residence or nationality, the right to file an international applica- tion with the receiving Office, on behalf of another. (ii) the international application is in the prescribed lan- **>In accordance with 37 CFR 10.40, the USPTO guage, will usually require the practitioner(s) to certify that (iii)the international application contains at least the fol- he, she or they have: (1) given reasonable notice to the lowing elements: client, prior to the expiration of the reply period, that (a) an indication that it is intended as an international application, the practitioner(s) intends to withdraw from employ- (b) the designation of at least one Contracting State, ment; (2) delivered to the client or a duly authorized (c) the name of the applicant, as prescribed, representative of the client all papers and property (d) a part which on the face of it appears to be a (including funds) to which the client is entitled; and description, (3) notified the client of any replies that may be due (e) a part which on the face of it appears to be a claim and the time frame within which the client must or claims. respond. Furthermore, as 37 CFR 10.40 permits with- ***** drawal from representation before the Office for rea- sons set forth in 37 CFR 10.40(b) and (c), if the 35 U.S.C. 363. International application designating the reasons for withdrawal do not conform to one of the United States: Effect. mandatory or permissive reasons set forth in 37 CFR An international application designating the United States shall 10.40, the Office will not approve the request. have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in The Office will not approve requests from practitio- the Patent and Trademark Office except as otherwise provided in ners to withdraw from applications where the request- section 102(e) of this title. ing practitioner was not appointed in a power of 35 U.S.C. 373. Improper Applicant. attorney but is acting, or has acted, in a representative An international application designating the United States, capacity pursuant to 37 CFR 1.34. In these situations, shall not be accepted by the Patent and Trademark Office for the the practitioner is responsible for the correspondence national stage if it was filed by anyone not qualified under chapter the practitioner files in the application while acting in 11 of this title to be an applicant for the purpose of filing a a representative capacity. As such, there is no need for national application in the United States. Such international appli- cations shall not serve as the basis for the benefit of an earlier fil- the practitioner to obtain the permission of the Office ing date under section 120 of this title in a subsequently filed to withdraw from representation. application, but may serve as the basis for a claim of the right of priority under subsections (a) through (d) of section 119 of this Practitioners should note that the International title, if the United States was not the sole country designated in Bureau will not record a change in the agent if the such international application. requested change is received by it after the expiration of 30 months from the priority date. See PCT Rule 37 CFR 1.431. International application requirements. 92bis. Where a request to withdraw from representa- (a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or tion is filed with the USPTO after the expiration of more claims, an abstract, and one or more drawings (where this time period, the request may not be treated on the required). (PCT Art. 3(2) and Section 207 of the Administrative merits.< Instructions.)

Rev. 7, July 2008 1800-12 PATENT COOPERATION TREATY 1810

(b) An international filing date will be accorded by the receiving Office will invite applicant to correct the United States Receiving Office, at the time of receipt of the inter- deficiency within a set time limit. See PCT Article national application, provided that: 11(2) and PCT Rule *>20.3<. In such case, the inter- (1) At least one applicant is a United States resident or national and the papers filed at the time of receipt of the interna- national filing date will be the date on which a timely tional application so indicate (35 U.S.C. 361(a), PCT Art. filed correction is received by the receiving Office. 11(1)(i)). >In applications filed on or after April 1, 2007, if the (2) The international application is in the English lan- defect under PCT Article 11(1) is that the purported guage (35 U.S.C. 361(c), PCT Art. 11(1)(ii)). international application fails to contain a portion (3) The international application contains at least the fol- lowing elements (PCT Art. 11(1)(iii)): which on its face appears to be a description or (i) An indication that it is intended as an international claims, and if the application, on its initial receipt application (PCT Rule 4.2); date, contained a priority claim and a proper incorpo- (ii) The designation of at least one Contracting State ration by reference statement, the initial receipt date of the International Patent Cooperation Union (§ 1.432); may be retained as the international filing date if the (iii) The name of the applicant, as prescribed (note §§ submitted correction was completely contained in the 1.421-1.423); (iv) A part which on the face of it appears to be a earlier application. See PCT Rules 4.18 and 20.6.< If description; and the defect under PCT Article 11(1) is not timely cor- (v) A part which on the face of it appears to be a rected, the receiving Office will promptly notify the claim. applicant that the application is not and will not be (c) Payment of the international filing fee (PCT Rule 15.2) treated as an international application. See PCT Rule and the transmittal and search fees (§ 1.445) may be made in full at the time the international application papers required by para- *>20.4<. Where all the sheets pertaining to the same graph (b) of this section are deposited or within one month there- international application are not received on the same after. The international filing, transmittal, and search fee payable day by the receiving Office, in most instances, the is the international filing, transmittal, and search fee in effect on date of receipt of the application will be amended to the receipt date of the international application. reflect the date on which the last missing sheets were (1) If the international filing, transmittal and search fees are not paid within one month from the date of receipt of the inter- received. As an amended date of receipt may cause national application and prior to the sending of a notice of defi- the priority claim to be forfeited, applicants should ciency which imposes a late payment fee, applicant will be assure that all sheets of the application are deposited notified and given one month within which to pay the deficient with the receiving Office on the same day. **>In fees plus the late payment fee. Subject to paragraph (c)(2) of this applications filed on or after April 1, 2007, if the section, the late payment fee will be equal to the greater of: (i) Fifty percent of the amount of the deficient fees; or application, on its initial receipt date, contained a pri- (ii) An amount equal to the transmittal fee. ority claim and a proper incorporation by reference (2) The late payment fee shall not exceed an amount statement, the initial receipt date may be retained as equal to fifty percent of the international filing fee not taking into the international filing date if the submitted correction account any fee for each sheet of the international application in was completely contained in the earlier application. excess of thirty sheets (PCT Rule 16bis). Again see PCT Rules 4.18 and 20.6 .< (3) The one-month time limit set pursuant to paragraph (c) of this section to pay deficient fees may not be extended. An all too common occurrence is that applicants (d) If the payment needed to cover the transmittal fee, the will file an international application in the U.S. international filing fee, the search fee, and the late payment fee pursuant to paragraph (c) of this section is not timely made in Receiving Office and no applicant has a U.S. resi- accordance with PCT Rule 16bis.1(e), the Receiving Office will dence or nationality. Applicants are cautioned to be declare the international application withdrawn under PCT Article sure that at least one applicant is a resident or national 14(3)(a). of the U.S. before filing in the U.S. Receiving Office. Where no applicant indicated on the request papers is THE “INTERNATIONAL FILING DATE” a resident or national of the United States, the USPTO An international filing date is accorded to the earli- is not a competent receiving Office for the interna- est date on which the requirements under PCT Article tional application under PCT Rule 19.1(a). Nonethe- 11(1) were satisfied. If the requirements under PCT less, the date the international application was filed in Article 11(1) are not satisfied as of the date of initial the USPTO will not be lost as a filing date for the receipt of the international application papers, the international application if at least one applicant is a

1800-13 Rev. 7, July 2008 1812 MANUAL OF PATENT EXAMINING PROCEDURE resident or national of any PCT Contracting State. Any international application must contain the fol- Under PCT Rule 19.4, the USPTO will receive the lowing elements: request, description, claim or application on behalf of the International Bureau as claims, abstract and one or more drawings (where receiving Office (PCT Rule 19.4(a)) and, upon pay- drawings are necessary for the understanding of the ment of a fee equal to the transmittal fee, the USPTO invention (PCT Article 3(2) and PCT Article 7(2)). will promptly transmit the international application to The elements of the international application are to be the International Bureau under PCT Rule 19.4(b). arranged in the following order: the request, the However, if all of the applicants are indicated to be description (other than any sequence listing part both residents and nationals of non-PCT Contracting thereof), the claims, the abstract, the drawings, and States, PCT Rule 19.4 does not apply, and the applica- the sequence listing part of the description (where tion is denied an international filing date. applicable) (Administrative Instructions Section The USPTO is also not competent to receive inter- 207(a)). All the sheets contained in the international national applications that are not in the English lan- application must be numbered in consecutive Arabic guage and, upon payment of a fee equal to the numerals by using the following separate series of transmittal fee, the USPTO will forward such applica- numbers: a first series applying to the request; a sec- tions to the International Bureau under PCT Rule 19.4 ond series to the description, claims and abstract; a provided they are in a language accepted by the Inter- third series to the drawings (where applicable); and a national Bureau as receiving Office. further series to the sequence listing part of the A discussion of PCT Rule 19.4 is also included in description (where applicable) (PCT Rule 11.7 and MPEP § 1805. Administrative Instructions Section 207(b)). Only one 1812 Elements of the International copy of the international application need be filed in the United States Receiving Office (37 CFR Application [R-2] 1.433(a)). The request is made on a standardized form PCT Article 3. (Form PCT/RO/101), copies of which can be obtained The International Application from the USPTO **>or online from WIPO’s web site (www.wipo.int/pct/en/index.html). The “Request” (1) Applications for the protection of inventions in any of form can also be presented as a computer printout pre- the Contracting States may be filed as international applications pared using the PCT-SAFE software. This software under this Treaty. (2) An international application shall contain, as specified in can be downloaded from the PCT-SAFE web site this Treaty and the Regulations, a request, a description, one or (www.wipo.int/pct-safe).< The details of a computer more claims, one or more drawings (where required), and an generated Request form are provided in Administra- abstract. tive Instructions Section 102bis. (3) The abstract merely serves the purpose of technical information and cannot be taken into account for any other pur- pose, particularly not for the purpose of interpreting the scope of 1817 PCT Member States [R-7] the protection sought. (4) The international application shall: An updated list of PCT Contracting States is avail- (i) be in a prescribed language; able from WIPO’s web site (www.wipo.int/pct/guide/ (ii) comply with the prescribed physical requirements; (iii)comply with the prescribed requirement of unity of en/gdvol1/annexes/annexa/ax_a.pdf). The following invention; list of PCT Contracting States was updated at the time (iv) be subject to the payment of the prescribed fees. of publication of the MPEP:

Rev. 7, July 2008 1800-14 PATENT COOPERATION TREATY 1817

Ratification, Date of Ratification, Date From Which State State Accession or Accession or Declaration May Be Designated Declaration

(1) Central African Republic° Accession 15 September 1971 01 June 1978 (2) Senegal° Ratification 08 March 1972 01 June 1978 (3) Madagascar Ratification 27 March 1972 01 June 1978 (4) Malawi Accession 16 May 1972 01 June 1978 (5) Cameroon° Accession 15 March 1973 01 June 1978 (6) Chad° Accession 12 February 1974 01 June 1978 (7) Togo° Ratification 28 January 1975 01 June 1978 (8) Gabon° Accession 06 March 1975 01 June 1978 (9) United States of America Ratification 26 November 1975 01 June 1978 (10) Germany°° Ratification 19 July 1976 01 June 1978 (11) Congo° Accession 08 August 1977 01 June 1978 (12) Switzerland°° Ratification 14 September 1977 01 June 1978 (13) United Kingdom°° Ratification 24 October 1977 01 June 1978 (14) France°° Ratification 25 November 1977 01 June 1978 (15) Russian Federation Ratification 29 December 1977 01 June 1978 (16) Brazil Ratification 09 January 1978 01 June 1978 (17) Luxembourg°° Ratification 31 January 1978 01 June 1978 (18) Sweden°° Ratification 17 February 1978 01 June 1978 (19) Japan Ratification 01 July 1978 01 October 1978 (20) Denmark°° Ratification 01 September 1978 01 December 1978 (21) Austria°° Ratification 23 January 1979 23 April 1979 (22) Monaco°° Ratification 22 March 1979 22 June 1979 (23) Netherlands°° Ratification 10 April 1979 10 July 1979 (24) Romania°° Ratification 23 April 1979 23 July 1979 (25) Norway>°°< Ratification 01 October 1979 01 January 1980 (26) Liechtenstein°° Accession 19 December 1979 19 March 1980

1800-15 Rev. 7, July 2008 1817 MANUAL OF PATENT EXAMINING PROCEDURE

Ratification, Date of Ratification, Date From Which State State Accession or Accession or Declaration May Be Designated Declaration

(27) Australia Accession 31 December 1979 31 March 1980 (28) Hungary °° Ratification 27 March 1980 27 June 1980 (29) Democratic People’s Republic Accession 08 April 1980 08 July 1980 of Korea (North Korea ) (30) Finland°° Ratification 01 July 1980 01 October 1980 (31) Belgium°° Ratification 14 September 1981 14 December 1981 (32) Sri Lanka Accession 26 November 1981 26 February 1982 (33) Mauritania° Accession 13 January 1983 13 April 1983 (34) Sudan Accession 16 January 1984 16 April 1984 (35) Bulgaria °° Accession 21 February 1984 21 May 1984 (36) Republic of Korea (South Accession 10 May 1984 10 August 1984 Korea) (37) Mali° Accession 19 July 1984 19 October 1984 (38) Barbados Accession 12 December 1984 12 March 1985 (39) Italy°° Ratification 28 December 1984 28 March 1985 (40) Benin° Accession 26 November 1986 26 February 1987 (41) Burkina Faso° Accession 21 December 1988 21 March 1989 (42) Spain°° Accession 16 August 1989 16 November 1989 (43) Canada Ratification 02 October 1989 02 January 1990 (44) Greece°° Accession 09 July 1990 09 October 1990 (45) Poland°° Accession 25 September 1990 25 December 1990 (46) Côte d’Ivoire° Ratification 31 January 1991 30 April 1991 (47) Guinea° Accession 27 February 1991 27 May 1991 (48) Mongolia Accession 27 February 1991 27 May 1991 (49) Czech Republic °° Declaration 18 December 1992 01 January 1993 (50) Ireland°° Ratification 01 May 1992 01 August 1992 (51) Portugal°° Accession 24 August 1992 24 November 1992 (52 ) New Zealand Accession 01 September 1992 01 December 1992

Rev. 7, July 2008 1800-16 PATENT COOPERATION TREATY 1817

Ratification, Date of Ratification, Date From Which State State Accession or Accession or Declaration May Be Designated Declaration

(53) Ukraine Declaration 21 September 1992 25 December 1991 (54) Viet Nam Accession 10 December 1992 10 March 1993 (55) Slovakia °° Declaration 30 December 1992 01 January 1993 (56) Niger° Accession 21 December 1992 21 March 1993 (57) Kazakhstan Declaration 16 February 1993 25 December 1991 (58) Belarus Declaration 14 April 1993 25 December 1991 (59) Latvia °° Accession 07 June 1993 07 September 1993 (60) Uzbekistan Declaration 18 August 1993 25 December 1991 (61) China Accession 01 October 1993 01 January 1994 (62) Slovenia °° Accession 01 December 1993 01 March 1994 (63) Trinidad and Tobago Accession 10 December 1993 10 March 1994 (64) Georgia Declaration 18 January 1994 25 December 1991 (65) Kyrgyzstan Declaration 14 February 1994 25 December 1991 (66) Republic of Moldova Declaration 14 February 1994 25 December 1991 (67) Tajikistan Declaration 14 February 1994 25 December 1991 (68) Kenya Accession 08 March 1994 08 June 1994 (69) Lithuania °° Accession 05 April 1994 05 July 1994 (70) Armenia Declaration 17 May 1994 25 December 1991 (71) Estonia °° Accession 24 May 1994 24 August 1994 (72) Liberia Accession 27 May 1994 27 August 1994 (73) Swaziland Accession 20 June 1994 20 September 1994 (74) Mexico Accession 01 October 1994 01 January 1995 (75) Uganda Accession 09 November 1994 09 February 1995 (76) Singapore Accession 23 November 1994 23 February 1995 (77) Iceland °° Accession 23 December 1994 23 March 1995 (78) Turkmenistan Declaration 01 March 1995 25 December 1991 (79) The former Yugoslov Republic Accession 10 May 1995 10 August 1995 of Macedonia

1800-17 Rev. 7, July 2008 1817 MANUAL OF PATENT EXAMINING PROCEDURE

Ratification, Date of Ratification, Date From Which State State Accession or Accession or Declaration May Be Designated Declaration

(80) Albania Accession 04 July 1995 04 October 1995 (81) Lesotho Accession 21 July 1995 21 October 1995 (82) Azerbaijan Accession 25 September 1995 25 December 1995 (83) Turkey°° Accession 01 October 1995 01 January 1996 (84) Israel Ratification 01 March 1996 01 June 1996 (85) Cuba Accession 16 April 1996 16 July 1996 (86) Saint Lucia Accession 30 May 1996 30 August 1996 (87) Bosnia and Herzegovina Accession 07 June 1996 07 September 1996 (88) Serbia Ratification 01 November 1996 01 February 1997 (89) Ghana Accession 26 November 1996 16 February 1997 (90) Zimbabwe Accession 11 March 1997 11 June 1997 (91) Sierra Leone Accession 17 March 1997 17 June 1997 (92) Indonesia Accession 05 June 1997 05 September 1997 (93) Gambia Accession 09 September 1997 09 December 1997 (94) Guinea-Bissau° Accession 12 September 1997 12 December 1997 (95) Cyprus°° Accession 01 January 1998 01 April 1998 (96) Croatia>°°< Accession 01 April 1998 01 July 1998 (97) Grenada Accession 22 June 1998 22 September 1998 (98) India Accession 07 September 1998 07 December 1998 (99) United Arab Emirates Accession 10 December 1998 10 March 1999 (100) South Africa Accession 16 December 1998 16 March 1999 (101) Costa Rica Accession 03 May 1999 03 August 1999 (102) Dominica Accession 07 May 1999 07 August 1999 (103) United Republic of Tanzania Accession 14 June 1999 14 September 1999 (104) Morocco Accession 08 July 1999 08 October 1999 (105) Algeria Ratification 08 December 1999 08 March 2000 (106) Antigua and Barbuda Accession 17 December 1999 17 March 2000

Rev. 7, July 2008 1800-18 PATENT COOPERATION TREATY 1817

Ratification, Date of Ratification, Date From Which State State Accession or Accession or Declaration May Be Designated Declaration

(107) Mozambique Accession 18 February 2000 18 May 2000 (108) Belize Accession 17 March 2000 17 June 2000 (109) Colombia Accession 29 November 2000 28 February 2001 (110) Ecuador Accession 07 February 2001 07 May 2001 (111) Equatorial Guinea° Accession 17 April 2001 17 July 2001 (112) Philippines Ratification 17 May 2001 17 August 2001 (113) Oman Accession 26 July 2001 26 October 2001 (114) Zambia Accession 15 August 2001 15 November 2001 (115) Tunisia Accession 10 September 2001 10 December 2001 (116) Saint Vincent and the Accession 06 May 2002 06 August 2002 Grenadines (117) Seychelles Accession 07 August 2002 07 November 2002 (118) Nicaragua Accession 06 December 2002 06 March 2003 (119) Papua New Guinea Accession 14 March 2003 14 June 2003 (120) Syrian Arab Republic Accession 26 March 2003 26 June 2003 (121) Egypt Ratification 06 June 2003 06 September 2003 (122) Botswana Accession 30 July 2003 30 October 2003 (123) Namibia Accession 01 October 2003 01 January 2004 (124) San Marino Accession 14 September 2004 14 December 2004 (125) Comoros Accession 03 January 2005 03 April 2005 (126) Nigeria Accession 08 February 2005 08 May 2005 (127) Libyan Arab Jamahiriya Accession 15 June 2005 15 September 2005 (128) Saint Kitts and Nevis Accession 27 July 2005 27 October 2005 (129) Lao People’s Democratic Accession 14 March 2006 14 June 2006 Republic (130) Honduras Accession 20 March 2006 20 June 2006 (131) Malaysia Accession 16 May 2006 16 August 2006 (132) El Salvador Accession 17 May 2006 17 August 2006

1800-19 Rev. 7, July 2008 1817 MANUAL OF PATENT EXAMINING PROCEDURE

Ratification, Date of Ratification, Date From Which State State Accession or Accession or Declaration May Be Designated Declaration

(133) Guatemala Accession 14 July 2006 14 October 2006 (134) Malta>°°< Accession 01 December 2006 01 March 2007 (135) Montenegro Declaration 04 December 2006 03 June 2006 (136) Bahrain Accession 18 December 2006 18 March 2007 ** (137) Dominican Republic Accession 28 February 2007 28 May 2007 >(138) Angola Accession 27 September 2007 27 December 2007 (139) Sao Tome and Principe Accession 03 April 2008 03 July 2008< °Members of African Intellectual Property Organization (OAPI) regional patent system. Only regional patent protection is available for OAPI member states. A designation of any state is an indication that all OAPI states have been designated. °°Members of European Patent Convention (EPC) regional patent system. Either national patents or European patents for member States are available through PCT, except for Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, Netherlands, and Slovenia, for which only European patents are available if the PCT is used. The following states are members of African Regional Intellectual Property Organization (ARIPO) regional patent system and are Contracting States of both the Harare Protocol and the PCT: (4) Malawi, (34) Sudan, (68) Kenya, (73) Swaziland, (75) Uganda, (81) Lesotho, (89) Ghana, (90) Zimbabwe, (91) Sierra Leone, (93) Gambia, (103) United Republic of Tanzania, (107) Mozambique, (114) Zambia, (122) Botswana, and (123) Namibia. Note that with the accession of Botswana to the PCT, all 14 States party to the Harare Protocol are now also Contracting States of the PCT. State (73) Swaziland can only be designated for the purposes of an ARIPO patent and not for the purposes of a national patent. All other PCT Contracting States which are also party to the Harare Protocol can be designated either for a national or an ARIPO patent, or both a national and an ARIPO patent. The following states are members of the Eurasian Patent Organization (EAPO) regional patent system: (15) Russian Federation, (57) Kazakhstan, (58) Belarus, (65) Kyrgyzstan, (66) Republic of Moldova, (67) Tajiki- stan, (70) Armenia, (78) Turkmenistan, and (82) Azerbaijan. All PCT Contracting States which are also party to the Eurasian Patent Convention can be designated either for a national or a Eurasian patent, or both a national and a Eurasian patent. Note, however, that it is not possible to designate only some of these States for a Eurasian patent and that any designation of one or more States for a Eurasian patent will be treated as a des- ignation of all the States which are party to both the Convention and the PCT for a Eurasian patent.

Rev. 7, July 2008 1800-20 PATENT COOPERATION TREATY 1817.01

1817.01 Designation of States in Interna- information received shall be promptly published by the Interna- tional Bureau in the Gazette. tional Applications Having an (c) [Deleted]< International Filing Date On or 37 CFR 1.432. Designation of States by filing an After January 1, 2004 [R-5] international application. [Note: The regulations under the PCT were The filing of an international application request shall consti- tute: changed effective January 1, 2004. A correspond- (a) The designation of all Contracting States that are bound ing change was made to Title 37 of the Code of by the Treaty on the international filing date; Federal Regulations. See January 2004 Revision of (b) An indication that the international application is, in Patent Cooperation Treaty Application Procedure, respect of each designated State to which PCT Article 43 or 44 68 FR 59881 (Oct. 20, 2003), 1276 O.G. 6 (Nov. 11, applies, for the grant of every kind of protection which is avail- 2003). All international applications having an able by way of the designation of that State; and international filing date before January 1, 2004, (c) An indication that the international application is, in will continue to be processed under the procedures respect of each designated State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT in effect on the international filing date. For the Article 45(2) applies, a national patent. designation of states in international applications For international applications having an interna- having an international filing date before January tional filing date on or after January 1, 2004, the filing 1, 2004, see MPEP § 1817.01(a) for the information of an international application request constitutes: (A) that previously appeared in this section]. the designation of all Contracting States that are bound by the Treaty on the international filing date; > (B) an indication that the international application is, PCT Rule 4. in respect of each designated State to which PCT Arti- The Request (Contents) cle 43 or 44 applies, for the grant of every kind of pro- tection which is available by way of the designation ***** of that State; and (C) an indication that the interna- 4.9. Designation of States; Kinds of Protection; National tional application is, in respect of each designated and Regional Patents State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) (a) The filing of a request shall constitute: applies, a national patent. See 37 CFR 1.432 and PCT (i) the designation of all Contracting States that are bound by the Treaty on the international filing date; Rule 4.9. This automatic indication of all designations (ii) an indication that the international application is, in and all types of protection possible overcomes a pit- respect of each designated State to which Article 43 or 44 applies, fall in the designation system in effect for applications for the grant of every kind of protection which is available by way having an international filing prior to January 1, 2004, of the designation of that State: where applicants inadvertently omitted a designation (iii)an indication that the international application is, in or type of protection and failed to timely satisfy the respect of each designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless Article 45(2) requirements under former PCT Rule 4.9(b) to perfect applies, a national patent. a precautionary designation. (b) Notwithstanding paragraph (a)(i), if, on October 5, 2005, >Pursuant to PCT Rule 4.9(b), certain States may the national law of a Contracting State provides that the filing of be excepted from the all-inclusive designation system an international application which contains the designation of that under limited circumstances. Specifically, where the State and claims the priority of an earlier national application hav- ing effect in that State shall have the result that the earlier national international application contains a priority claim to application ceases to have effect with the same consequences as an earlier national application having effect in a State the withdrawal of the earlier national application, any request in whose national law provides that the designation of which the priority of an earlier national application filed in that such State has the result that the earlier national appli- State is claimed may contain an indication that the designation of cation ceases to have effect in such State, then the that State is not made, provided that the designated Office notifies the International Bureau by January 5, 2006, that this paragraph request may contain an indication that such State is shall apply in respect of designations of that State and that the not designated. Applicability of PCT Rule 4.9(b) is notification is still in force on the international filing date. The contingent upon timely notice by the affected Office

1800-21 Rev. 7, July 2008 1817.01(a) MANUAL OF PATENT EXAMINING PROCEDURE to the International Bureau. As of April 1, 2006, the payment fee shall be equal to the greater of fifty percent of the request may exclude the following designations: Ger- amount of the deficient fees up to a maximum amount equal to the many (DE), Japan (JP), Republic of Korea (KR), and basic fee, or an amount equal to the transmittal fee (PCT Rule 16bis). The one-month time limit set in the notification of defi- Russian Federation (RU). See “Reservations and cient designation fees may not be extended. Failure to timely pay Incompatibilities” at http://www.wipo.int/pct/en/ at least one designation fee will result in the withdrawal of the applicants.html for further information.< international application. (1) The one designation fee must be paid: APPLICANT FOR PURPOSES OF EACH (i) Within one year from the priority date; DESIGNATION (ii) Within one month from the date of receipt of the international application if that month expires after the expiration Where there is but a single applicant, the right to of one year from the priority date; or file an international application and to designate Con- (iii) With the late payment fee defined in this para- tracting States or regions exists if the applicant is a graph within the time set in the notification of the deficient desig- resident or national of a PCT Contracting State. The nation fees or in accordance with PCT Rule 16bis.1(e). (2) If after a notification of deficient designation fees the applicant can be an individual, corporate entity or applicant makes timely payment, but the amount paid is not suffi- other concern. In the case where there are several cient to cover the late payment fee and all designation fees, the applicants who are different for different designated Receiving Office will, after allocating payment for the basic, states, the right to file an international application and search, transmittal and late payment fees, allocate the amount paid to designate Contracting States or regions exists if at in accordance with PCT Rule 16bis.1(c) and withdraw the unpaid least one of them is a resident or national of a Con- designations. The notification of deficient designation fees pursu- ant to this paragraph may be made simultaneously with any notifi- tracting State. If entry into the U.S. national phase is cation pursuant to § 1.431(c). desired, inventors must be indicated as applicants at (c) The amount payable for the designation fee set forth in least for purposes of the United States. paragraph (b) is: (1) The designation fee in effect on the filing date of the 1817.01(a) Designation of States and Pre- international application, if such fee is paid in full within one cautionary Designations in In- month from the date of receipt of the international application; (2) The designation fee in effect on the date such fee is ternational Applications Having paid in full, if such fee is paid in full later than one month from the an International Filing Date Be- date of receipt of the international application but within one year from the priority date; fore January 1, 2004 [R-6] (3) The designation fee in effect on the date one year from the priority date, if the fee was due one year from the priority [Note: For the designation of States in applications date, and such fee is paid in full later than one month from the having an international filing date on or after Jan- date of receipt of the international application and later than one uary 1, 2004, see MPEP § 1817.01.] year from the priority date; or (4) The designation fee in effect on the international fil- Former ing date, if the fee was due one month from the international filing date and after one year from the priority date, and such fee is paid 37 CFR 1.432. Designation of States and payment of in full later than one month from the date of receipt of the interna- designation and confirmation fees. tional application and later than one year from the priority date. (a) The designation of States including an indication that (d) On filing the international application, in addition to applicant wishes to obtain a regional patent, where applicable, specifying at least one national or regional designation under PCT shall appear in the Request upon filing and must be indicated as Rule 4.9(a), applicant may also indicate under PCT Rule 4.9(b) set forth in PCT Rule 4.9 and section 115 of the Administrative that all other designations permitted under the Treaty are made. Instructions. Applicant must specify at least one national or (1) Indication of other designations permitted by the regional designation on filing of the international application for a Treaty under PCT Rule 4.9(b) must be made in a statement on the filing date to be granted. Request that any designation made under this paragraph is subject (b) If the fees necessary to cover all the national and regional to confirmation (PCT Rule 4.9(c)) not later than the expiration of designations specified in the Request are not paid by the applicant 15 months from the priority date by: within one year from the priority date or within one month from (i) Filing a written notice with the United States the date of receipt of the international application if that month Receiving Office specifying the national and/or regional designa- expires after the expiration of one year from the priority date, tions being confirmed; applicant will be notified and given one month within which to (ii) Paying the designation fee for each designation pay the deficient designation fees plus a late payment fee. The late being confirmed; and

Rev. 7, July 2008 1800-22 PATENT COOPERATION TREATY 1817.01(a)

(iii) Paying the confirmation fee specified in ary designations are designed particularly to enable § 1.445(a)(4). applicants to correct omissions and mistakes in the (2) Unconfirmed designations will be considered with- original list of specific designations, it is strongly rec- drawn. If the amount submitted is not sufficient to cover the desig- ommended that applicants make the precautionary nation fee and the confirmation fee for each designation being confirmed, the Receiving Office will allocate the amount paid in designations indication (by leaving the pre-printed accordance with any priority of designations specified by appli- statement in the printed form, if that form is used) cant. If applicant does not specify any priority of designations, the unless there is a particular reason for doing otherwise. allocation of the amount paid will be made in accordance with The request form makes provision for the applicant to PCT Rule 16bis.1(c). omit designations if that is desired. It should be noted The designation of States is the indication, in Box that no fees are payable in respect of precautionary No. V of the request (except in the last sub-box of that designations except where the applicant later decides Box), of the specific regional patents, national pat- to confirm them. ents, and/or other kinds of protection the applicant is Precautionary designations will be regarded as seeking. Specific designations for the purpose of withdrawn by the applicant unless they are confirmed, obtaining national and regional patents are effected by but the applicant is not obliged to confirm them. The indicating each Contracting State or region con- precautionary designation procedure enables the cerned. On the printed form, this is accomplished applicant to make, in the request, all designations per- by marking the appropriate check-boxes next to the names of the States or regions. For detailed instruc- mitted by the PCT in addition to those made specifi- tions regarding “specific” designations, see the cally. For this purpose, the request must also contain a **>“Notes to the Request Form (PCT/RO/101).”< statement that any precautionary designations so made are subject to confirmation as provided in Rule All designations must be made in the international 4.9(c) and that any designation which is not so con- application on filing; none may be added later. How- firmed before the expiration of 15 months from the ever, there is a safety net designed to protect appli- cants who make mistakes or omissions among the priority date is to be regarded as withdrawn by the specific designations, by way of making a precaution- applicant at the expiration of that time limit. Noting ary designation of all other States which have not that the confirmation of designations is entirely at the been specifically designated in the Request whose applicant’s discretion, no notification is sent to the designation would be permitted under the Treaty. applicant reminding him or her that the time limit for confirming precautionary designations is about to In addition to specific designations described above, the applicant may, under PCT Rule 4.9(b), expire. Applicants are cautioned that in order for the indicate in the request that all designations which confirmation of a designation of the U.S. to be valid, would be permitted under the PCT are also made, pro- the inventor must have been named in the application vided that at least one specific designation is made papers as filed, 37 CFR 1.421(b). and that the request also contains a statement relating to the confirmation of any precautionary designations APPLICANT FOR PURPOSES OF EACH DES- so made. That statement must declare that any such IGNATION designation is subject to confirmation (as provided in Rule 4.9(c)), and that any such designation which is Where there is but a single applicant, the right to not so confirmed before the expiration of 15 months file an international application and to designate con- from the priority date is to be regarded as withdrawn tracting states or regions exists if the applicant is a by the applicant at the expiration of that time limit. resident or national of a contracting state. The appli- Precautionary designations are effected in practice cant can be an individual, corporate entity or other by including the necessary statement in the last sub- concern. If the United States is to be designated, it is box of Box No. V of the request (the statement is set particularly important to note that the applicant must out in the printed request form). Since the precaution- also be the inventor.

1800-23 Rev. 7, July 2008 1817.02 MANUAL OF PATENT EXAMINING PROCEDURE

In the case where there are several applicants who national stage by including a proper claim in an appli- are different for different designated states, the right cation data sheet or in the first sentence(s) of the spec- to file an international application and to designate ification (see 37 CFR 1.78(a)(2)). However, inclusion contracting states or regions exists if at least one of of a proper reference to the parent application in the them is a resident or national of a contracting state. If international phase does provide certain benefits to the United States is to be designated, it is important to applicants, e.g., where applicant chooses to file a con- note that the applicant must also be the inventor. If the tinuing application claiming benefit under 35 U.S.C. inventor is not also the applicant, the designation of 365(c) to the international application (i.e., a bypass the United States is invalid. application) rather than entering the U.S. national phase under 35 U.S.C. 371. 1817.02 Continuation or Continuation- in-Part Indication in the Request 1819 Earlier ** Search [R-7] [R-7] PCT Rule 4. **>The Request (Contents) PCT Rule 4. The Request (Contents) *****

***** 4.12. Taking into Account Results of Earlier Search If the applicant wishes the International Searching Authority **> to take into account, in carrying out the international search, the 4.11.Reference to Continuation or Continuation-in-Part, or results of an earlier international, international-type or national Parent Application or Grant search carried out by the same or another International Searching Authority or by a national Office (“earlier search”): (a) If: (i) the request shall so indicate and shall specify the ***** Authority or Office concerned and the application in respect of which the earlier search was carried out; (ii) the applicant intends to make an indication under Rule (ii) the request may, where applicable, contain a statement 49bis.1(d) of the wish that the international application be treated, to the effect that the international application is the same, or sub- in any designated State, as an application for a continuation or a stantially the same, as the application in respect of which the ear- continuation-in-part of an earlier application; lier search was carried out, or that the international application is the request shall so indicate and shall indicate the relevant the same, or substantially the same, as that earlier application parent application or parent patent or other parent grant.< except that it is filed in a different language. ***** ***** The Supplemental Box of the request form should PCT Rule 12bis. be used where the applicant has an earlier pending Copy of Results of Earlier Search and of Earlier Applica- United States nonprovisional application or interna- tion; Translation tional application designating the U.S. and wishes the 12bis.1 Copy of Results of Earlier Search and of Earlier later filed international application to be treated as a Application; Translation continuation or continuation-in-part of such earlier application. To properly identify the parent applica- (a) Where the applicant has, under Rule 4.12, requested the tion, the specific reference must identify the parent International Searching Authority to take into account the results application by application number and indicate the of an earlier search carried out by the same or another Interna- tional Searching Authority or by a national Office, the applicant relationship to the parent application (i.e., “continua- shall, subject to paragraphs (c) to (f), submit to the receiving tion” or “continuation-in-part”). The specific refer- Office, together with the international application, a copy of the ence must also indicate the filing date of the parent results of the earlier search, in whatever form (for example, in the application if the parent application is an international form of a search report, a listing of cited prior art or an examina- application. See 37 CFR 1.78(a). tion report) they are presented by the Authority or Office con- cerned. Identification of the parent application in the (b) The International Searching Authority may, subject to request does not relieve applicants from having to paragraphs (c) to (f), invite the applicant to furnish to it, within a perfect the benefit claim upon entry into the U.S. time limit which shall be reasonable under the circumstances:

Rev. 7, July 2008 1800-24 PATENT COOPERATION TREATY 1820

(i) a copy of the earlier application concerned; national applications filed on and after 1 June 1978. (ii) where the earlier application is in a language which is No specific request by the applicant is required and no not accepted by the International Searching Authority, a transla- number identifying the international-type search is tion of the earlier application into a language which is accepted by assigned by the Office. See 37 CFR 1.104(a)(3). that Authority; (iii)where the results of the earlier search are in a lan- 1820 Signature of Applicant [R-6] guage which is not accepted by the International Searching Authority, a translation of those results into a language which is PCT Article 14. accepted by that Authority; Certain Defects in the International Application (iv) a copy of any document cited in the results of the ear- lier search. (1)(a)The receiving Office shall check whether the interna- tional application contains any of the following defects, that is to (c) Where the earlier search was carried out by the same say Office as that which is acting as the receiving Office, the applicant (i) it is not signed as provided in the Regulations; may, instead of submitting the copies referred to in paragraphs (a) and (b)(i) and (iv), indicate the wish that the receiving Office pre- ***** pare and transmit them to the International Searching Authority. Such request shall be made in the request and may be subjected by PCT Rule 4. the receiving Office to the payment to it, for its own benefit, of a The Request (Contents) fee.

(d) Where the earlier search was carried out by the same ***** International Searching Authority, or by the same Office as that which is acting as the International Searching Authority, no copy 4.15.Signature or translation referred to in paragraphs (a) and (b) shall be required to be submitted under those paragraphs. (a) Subject to paragraph (b), the request shall be signed by (e) Where the request contains a statement under Rule the applicant or, if there is more than one applicant, by all of them. 4.12(ii) to the effect that the international application is the same, (b) Where two or more applicants file an international or substantially the same, as the application in respect of which application which designates a State whose national law requires the earlier search was carried out, or that the international applica- that national applications be filed by the inventor and where an tion is the same, or substantially the same, as that earlier applica- applicant for that designated State who is an inventor refused to tion except that it is filed in a different language, no copy or sign the request or could not be found or reached after diligent translation referred to in paragraphs (b)(i) and (ii) shall be effort, the request need not be signed by that applicant if it is required to be submitted under those paragraphs. signed by at least one applicant and a statement is furnished explaining, to the satisfaction of the receiving Office, the lack of (f) Where a copy or translation referred to in paragraphs (a) the signature concerned. and (b) is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital ***** library or in the form of the priority document, and the applicant so indicates in the request, no copy or translation shall be required PCT Rule 26. to be submitted under those paragraphs. Checking by, and Correcting Before, the Receiving Office of Certain Elements of the International Application Where the applicant wishes the International Searching Authority (ISA) to take into account, in ***** carrying out the international search, the results of one or more earlier international, international-type, or 26.2bis.Checking of Requirements Under Article national searches carried out by the same or another 14(1)(a)(i) and (ii) ISA or by a national Office, the application(s) must be (a) For the purposes of Article 14(1)(a)(i), if there is more identified in the request. Applicants should identify than one applicant, it shall be sufficient that the request be signed the application(s) in Box No. VII of the request by the by one of them. filing date, application number, and the country or (b) For the purposes of Article 14(1)(a)(ii), if there is more regional Office.< than one applicant, it shall be sufficient that the indications required under Rule 4.5(a)(ii) and (iii) be provided in respect of The United States Patent and Trademark Office one of them who is entitled according to Rule 19.1 to file the performs an international-type search on all U.S. international application with the receiving Office.

1800-25 Rev. 7, July 2008 1820 MANUAL OF PATENT EXAMINING PROCEDURE

SIGNATURE OF APPLICANT OR AGENT ten) next to the signature. Where a person signs on behalf of a legal entity (an organization such as a cor- Pursuant to PCT Rule 4.15, the international appli- poration, university, nonprofit organization, or gov- cation must be signed in Box No. X of the request by ernmental agency), his or her name and the capacity the applicant, or, where there are two or more appli- in which he or she signs should be indicated. Proof of cants, by all of them. However, under PCT Rule the person’s authority to sign on behalf of the legal 26.2bis, which is applicable to international applica- entity will be required if that person does not possess tions having an international filing date on or after apparent authority to sign on behalf of the legal entity January 1, 2004, it is sufficient for purposes of PCT and that person has not submitted a statement that he Article 14(1)(a)(i) that the application is signed by or she is authorized to sign on behalf of the legal only one of the applicants. Thus, for international entity (discussed below). An officer (President, Vice- applications having an international filing date on or President, Secretary, Treasurer, Chief Executive after January 1, 2004, the United States Receiving Officer, Chief Operating Officer or Chief Financial Office will not issue an invitation to applicants to fur- Officer) of an organization is presumed to have nish missing signatures where the request is signed by authority to sign on behalf of that organization. The at least one of the applicants. Notwithstanding PCT signature of the chairman of the board is also accept- Rule 26.2bis, any designated/elected office, in accor- able, but not the signature of an individual director. dance with its national law, can still require confirma- Variations of these titles (such as vice-president for tion of the international application by the signature sales, executive vice-president, assistant treasurer, of any applicant for such >designated< state who has vice-chairman of the board of directors) are accept- not signed the request. PCT Rule *>51bis.1(a)(vi)<. able. In general, a person having a title (manager, Pursuant to 37 CFR 1.4(d), the request filed may be director, administrator, general counsel) that does not either an original, or a copy thereof. clearly set forth that person as an officer of the organi- The international application may be signed by an zation is not presumed to be an officer or to have the agent. authority to sign on behalf of the organization. How- For international applications having an interna- ever, an exception is made with respect to foreign tional filing date on or after January 1, 2004, the juristic applicants. This is because in foreign coun- requirement for the submission of a separate power of tries, a person who holds the title “Manager” or attorney may be waived by the receiving Office. The “Director” is normally an officer or the equivalent United States Receiving Office will, in most cases, thereof; therefore, those terms are generally accept- waive the requirement for a separate power of attor- able as indicating proper persons to sign applications ney. See MPEP § 1807. for foreign applicants. However, titles such as “Man- If the international application has an international ager of Patents,” suggesting narrowly limited duties, filing date before January 1, 2004, then the agent must are not acceptable. An attorney does not generally be appointed as such by the applicant in a separate have apparent authority to sign on behalf of an organi- power of attorney signed by the applicant. If there are zation. two or more applicants, the request may be signed by an agent on behalf of all or only some of them; in that Proof that a person has the authority to sign on case the agent must be appointed as such in one or behalf of a legal entity may take the form of a copy of more powers of attorney signed by the applicants on a resolution of the board of directors, a provision of whose behalf the agent signs the application. Where a the bylaws, or a copy of a paper properly delegating power of attorney appointing an agent who signs an authority to that person to sign the international appli- international application having an international filing cation on behalf of the legal entity. date prior to January 1, 2004 is missing, the signature It is acceptable to have a person sign the interna- is treated as missing until the power of attorney is tional application on behalf of a legal entity if that submitted. person submits a statement that the person has the The signature should be executed in black indelible authority to sign the international application on ink. The name of each person signing the international behalf of the legal entity. This statement should be on application should be indicated (preferably typewrit- a separate paper and must not appear on the Request

Rev. 7, July 2008 1800-26 PATENT COOPERATION TREATY 1821

(or Demand) form itself. The statement must include a declaration by the inventor is not signed by all the clause such as “The undersigned (whose title is sup- applicant inventors. plied below) is empowered to sign the Request on behalf of the applicant.” INVENTOR DECEASED The international application can be filed without 37 CFR 1.422. When the inventor is dead. applicant’s signature on the request. The lack of any In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may file an required signature on the request is a correctable international application which designates the United States of defect under PCT Article 14(1)(a)(i) and (b), and can America. be remedied by filing a copy of the request (or, where the request has been signed by an agent, of a power of A legal representative of a deceased inventor may attorney) duly signed by the applicant within the time be indicated in the international application as an limit fixed by the receiving Office for the correction applicant for the purposes of the United States. In of this defect. such case, the indication in the request (in Box II or III, as appropriate) for the legal representative should APPLICANT INVENTOR UNAVAILABLE OR be made as follows: SMITH, Alfred, legal representa- UNWILLING TO SIGN THE INTERNATIONAL tive of JONES, Bernard (deceased), followed by indi- APPLICATION cations of the address, nationality and residence of the legal representative. The legal representative should PCT Rule 4.15(b) provides that, where an applicant be indicated as an “applicant only” except where the inventor for the designation of a State whose national legal representative is also an inventor, in which case law requires that national applications be filed by the the legal representative should be indicated as an inventor (the United States of America is the only “applicant and inventor.” The name of the deceased Contracting State to have such a requirement in its inventor should also appear in a separate box (in Box national law) refused to sign the request or could not III) with the indication of “deceased” (e.g., “JONES, be found or reached after diligent effort, the request Bernard (deceased))” and identified as an “inventor need not be signed by that applicant inventor if it is only” and not as an applicant. signed by at least one applicant and a statement is fur- 1821 The Request [R-5] nished explaining, to the satisfaction of the receiving Office, the lack of the signature concerned. The sig- A general overview of certain aspects of the request nificance of PCT Rule 4.15(b) has been greatly dimin- follows. ished with respect to international applications having 37 CFR 1.434. The request. an international filing date on or after January 1, (a) The request shall be made on a standardized form (PCT 2004, in light of * PCT Rule 26.2bis(a), which pro- Rules 3 and 4). Copies of printed Request forms are available vides that where there is more than one applicant, the from the United States Patent and Trademark Office. Letters signature requirements for purposes of PCT Article requesting printed forms should be marked “Mail Stop PCT.” 14(1)(a)(i) will be considered to have been satisfied if (b) The Check List portion of the Request form should indi- the request is signed by one of the applicants. cate each document accompanying the international application on filing. For international applications having an interna- (c) All information, for example, addresses, names of States tional filing date prior to January 1, 2004, if the requi- and dates, shall be indicated in the Request as required by PCT site statement under PCT Rule 4.15(b) is furnished to Rule 4 and Administrative Instructions 110 and 201. (d) For the purposes of the designation of the United States the satisfaction of the receiving Office, the interna- of America, an international application shall include: tional application complies with the requirements of (1) The name of the inventor; and; PCT Article 14(1)(a)(i) for the purposes of all desig- (2) A reference to any prior-filed national application or nated States (including the United States of America) international application designating the United States of Amer- without adverse consequences in the international ica, if the benefit of the filing date for the prior-filed application is to be claimed. phase. However, additional proofs may be required by (e) An international application may also include in the the United States Patent and Trademark Office after Request a declaration of the inventors as provided for in PCT Rule entry into the national phase if the required oath or 4.17(iv).

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The request must either be made on a printed form request must contain an indication of any wish of the to be filled in with the required indications or be pre- applicants to obtain a European patent rather than, or sented as a computer printout complying with the in addition to, a national patent in respect of a desig- Administrative Instructions. Any prospective appli- nated State. cant may obtain copies of the printed request form, The request may not contain any matter that is not free of charge, from the receiving Office with which specified in PCT Rules 4.1 to 4.17 or permitted under he/she plans to file his/her international application. PCT Rule 4.18(a) by the Administrative Instructions. Applicants may obtain an English language request Any additional material will be deleted ex officio. See form from the United States Patent and Trademark PCT Rule 4.18(b) and Administrative Instructions Office using the following address: Mail Stop PCT, Section 303. Commissioner for Patents, P.O. Box 1450, Alexan- dria, Virginia 22313-1450. Forms may also be DATES obtained from the World Intellectual Property Organi- Each date appearing in the international application zation (WIPO) web site (www.wipo.int/pct/en/forms/ or in any correspondence must be indicated by the index.htm). Details of the requirements for the request Arabic number of the day, the name of the month and if presented as a computer printout are set out in the Arabic number of the year, in that order. In the Administrative Instructions Section 102bis. request, after, below or above that indication, the date As provided in Administrative Instructions Section should be repeated in parentheses with a two-digit 102bis(c), reduced fees are payable in respect of an Arabic numeral each for the number of the day and international application containing the request in for the number of the month and followed by the PCT-EASY format filed, together with a PCT-EASY number of the year in four digits, in that order and *>physical medium<, with a receiving Office which, separated by periods, slashes or hyphens after the under paragraph (a), accepts the filing of such interna- digit pairs of the day and of the month, for example, tional applications. >The United States Receiving “20 March 2004 (20.03.2004),” “20 March 2004 (20/ Office currently accepts the following PCT-EASY 03/2004),” or “20 March 2004 (20-03-2004).” See physical media: 3.5 inch diskette, CD-R, and DVD-R. Administrative Instructions Section 110. The PCT Applicant’s Guide, available online at http:// www.wipo.int/pct/guide/en/, provides up-to-date SUPPLEMENTAL BOX information regarding physical media accepted by the This box is used for any material which cannot be receiving Offices.< To prepare a request in PCT- placed in one of the previous boxes because of space EASY format and the PCT-EASY *>physical limitations. The supplemental information placed in medium<, applicants must use PCT-SAFE software, this box should be clearly entitled with the Box num- which is available for downloading at WIPO’s web ber from which it is continued, e.g., “Continuation of site (www.wipo.int/pct-safe). For technical support Box No. IV.” and assistance with the software, the web site also provides contact information for the PCT-SAFE Help FILE REFERENCE Desk. The applicant or his/her agent may indicate a file The request contains a petition for the international reference in the box provided for this purpose on the application to be processed according to the PCT and first sheet of the request form, on each page of the must also contain certain indications. It must contain other elements of the international application, on the the title of the invention. It must identify the applicant first sheet of the demand form, and in any other corre- and the agent (if any), and must contain the designa- spondence relating to the international application. tion of at least one Contracting State. For international PCT Rule 11.6(f) indicates that the file reference may applications having an international filing date on or be included in the top margin of the sheets of the after January 1, 2004, the filing of an international international application. As provided in Administra- application request constitutes the designation of all tive Instructions Section 109, the file reference may Contracting States that are bound by the PCT on the be composed either of letters of the Latin alphabet international filing date. See MPEP § 1817.01. The or Arabic numerals, or both. It may not exceed 12

Rev. 7, July 2008 1800-28 PATENT COOPERATION TREATY 1823 characters including spaces. If the file reference Box No. III, where the applicant is also the inventor exceeds 12 characters, the receiving Office may ex or one of the inventors, or the check-box “applicant officio truncate the reference number to 12 characters only” where the applicant is not the inventor or one of and notify the applicant. The receiving Office, the the inventors. Where the applicant is a corporation or International Bureau, the International Searching other legal entity (that is, not a natural person), the Authority and the International Preliminary Examin- check-box “applicant only” must be marked. The ing Authority (International Authorities) will use the applicant’s nationality and residence must also be file reference in correspondence with the applicant. indicated.

TITLE OF INVENTION NAMES The Request must contain the title of the invention; The names of a natural person must be indicated by the title must be short (preferably 2 to 7 words) and the family name followed by the given name(s). Aca- precise (PCT Rule 4.3). The title in Box No. I of the demic degrees or titles or other indications which are Request is considered to be the title of the application. not part of the person’s name must be omitted. The The title appearing on the first page of the description family name should preferably be written in capital (PCT Rule 5.1(a)) and on the page containing the letters. abstract should be consistent with the title indicated in The name of a legal entity must be indicated by its Box No. I of the Request form. full official designation (preferably in capital letters). A title should not be changed by the examiner merely because it contains words which are not con- ADDRESSES sidered descriptive of the invention. Words, for exam- Addresses must be indicated in such a way as to ple, such as “improved” or “improvement of” are satisfy the requirements for prompt postal delivery at acceptable. If the title is otherwise not descriptive of the address indicated and must consist of all the rele- the invention, a change to a more descriptive title vant administrative units up to and including the should be made and the applicant informed thereof in house number (if any). The address must also include the search report. the country. Where the title is missing or is inconsistent with the title in the description, the receiving Office invites the 1823 The Description [R-5] applicant to correct the missing or inconsistent title. PCT Article 5. APPLICANT The Description Any resident or national of a Contracting State may The description shall disclose the invention in a manner suffi- ciently clear and complete for the invention to be carried out by a file an international application. Where there are two person skilled in the art. or more applicants, at least one of them must be a national or a resident of a PCT Contracting State. PCT Rule 5. The question whether an applicant is a resident or The Description national of a Contracting State depends on the 5.1.Manner of the Description national law of that State and is decided by the receiv- ing Office. Also, possession of a real and effective (a) The description shall first state the title of the invention industrial or commercial establishment in a Contract- as appearing in the request and shall: (i) specify the technical field to which the invention ing State may be considered residence in that State, relates; and a legal entity constituted according to the national (ii) indicate the background art which, as far as known to law of a Contracting State is considered a national of the applicant, can be regarded as useful for the understanding, that State. searching and examination of the invention, and, preferably, cite The applicant must be identified by the indication the documents reflecting such art; (iii)disclose the invention, as claimed, in such terms that of his/her name and address and by marking next to the technical problem (even if not expressly stated as such) and its that indication, the check-box “This person is also solution can be understood, and state the advantageous effects, if inventor” in Box No. II, or “applicant and inventor” in any, of the invention with reference to the background art;

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(iv) briefly describe the figures in the drawings, if any; **> (v) set forth at least the best mode contemplated by the (b) For the purposes of designated Offices, which have so applicant for carrying out the invention claimed; this shall be done notified the International Bureau under Rule 13bis.7(a), paragraph in terms of examples, where appropriate, and with reference to the (a) applies only if the said Form or sheet is included as one of the drawings, if any; where the national law of the designated State sheets of the description of the international application at the does not require the description of the best mode but is satisfied time of filing.< with the description of any mode (whether it is the best contem- plated or not), failure to describe the best mode contemplated 37 CFR 1.435. The description. shall have no effect in that State; (a) The application must meet the requirements as to the content and form of the description set forth in PCT Rules 5, 9, (vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the inven- 10, and 11 and sections 204 and 208 of the Administrative Instruc- tion is capable of exploitation in industry and the way in which it tions. (b) In international applications designating the United can be made and used, or, if it can only be used, the way in which it can be used; the term “industry” is to be understood in its broad- States the description must contain upon filing an indication of the est sense as in the Paris Convention for the Protection of Industrial best mode contemplated by the inventor for carrying out the Property. claimed invention. (b) The manner and order specified in paragraph (a) shall be The description must disclose the invention in a followed except when, because of the nature of the invention, a manner sufficiently clear and complete for it to be car- different manner or a different order would result in a better understanding and a more economic presentation. ried out by a person skilled in the art. It must start (c) Subject to the provisions of paragraph (b), each of the with the title of the invention as appearing in Box No. parts referred to in paragraph (a) shall preferably be preceded by I of the request. PCT Rule 5 contains detailed require- an appropriate heading as suggested in the Administrative Instruc- ments as to the manner and order of the description, tions. which, generally, should be in six parts. Those parts PCT Administrative Instruction Section 204. should have the following headings: “Technical Headings of the Parts of the Description Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” “Best Mode for The headings of the parts of the description should be as fol- Carrying Out the Invention” or, where appropriate, lows: “Mode(s) for Carrying Out the Invention,” “Industrial (i) for matter referred to in Rule 5.1(a)(i), “Technical Field”; Applicability,” “Sequence Listing,” and “Sequence (ii) for matter referred to in Rule 5.1(a)(ii), “Background Listing Free Text,” where applicable. Art”; (iii)for matter referred to in Rule 5.1(a)(iii), “Disclosure of The details required for the disclosure of the inven- Invention”; tion so that it can be carried out by a person skilled in (iv) for matter referred to in Rule 5.1(a)(iv), “Brief Descrip- the art depend on the practice of the national Offices. tion of Drawings”; It is therefore recommended that due account be taken (v) for matter referred to in Rule 5.1(a)(v), “Best Mode for of national practice in the United States of America Carrying Out the Invention,” or, where appropriate, “Mode(s) for when the description is drafted. Carrying Out the Invention”; The need to amend the description during the (vi) for matter referred to in Rule 5.1(a)(vi), “Industrial Applicability”; national phase may thus be avoided. (vii)for matter referred to in Rule 5.2(a), “Sequence Listing”; This applies likewise to the need to indicate the (viii)for matter referred to in Rule 5.2(b), “Sequence Listing “best mode for carrying out the invention.” If at least Free Text.” one of the designated Offices requires the indication of the best mode (for instance, the United States PCT Administrative Instruction Section 209. Patent and Trademark Office), that best mode must be Indications as to Deposited Biological Material on a Separate Sheet indicated in the description. A description drafted with due regard to what is (a) To the extent that any indication with respect to depos- said in these provisions will be accepted by all the ited biological material is not contained in the description, it may designated Offices. It might require more care than be given on a separate sheet. Where any such indication is so the drafting of a national patent application, but cer- given, it shall preferably be on Form PCT/RO/134 and, if fur- nished at the time of filing, the said Form shall, subject to para- tainly much less effort than the drafting of multiple graph (b), preferably be attached to the request and referred to in applications, which is necessary where the PCT route the check list referred to in Rule 3.3 (a)(ii). is not used for filing in several countries.

Rev. 7, July 2008 1800-30 PATENT COOPERATION TREATY 1823.01

1823.01 Reference to Deposited Biologi- require that any of the indications referred to in Rule 13bis.3(a) be furnished earlier than 16 months from the priority date, provided cal Material [R-5] that the International Bureau has been notified of such require- ment pursuant to Rule 13bis.7(a)(ii) and has published such PCT Rule 13bis. requirement in the Gazette in accordance with Rule 13bis.7(c) at Inventions Relating to Biological Material least two months before the filing of the international application. (c) Where the applicant makes a request for early publica- 13bis.1.Definition tion under Article 21(2)(b), any designated Office may consider For the purposes of this Rule, “reference to deposited biologi- any indication not furnished before the technical preparations for cal material” means particulars given in an international applica- international publication have been completed as not having been tion with respect to the deposit of a biological material with a furnished in time. depositary institution or to the biological material so deposited. **> (d) The International Bureau shall notify the applicant of the 13bis.2.References (General) date on which it received any indication furnished under para- Any reference to deposited biological material shall be made in graph (a), and: accordance with this Rule and, if so made, shall be considered as (i) if the indication was received before the technical satisfying the requirements of the national law of each designated preparations for international publication have been completed, State. publish the indication furnished under paragraph (a), and an indi- 13bis.3.References: Contents; Failure to Include Reference cation of the date of receipt, together with the international appli- cation;< or Indication (ii) if the indication was received after the technical prep- (a) A reference to deposited biological material shall indi- arations for international publication have been completed, notify cate: that date and the relevant data from the indication to the desig- (i) the name and address of the depositary institution nated Offices. with which the deposit was made; (ii) the date of deposit of the biological material with that 13bis.5.References and Indications for the Purposes of One institution; or More Designated States; Different Deposits for Different (iii)the accession number given to the deposit by that Designated States; Deposits with Depositary Institutions institution; and Other Than Those Notified (iv) any additional matter of which the International Bureau has been notified pursuant to Rule 13bis.7(a)(i), provided (a) A reference to deposited biological material shall be con- that the requirement to indicate that matter was published in the sidered to be made for the purposes of all designated States, unless Gazette in accordance with Rule 13bis.7(c) at least two months it is expressly made for the purposes of certain of the designated before the filing of the international application. States only; the same applies to the indications included in the ref- erence. (b) Failure to include a reference to deposited biological material or failure to include, in a reference to deposited biologi- (b) References to different deposits of the biological material cal material, an indication in accordance with paragraph (a), shall may be made for different designated States. have no consequence in any designated State whose national law (c) Any designated Office may disregard a deposit made does not require such reference or such indication in a national with a depositary institution other than one notified by it under application. Rule 13bis.7(b).

13bis.4.References: Time Limit for Furnishing Indications 13bis.6.Furnishing of Samples Pursuant to Articles 23 and 40, no furnishing of samples of the (a) Subject to paragraphs (b) and (c), if any of the indica- deposited biological material to which a reference is made in an tions referred to in Rule 13bis.3(a) is not included in a reference to international application shall, except with the authorization of the deposited biological material in the international application as applicant, take place before the expiration of the applicable time filed but is furnished to the International Bureau: limits after which national processing may start under the said (i) within 16 months from the priority date, the indication Articles. However, where the applicant performs the acts referred shall be considered by any designated Office to have been fur- to in Articles 22 or 39 after international publication but before nished in time; the expiration of the said time limits, the furnishing of samples of (ii) after the expiration of 16 months from the priority the deposited biological material may take place, once the said date, the indication shall be considered by any designated Office acts have been performed. Notwithstanding the previous provi- to have been furnished on the last day of that time limit if it sion, the furnishing of samples of the deposited biological mate- reaches the International Bureau before the technical preparations rial may take place under the national law applicable by for international publication have been completed. any designated Office as soon as, under that law, the international (b) If the national law applicable by a designated Office so publication has the effects of the compulsory national publication requires in respect of national applications, that Office may of an unexamined national application.

1800-31 Rev. 7, July 2008 1823.01 MANUAL OF PATENT EXAMINING PROCEDURE

13bis.7.National Requirements: Notification and Publica- application in a manner sufficient for the invention to tion be carried out by a person skilled in the art that is, (a) Any national Office may notify the International Bureau when the law of at least one of the designated States of any requirement of the national law: provides for the making, for this purpose, of a refer- (i) that any matter specified in the notification, in addi- ence to a deposited biological material if the invention tion to those referred to in Rule 13bis.3(a)(i), (ii) and (iii), is involves the use of a biological material that is not required to be included in a reference to deposited biological available to the public. Any reference to a deposited material in a national application; (ii) that one or more of the indications referred to in Rule biological material furnished separately from the 13bis.3(a) are required to be included in a national application as description will be included in the **>publication of filed or are required to be furnished at a time specified in the noti- the< international application. fication which is earlier than 16 months after the priority date. A reference to a deposited biological material made (b) Each national Office shall notify the International Bureau in accordance with the requirements of the PCT must of the depositary institutions with which the national law permits deposits of biological materials to be made for the purposes of be regarded by each of the designated Offices as satis- patent procedure before that Office or, if the national law does not fying the requirements of the national law applicable provide for or permit such deposits, of that fact. in that Office with regard to the contents of such refer- (c) The International Bureau shall promptly publish in the ences and the time for furnishing them. Gazette requirements notified to it under paragraph (a) and infor- A reference may be made for the purposes of all mation notified to it under paragraph (b). designated States or for one or only some of the desig- PCT Administrative Instruction Section 209. nated States. A reference is considered to be made for Indications as to Deposited Biological Material on a Sepa- the purpose of all designated States unless it is rate Sheet expressly made for certain designated States only. (a) To the extent that any indication with respect to depos- References to different deposits may be made for the ited biological material is not contained in the description, it may purposes of different designated States. be given on a separate sheet. Where any such indication is so There are two kinds of indication which may have given, it shall preferably be on Form PCT/RO/134 and, if fur- to be given with regard to the deposit of the biological nished at the time of filing, the said Form shall, subject to para- material, namely: graph (b), preferably be attached to the request and referred to in the check list referred to in Rule 3.3 (a)(ii). (A) indications specified in the PCT Regulations **> themselves; and (b) For the purposes of designated Offices, which have so notified the International Bureau under Rule 13bis.7(a), paragraph (B) additional indications by the national (or (a) applies only if the said Form or sheet is included as one of the regional) Office of (or acting for) a State designated in sheets of the description of the international application at the the international application and which have been time of filing.< published in the PCT Gazette; these additional indica- REFERENCES TO DEPOSITED BIOLOGICAL tions may relate not only to the deposit of the biologi- MATERIAL IN THE CASE OF MICROBIO- cal material but also to the biological material itself. LOGICAL INVENTIONS The indications in the first category are: The PCT does not require the inclusion of a refer- (1) the name and address of the depositary institu- ence to a biological material and/or to its deposit with tion with which the deposit was made; a depositary institution in an international application; (2) the date of the deposit with that institution; and it merely prescribes the contents of any “reference to (3) the accession number given to the deposit by deposited biological material” (defined as “particulars that institution. given... with respect to the deposit of biological mate- U.S. requirements include the name and address of rial... or to the biological material so deposited”) the depository institution at the time of filing, the date which is included in an international application, and of the deposit or a statement that the deposit was when such a reference must be furnished. It follows made on or before the priority date of the international that the applicant may see a need to make such a ref- application and, to the extent possible, a taxonomic erence only when it is required for the purpose of dis- description of the biological material. See Annex L of closing the invention claimed in the international the PCT Applicant’s Guide.

Rev. 7, July 2008 1800-32 PATENT COOPERATION TREATY 1823.01

The national laws of some of the national (or pose. If the sheet is submitted when the international regional) Offices require that, besides indications con- application is filed, a reference to it should be made in cerning the deposit of a biological material, an indica- the check list contained on the last sheet of the request tion be given concerning the biological material itself, form. Should >certain States be designated, e.g.,< such as, for example, a short description of its charac- Israel, Japan, Korea, Mexico, or Turkey**, such a teristics, at least to the extent that this information is sheet must, if used, be included as one of the sheets of available to the applicant. These requirements must be the description at the time of filing; otherwise the met in the case of international applications for which indications given in it will not be taken into account any such Office is a designated Office, provided that by the respective patent offices of those designated the requirements have been published in the PCT States in the national phase. >Requirements of the Gazette. Annex L of the PCT Applicant’s Guide indi- various Offices are set forth in Annex L of the PCT cates, for each of the national (or regional) Offices, Applicant’s Guide, available online at http:// the requirements (if any) of this kind which have been www.wipo.int/pct/guide/en/.< If the sheet is furnished published. to the International Bureau later, it must be enclosed If any indication is not included in a reference to a with a letter. deposited biological material contained in the interna- Each national (or regional) Office whose national tional application as filed, it may be furnished to the law provides for deposits of biological material for International Bureau within 16 months after the prior- the purposes of patent procedure notifies the Interna- ity date unless the International Bureau has been noti- tional Bureau of the depositary institutions with fied (and, at least 2 months prior to the filing of the which the national law permits such deposits to be international application, it has published in the PCT made. Information on the institutions notified by each Gazette) that the national law requires the indication of those Offices is published by the International to be furnished earlier. However, if the applicant Bureau in the PCT Gazette. makes a request for early publication, all indications A reference to a deposit cannot be disregarded by a should be furnished by the time the request is made, designated Office for reasons pertaining to the institu- since any designated Office may regard any indication tion with which the biological material was deposited not furnished when the request is made as not having if the deposit referred to is one made with a depositary been furnished in time. institution notified by that Office. Thus, by consulting No check is made in the international phase to the PCT Gazette or Annex L of the PCT Applicant’s determine whether a reference has been furnished Guide, the applicant can be sure that he has deposited within the prescribed time limit. However, the Inter- the biological material with an institution which will national Bureau notifies the designated Offices of the be accepted by the designated Office. date(s) on which indications, not included in the inter- International Searching Authorities and Interna- national application as filed, were furnished to it. tional Preliminary Examining Authorities are not Those dates are also mentioned in the **>publication expected to request access to deposited biological of the< international application. Failure to include a material. However, in order to retain the possibility of reference to a deposited biological material (or any access to a deposited biological material referred to in indication required in such a reference) in the interna- an international application which is being searched tional application as filed, or failure to furnish it (or or examined by such an Authority, the PCT provides the indication) within the prescribed time limit, has no that the Authorities may, if they fulfill certain condi- consequence if the national law does not require the tions, ask for samples. Thus, an Authority may only reference (or indication) to be furnished in a national ask for samples if it has notified the International application. Where there is a consequence, it is the Bureau (in a general notification) that it may require same as that which applies under the national law. samples and the International Bureau has published To the extent that indications relating to the deposit the notification in the PCT Gazette. The only Author- of a biological material are not given in the descrip- ity which has made such a notification (and thus the tion, because they are furnished later, they may be only Authority which may request samples) is the given in the “optional sheet” provided for that pur- Japan Patent Office. If a sample is asked for, the

1800-33 Rev. 7, July 2008 1823.02 MANUAL OF PATENT EXAMINING PROCEDURE request is directed to the applicant, who then becomes PCT Rule 13ter. responsible for making the necessary arrangements Nucleotide and/or Amino Acid Sequence Listings for the sample to be provided. The furnishing of samples of a deposit of a biologi- 13ter.1. Procedure Before the International Searching cal material to third persons is governed by the Authority national laws applicable in the designated Offices. (a) Where the international application contains disclosure PCT Rule 13bis.6(b), however, provides for the delay- of one or more nucleotide and/or amino acid sequences, the Inter- ing of any furnishing of samples under the national national Searching Authority may invite the applicant to furnish to law applicable in each of the designated (or elected) it, for the purposes of the international search, a sequence listing Offices until the start of the national phase, subject to in electronic form complying with the standard provided for in the the ending of this “delaying effect” brought about by Administrative Instructions, unless such listing in electronic form is already available to it in a form and manner acceptable to it, and the occurrence of either of the following two events: to pay to it, where applicable, the late furnishing fee referred to paragraph (c), within a time limit fixed in the invitation: (A) the applicant has, after international publica- (b) Where at least part of the international application is tion of the international application, taken the steps filed on paper and the International Searching Authority finds that necessary to enter the national phase before the desig- the description does not comply with Rule 5.2(a), it may invite the nated Office. applicant to furnish, for the purposes of the international search, a sequence listing in paper form complying with the standard pro- (B) international publication of the international vided for in the Administrative Instructions, unless such listing in application has been effected, and that publication has paper form is already available to it in a form and manner accept- the same effects, under the national law applicable in able to it, whether or not the furnishing of a sequence listing in the designated Office, as the compulsory national electronic form is invited under paragraph (a), and to pay, where applicable, the late furnishing fee referred to in paragraph (c), publication of an unexamined national application (in within a time limit fixed in the invitation. other words, the international application has quali- (c) The furnishing of a sequence listing in response to an fied for the grant of “provisional protection”). invitation under paragraph (a) or (b) may be subjected by the International Searching Authority to the payment to it, for its own 1823.02 Nucleotide and/or Amino Acid benefit, of a late furnishing fee whose amount shall be determined by the International Searching Authority but shall not exceed 25% Sequence Listings, and Tables of the international filing fee referred to in item 1 of the Schedule Related to Sequence Listings of Fees, not taking into account any fee for each sheet of the inter- national application in excess of 30 sheets, provided that a late [R-5] furnishing fee may be required under either paragraph (a) or (b) but not both. PCT Rule 5. (d) If the applicant does not, within the time limit fixed in The Description the invitation under paragraph (a) or (b), furnish the required sequence listing and pay any required late furnishing fee, the International Searching Authority shall only be required to search ***** the international application to the extent that a meaningful search can be carried out without the sequence listing. 5.2.Nucleotide and/or Amino Acid Sequence Disclosure (e) Any sequence listing not contained in the international application as filed, whether furnished in response to an invitation (a) Where the international application contains disclosure under paragraph (a) or (b) or otherwise, shall not form part of the of one or more nucleotide and/or amino acid sequences, the international application, but this paragraph shall not prevent the description shall contain a sequence listing complying with the applicant from amending the description in relation to a sequence standard prescribed by the Administrative Instructions and pre- listing pursuant to Article 34(2)(b). sented as a separate part of the description in accordance with that standard. (f) Where the International Searching Authority finds that the description does not comply with Rule 5.2(b), it shall invite (b) Where the sequence listing part of the description con- the applicant to submit the required correction. Rule 26.4 shall tains any free text as defined in the standard provided for in the apply mutatis mutandis to any correction offered by the applicant. Administrative Instructions, that free text shall also appear in the The International Searching Authority shall transmit the correc- main part of the description in the language thereof. tion to the receiving Office and to the International Bureau.

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13ter.2. Procedure Before the International Preliminary Authority. However, if an electronic form of a Examining Authority sequence listing is not provided, a search or examina- Rule 13ter.1 shall apply mutatis mutandis to the procedure tion will be performed only to the extent possible in before the International Preliminary Examining Authority. the absence of the electronic form. The U.S. sequence rules (37 CFR 1.821 - 1.825) and the PCT sequence 13ter.3. Sequence Listing for Designated Office No designated Office shall require the applicant to furnish to it requirements are substantively consistent. In this a sequence listing other than a sequence listing complying with regard, full compliance with the requirements of the the standard provided for in the Administrative Instructions. U.S. rules will ensure compliance with the applicable PCT requirements. For a detailed discussion of the PCT Administrative Instruction Section 208. U.S. sequence rules, see MPEP § 2420 - § 2421.04. ** Sequence Listings

Any nucleotide and/or amino acid sequence listing (“sequence II. QUALIFYING FOR POTENTIALLY RE- listing”), whether on paper or in electronic form, filed as part of DUCED BASIC FEE BY FILING SE- the international application, or furnished together with the inter- QUENCE LISTING AND/OR TABLES ON national application or subsequently, shall comply with Annex C. COMPACT DISC RATHER THAN ON PA- PER I. REQUIREMENTS FOR SEQUENCE LISTINGS PCT Administrative Instruction Section 801. Filing of International Applications Containing Sequence Where an international application discloses one or Listings and/or Tables more nucleotide and/or amino acid sequences, the description must contain a sequence listing complying (a) Pursuant to Rules 89bis and 89ter, where an interna- with the standard specified in the Administrative tional application contains disclosure of one or more nucleotide Instructions. The standard is set forth in detail in and/or amino acid sequence listings (“sequence listings”), the receiving Office may, if it is prepared to do so, accept that the Annex C - Standard for the Presentation of Nucleotide sequence listing part of the description, as referred to in and Amino Acid Sequence Listings in International Rule 5.2(a) and/or any table related to the sequence listing(s) Patent Applications Under the PCT. The standard (“sequence listings and/or tables”), be filed, at the option of the allows the applicant to draw up a single sequence list- applicant: ing which is acceptable to all receiving Offices, Inter- national Searching and Preliminary Examining (i) only on an electronic medium in electronic form in accordance with Section 802; or Authorities for the purposes of the international (ii) both on an electronic medium in electronic form and phase, and to all designated and elected Offices for on paper in accordance with Section 802; the purposes of the national phase. The International provided that the other elements of the international applica- Searching Authority and the International Preliminary tion are filed as otherwise provided for under the Regulations and Examining Authority may, in some cases, invite the these Instructions. applicant to furnish a listing complying with that stan- (b) Any receiving Office which is prepared to accept the fil- ing in electronic form of the sequence listings and/or tables under dard. The applicant may also be invited to furnish a paragraph (a) shall notify the International Bureau accordingly. listing in an electronic form provided for in the PCT The notification shall specify the electronic media on which the Administrative Instructions. It is advisable for the receiving Office will accept such filings. The International Bureau applicant to submit a listing of the sequence in elec- shall promptly publish any such information in the Gazette. tronic form, if such a listing is required by the compe- (c) A receiving Office which has not made a notification tent International Searching Authority or International under paragraph (b) may nevertheless decide in a particular case to accept an international application the sequence listings and/or Preliminary Examining Authority, together with the tables of which are filed with it under paragraph (a). international application rather than to wait for an (d) Where the sequence listings and/or tables are filed in invitation by the International Searching Authority or electronic form under paragraph (a) but not on an electronic International Preliminary Examining Authority. medium specified by the receiving Office under paragraph (b), The electronic form is not mandatory in interna- that Office shall, under Article 14(1)(a)(v), invite the applicant to furnish to it replacement sequence listings and/or tables on an tional applications to be searched by the United States electronic medium specified under paragraph (b). International Searching Authority or examined by the (e) Where an international application containing sequence United States International Preliminary Examining listings and/or tables in electronic form is filed under paragraph

1800-35 Rev. 7, July 2008 1823.02 MANUAL OF PATENT EXAMINING PROCEDURE

(a) with a receiving Office which is not prepared, under paragraph mit the sequence listing part and any related tables (b) or (c), to accept such filings, Section 333(b) and (c) shall under conventional filing procedures but will not be apply. eligible for the potentially reduced international filing Part 8 of the Administrative Instructions became fee described in Administrative Instructions Section effective January 11, 2001. Under Administrative 803. Instructions Section 801(a), applicants may file the When filing an international application under nucleotide and/or amino acid sequence listing part of Administrative Instructions Section 801(a) in the RO/ the description of an international application on an US, applicant should not submit a paper copy of the electronic medium in electronic form with certain Sequence Listing part and/or tables. If both a receiving Offices. As of September 6, 2002, Part 8 of sequence listing part and a tables part are filed under the Administrative Instructions was expanded to Administrative Instructions Section 801(a), the include tables related to sequence listings. At the sequence listing part and the tables part must not be present time, the United States Receiving Office (RO/ filed on the same electronic medium. With specific US) has not notified the International Bureau (IB) regard to tables, only tables which are related to under Administrative Instructions Section 801(b) that sequence listings, as referred to in PCT Rule 5.2(a), it will be generally accepting the filing of interna- are covered under Part 8 of the Administrative tional applications under Administrative Instructions Instructions. Currently, other types of table data may Section 801(a). The RO/US will, however, accept not be filed on electronic media. such applications in a particular case pursuant to Administrative Instructions Section 801(c), provided A. Guidelines on Qualifying for Potentially that applicant follows the Guidelines set forth below Reduced International Filing Fee Under PCT in subsection II. A. Administrative Instructions Section 803 PCT Administrative Instruction Section 803. 1. What To Submit Calculation of International Filing Fee for International Applications Containing Sequence Listings and/or Tables The applicant is required to submit a complete copy of the international application, wherein the sequence Where sequence listings and/or tables are filed in electronic listing part and/or tables part of the application is sub- form under Section 801(a), the international filing fee payable in mitted on electronic media rather than on paper. The respect of that application shall include the following two compo- nents: application is to be accompanied by a transmittal let- (i) a basic component calculated as provided in the Sched- ter entitled “Compact Disc Transmittal Sheet For Sub- ule of Fees in respect of all pages filed on paper (that is, all pages mission Of Sequence Listing and/or Tables To the of the request, description (excluding sequence listings and/or United States Receiving Office Under PCT Adminis- tables if also filed on paper), claims, abstract and drawings), and trative Instructions - Part 8.” (ii) an additional component, in respect of sequence listings and/or tables, equal to 400 times the fee per sheet as referred to in (a) Complete International Application With item 1 of the Schedule of Fees, regardless of the actual length of Sequence Listing Part and/or Tables Part on the sequence listings and/or tables filed in electronic form and regardless of the fact that sequence listings and/or tables may have Electronic Media been filed both on paper and in electronic form. Applicant shall submit a paper copy of the com- Applicants will usually achieve a significant fee plete international application, with the exception that savings by filing international applications under the sequence listing part and/or tables part is provided Administrative Instructions Section 801(a) in situa- on electronic media rather than on paper. Four (4) tions where the sequence listings and/or tables con- copies of the sequence listing part and/or three (3) sume over four hundred (400) combined pages. The copies of the tables part are to be included with the potentially reduced international filing fee described application, each copy on an electronic medium or set in Administrative Instructions Section 803 is avail- of electronic media if additional capacity is needed. able to applications filed pursuant to the Guidelines One copy of the sequence listing part, called the below. Applicants who do not wish to file under “computer readable form” (CRF) copy required by the Administrative Instructions Section 801(a) may sub- Administrative Instructions (see Annex C of the

Rev. 7, July 2008 1800-36 PATENT COOPERATION TREATY 1823.02

Administrative Instructions, paragraphs 39-46), may Examples of properly labeled electronic media be submitted on any acceptable medium under 37 appear below.

CFR 1.824(c), although compact disc (CD) media is Example of properly labeled electronic medium preferred. All other copies must be submitted only on CD media as specified below: (1) CD-R Type: 120mm Compact Disc Recordable Specification: ISO 9660, 650MB; or (2) CD-ROM Type: ISO/IEC 10149:1995, 120mm Compact Disc Read Only Memory Specification: ISO 9660, 650MB Each electronic medium shall be enclosed in a hard protective case within a padded envelope. If a sequence listing file is included, the four (4) sequence listing part copies shall be labeled as follows: (1) “COPY 1 – SEQUENCE LISTING PART” (2) “COPY 2 – SEQUENCE LISTING PART” (3) “COPY 3 – SEQUENCE LISTING PART” (4) “CRF” If tables file(s) are included, the three (3) tables part copies shall be labeled as follows: (1) “COPY 1 – TABLES PART” (2) “COPY 2 – TABLES PART” (3) “COPY 3 – TABLES PART” Additionally, the labeling shall contain the fol- lowing information: (1) Name of Applicant (2) Title of Invention (3) Applicant’s or Agent’s File Reference Num- ber (4) Date of Recording (5) Computer Operating System Used (6) Name of the Competent Authority (i.e. the RO/US) (7) Indication that the sequence listing part and/ Important Notes: or tables part is being filed under Administrative The electronic medium itself must be neatly labeled Instructions Section 801(a) with the required information. Labeling of the protec- (8) If the sequence listing file and/or tables tive case is recommended, but not required. Sequence file(s) consumes more than one CD, an indication listings or tables submitted for correction, rectifica- such as “DISK 1/3”, “DISK 2/3”, and “DISK 3/3” tion, or amendment must satisfy the additional label- (9) For a CD containing tables, an indication ing requirements of Administrative Instructions such as “TABLES 1 to 450” Section 802(d).

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Each CD shall contain either: (1) only a sequence pct/part8translett.pdf. The PDF sheet includes the fol- listing part or (2) only a tables part. A sequence listing lowing information: part and a tables part must not reside together on the (1) Name of Applicant same CD. Furthermore, each file in the tables part (2) Applicant’s or Agent’s File Reference Num- must have a file name which indicates the name of the ber table contained therein, e.g., “table-1.txt”, “table- (3) Title of Invention 2.txt”, etc. In addition, no programs or any explana- tory files shall appear on any CD. (4) Name of Sequence Listing File and/or Tables The sequence listing file and/or tables file(s) must File(s) (as per CD directory) be in compliance with the American Standard Code (5) Size of Sequence Listing File and/or Tables for Information Interchange (ASCII) and formatted in Files(s) (in bytes or kilobytes as per CD directory) accordance with Administrative Instructions Annex (6) Date of Sequence Listing File and/or Tables C, paragraph 41 and Administrative Instructions File(s) (as per CD directory) Annex C-bis. No copy protection or encryption tech- (7) Statement that the four (4) submitted copies niques are permitted. File compression is acceptable of the Sequence Listing Part and/or three (3) submit- for the sequence listing part, so long as the com- ted copies of the Tables Part are identical pressed file is in a self-extracting format and uses the (8) Contact information compression method described in Administrative (a) Name of Contact Instructions Part 7, Annex F, Section 4.1.1. File Com- (b) Telephone Number pression is not permitted for the tables part. (c) Facsimile Number (9) Signature of Applicant, Agent, or Common (b) Compact Disc Transmittal Sheet for Submis- Representative sion of Sequence Listing and/or Tables to the Important Note: The “Compact Disc Transmittal United States Receiving Office Under PCT Sheet For Submission Of Sequence Listing and/or Administrative Instructions - Part 8. Tables To The United States Receiving Office Under If applicant desires for an application to be PCT Administrative Instructions - Part 8” is separate accepted pursuant to Administrative Instructions Sec- and apart from any other transmittal letter. The Trans- tion 801(c), the application must be submitted with a mittal Sheet requirement cannot be satisfied by incor- document entitled “Compact Disc Transmittal Sheet porating the above information into any other For Submission Of Sequence Listing and/or Tables To document. A sample copy of a “Compact Disc Trans- The United States Receiving Office Under PCT mittal Sheet for Submission of Sequence Listing To Administrative Instructions - Part 8.” This document the United States Receiving Office Under PCT is available as a PDF sheet that may be downloaded Administrative Instructions - Part 8” is reproduced on from http://www.uspto.gov/web/offices/pac/dapps/ the following page.

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1800-39 Rev. 7, July 2008 1824 MANUAL OF PATENT EXAMINING PROCEDURE

2. Where To Submit such references as: “as described in part ... of the description,” or “as illustrated in figure ... of the drawings.” (a) United States Postal Service (Express Mail, (b) Where the international application contains drawings, Priority Mail, First Class Mail, etc.) the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When If deposited with the United States Postal Service, used, the reference signs shall preferably be placed between the entire international application, including all parentheses. If inclusion of reference signs does not particularly applicable items set forth in MPEP § 1823.02 para- facilitate quicker understanding of a claim, it should not be made. Reference signs may be removed by a designated Office for the graph II.A.1. above, should be addressed to: purposes of publication by such Office.

Mail Stop PCT 6.3.Manner of Claiming Commissioner for Patents P.O. Box 1450 (a) The definition of the matter for which protection is sought shall be in terms of the technical features of the invention. Alexandria, VA 22313-1450 (b) Whenever appropriate, claims shall contain: (b) Hand-Carried or by Private Delivery Service (i) a statement indicating those technical features of the invention which are necessary for the definition of the claimed If hand-carried or deposited with a private delivery subject matter but which, in combination, are part of the prior art, service, the entire international application, including (ii) a characterizing portion - preceded by the words all applicable items set forth in MPEP § 1823.02 para- “characterized in that,” “characterized by,” “wherein the improve- ment comprises,” or any other words to the same effect - stating graph II.A.1. above, should be delivered to: concisely the technical features which, in combination with the features stated under (i), it is desired to protect. U.S. Patent and Trademark Office (c) Where the national law of the designated State does not Customer Service Window, Mail Stop PCT require the manner of claiming provided for in paragraph (b), fail- Randolph Building ure to use that manner of claiming shall have no effect in that 401 Dulany Street State provided the manner of claiming actually used satisfies the Alexandria, VA 22314 national law of that State. 1824 The Claims [R-6] 6.4.Dependent Claims (a) Any claim which includes all the features of one or more PCT Article 6. other claims (claim in dependent form, hereinafter referred to as The Claims “dependent claim”) shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the The claim or claims shall define the matter for which protec- additional features claimed. Any dependent claim which refers to tion is sought. Claims shall be clear and concise. They shall be more than one other claim (“multiple dependent claim”) shall fully supported by the description. refer to such claims in the alternative only. Multiple dependent claims shall not serve as a basis for any other multiple dependent PCT Rule 6. claim. Where the national law of the national Office acting as The Claims International Searching Authority does not allow multiple depen- dent claims to be drafted in a manner different from that provided 6.1.Number and Numbering of Claims for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17(2)(b) in the (a) The number of the claims shall be reasonable in consid- international search report. Failure to use the said manner of eration of the nature of the invention claimed. claiming shall have no effect in a designated State if the manner of (b) If there are several claims, they shall be numbered con- claiming actually used satisfies the national law of that State. secutively in Arabic numerals. (c) The method of numbering in the case of the amendment (b) Any dependent claim shall be construed as including all of claims shall be governed by the Administrative Instructions. the limitations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations 6.2.References to Other Parts of the International Applica- contained in the particular claim in relation to which it is consid- tion ered. (c) All dependent claims referring back to a single previous (a) Claims shall not, except where absolutely necessary, rely, claim, and all dependent claims referring back to several previous in respect of the technical features of the invention, on references claims, shall be grouped together to the extent and in the most to the description or drawings. In particular, they shall not rely on practical way possible.

Rev. 7, July 2008 1800-40 PATENT COOPERATION TREATY 1825

6.5.Utility Models The physical requirements for the claims are the Any designated State in which the grant of a utility model is same as those for the description. Note that the claims sought on the basis of an international application may, instead of must commence on a new sheet. Rules 6.1 to 6.4, apply in respect of the matters regulated in those The procedure for rectification of obvious *>mis- Rules the provisions of its national law concerning utility models once the processing of the international application has started in takes< is explained in MPEP § 1836. The omission of that State, provided that the applicant shall be allowed at least two an entire sheet of the claims cannot be rectified with- months from the expiration of the time limit applicable under out affecting the international filing date>, except in Article 22 to adapt his application to the requirements of the said applications filed on or after April 1, 2007, where, if provisions of the national law. the application, on its initial receipt date, contained a PCT Administrative Instruction Section 205. priority claim and a proper incorporation by reference Numbering and Identification of Claims Upon Amendment statement, the original international filing date may be retained if the submitted correction was completely (a) Amendments to the claims under Article 19 or Article contained in the earlier application. See PCT Rules 34(2)(b) may be made either by cancelling one or more entire 4.18 and 20.6<. It is recommended that a request for claims, by adding one or more new claims or by amending the text rectification of obvious *>mistakes< in the claims be of one or more of the claims as filed. All the claims appearing on a made only if the *>mistake< is liable to affect the replacement sheet shall be numbered in Arabic numerals. Where a claim is cancelled, no renumbering of the other claims shall be international search; otherwise, the rectification required. In all cases where claims are renumbered, they shall be should be made by amending the claims. renumbered consecutively. The claims can be amended during the international (b) The applicant shall, in the letter referred to in the second phase under PCT Article 19 on receipt of the interna- and third sentences of Rule 46.5(a) or in the second and fourth tional search report, during international preliminary sentences of Rule 66.8(a), indicate the differences between the examination if the applicant has filed a Demand, and claims as filed and the claims as amended. He shall, in particular, indicate in the said letter, in connection with each claim appearing during the national phase. in the international application (it being understood that identical Multiple dependent claims are permitted in interna- indications concerning several claims may be grouped), whether: tional applications before the United States Patent and (i) the claim is unchanged; Trademark Office as an International Searching and (ii) the claim is cancelled; International Preliminary Examining Authority or as a (iii)the claim is new; Designated or Elected Office, if they are in the alter- (iv) the claim replaces one or more claims as filed; native only and do not serve as a basis for any other (v) the claim is the result of the division of a claim as multiple dependent claim (PCT Rule 6.4(a), 35 U.S.C. filed. 112). The claims, being an element of the application, should start on a new page (PCT Rule 11.4). Page 37 CFR 1.436. The claims. numbers must not be placed in the margins (PCT Rule The requirements as to the content and format of claims are set forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be 11.7(b)). Line numbers should appear in the right half adhered to. The number of the claims shall be reasonable, consid- of the left margin (PCT Rule 11.8(b)). Paragraph ering the nature of the invention claimed. numbers (e.g., paragraph numbers complying with 37 CFR 1.52(b)(6)) are acceptable provided they are not The claim or claims must “define the matter for placed in the margins. See PCT Rule 11.6(e). which protection is sought.” Claims must be clear and The number of claims shall be reasonable, consid- concise. They must be fully supported by the descrip- ering the nature of the invention claimed (37 CFR tion. PCT Rule 6 contains detailed requirements as to 1.436 ). the number and numbering of claims, the extent to which any claim may refer to other parts of the inter- 1825 The Drawings [R-6] national application, the manner of claiming, and dependent claims. As to the manner of claiming, the PCT Article 7. claims must, whenever appropriate, be in two distinct The Drawings parts; namely, the statement of the prior art and the (1) Subject to the provisions of paragraph (2)(ii), drawings statement of the features for which protection is shall be required when they are necessary for the understanding of sought (“the characterizing portion”). the invention.

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(2) Where, without being necessary for the understanding of 11.13.Special Requirements for Drawings the invention, the nature of the invention admits of illustration by drawings: (a) Drawings shall be executed in durable, black, sufficiently (i) the applicant may include such drawings in the inter- dense and dark, uniformly thick and well-defined, lines and national application when filed. strokes without colorings. (ii) any designated Office may require that the applicant (b) Cross-sections shall be indicated by oblique hatching file such drawings with it within the prescribed time limit. which should not impede the clear reading of the reference signs and leading lines. PCT Rule 7. (c) The scale of the drawings and the distinctness of their The Drawings graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all 7.1.Flow Sheets and Diagrams details to be distinguished without difficulty. Flow sheets and diagrams are considered drawings. (d) When, in exceptional cases, the scale is given on a draw- ing, it shall be represented graphically. 7.2.Time Limit (e) All numbers, letters and reference lines, appearing on the The time limit referred to in Article 7(2)(ii) shall be reasonable drawings, shall be simple and clear. Brackets, circles or inverted under the circumstances of the case and shall, in no case, be commas shall not be used in association with numbers and letters. shorter than two months from the date of the written invitation (f) All lines in the drawings shall, ordinarily, be drawn with requiring the filing of drawings or additional drawings under the the aid of drafting instruments. said provision. (g) Each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of PCT Rule 11. a different proportion is indispensable for the clarity of the figure. Physical Requirements of the International Application (h) The height of the numbers and letters shall not be less than 0.32 cm. For the lettering of drawings, the Latin and, where ***** customary, the Greek alphabets shall be used. 11.5.Size of Sheets (i) The same sheet of drawings may contain several figures. Where figures on two or more sheets form in effect a single com- The size of the sheets shall be A4 (29.7 cm x 21 cm). However, plete figure, the figures on the several sheets shall be so arranged any receiving Office may accept international applications on that the complete figure can be assembled without concealing any sheets of other sizes provided that the record copy, as transmitted part of any of the figures appearing on the various sheets. to the International Bureau, and, if the competent International (j) The different figures shall be arranged on a sheet or Searching Authority so desires, the search copy, shall be of A4 sheets without wasting space, preferably in an upright position, size. clearly separated from one another. Where the figures are not 11.6.Margins arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet. ***** (k) The different figures shall be numbered in Arabic numer- als consecutively and independently of the numbering of the (c) On sheets containing drawings, the surface usable shall sheets. not exceed 26.2 cm x 17.0 cm. The sheets shall not contain frames (l) Reference signs not mentioned in the description shall around the usable or used surface. The minimum margins shall be not appear in the drawings, and vice versa. as follows: (m) The same features, when denoted by reference signs, - top: 2.5 cm shall, throughout the international application, be denoted by the - left side: 2.5 cm same signs. - right side: 1.5 cm (n) If the drawings contain a large number of reference - bottom: 1.0 cm signs, it is strongly recommended to attach a separate sheet listing ***** all reference signs and the features denoted by them.

11.11.Words in Drawings ***** (a) The drawings shall not contain text matter, except a single 37 CFR 1.437. The drawings. word or words, when absolutely indispensable, such as “water,” **> “steam,” “open,” “closed,” “section on AB,” and, in the case of (a) Drawings are required when they are necessary for the electric circuits and block schematic or flow sheet diagrams, a few understanding of the invention (PCT Art. 7). short catchwords indispensable for understanding. (b) The physical requirements for drawings are set forth in (b) Any words used shall be so placed that, if translated, they PCT Rule 11 and shall be adhered to.< may be pasted over without interfering with any lines of the draw- ings. The international application must contain draw- ***** ings when they are necessary for the understanding of

Rev. 7, July 2008 1800-42 PATENT COOPERATION TREATY 1825 the invention. Moreover where, without drawings The minimum margins which must be observed are: being actually necessary for the understanding of the top and left side: 2.5 cm; right side: 1.5 cm; bottom: invention, its nature admits of illustration by draw- 1.0 cm. ings, the applicant may include such drawings and All sheets of drawings must be numbered in the any designated Office may require the applicant to file center of either the top or the bottom of each sheet but such drawings during the national phase. Flow sheets not in the margin in numbers larger than those used as and diagrams are considered drawings. reference signs in order to avoid confusion with the Drawings must be presented on one or more sepa- latter. For drawings, a separate series of page numbers rate sheets. They may not be included in the descrip- is to be used. The number of each sheet of the draw- tion, the claims or the abstract. They may not contain ings must consist of two Arabic numerals separated text matter, except a single word or words when abso- by an oblique stroke, the first being the sheet number lutely indispensable. Note that if the drawings contain and the second being the total number of sheets of text matter not in English but in a language accepted drawings. For example, “2/5” would be used for the under PCT Rule 12.1(a) by the International Bureau second sheet of drawings where there are five in all. as a Receiving Office, the international application Different figures on the sheets of drawings must be will be transmitted to the International Bureau for numbered in Arabic numerals consecutively and inde- processing in its capacity as a Receiving Office. See pendently of the numbering of the sheets and, if possi- 37 CFR 1.412(c)(6)(ii). If the drawings contain text ble, in the order in which they appear. This numbering matter not in a language accepted under PCT Rule should be preceded by the expression “Fig.” 12.1(a) by the International Bureau as a Receiving The PCT makes no provision for photographs. Office, the application will be denied an international Nevertheless, they are allowed by the International filing date. Bureau where it is impossible to present in a drawing All lines in the drawings must, ordinarily, be drawn what is to be shown (for instance, crystalline struc- with the aid of a drafting instrument and must be exe- tures). Where, exceptionally, photographs are submit- cuted in black, uniformly thick and well-defined lines. ted, they must be on sheets of A4 size, they must be Color drawings are not acceptable. PCT Rules 11.10 black and white, and they must respect the minimum to 11.13 contain detailed requirements as to further margins and admit of direct reproduction. Color pho- physical requirements of drawings. Drawings newly tographs are not accepted. executed according to national standards may not be The procedure for rectification of obvious *>mis- required during the national phase if the drawings takes< in the drawings is explained in MPEP § 1836. filed with the international application comply with The omission of an entire sheet of drawings cannot be PCT Rule 11. The examiner may require new draw- rectified without affecting the international filing date ings where the drawings which were accepted during >, except in applications filed on or after April 1, the international phase did not comply with PCT Rule 2007, where, if the application, on its initial receipt 11. A file reference may be indicated in the upper left date, contained a priority claim and a proper incorpo- corner on each sheet of the drawings as for the ration by reference statement, the original interna- description. tional filing date may be retained if the submitted All of the figures constituting the drawings must be correction was completely contained in the earlier grouped together on a sheet or sheets without waste of application. See PCT Rules 4.18 and 20.6<. Changes space, preferably in an upright position and clearly other than the rectification of obvious *>mistakes< separated from each other. Where the drawings or are considered amendments. tables cannot be presented satisfactorily in an upright The drawings can be amended during the interna- position, they may be placed sideways, with the tops tional phase only if the applicant files a Demand for of the drawings or tables on the left-hand side of the international preliminary examination. The drawings sheet. can also be amended during the national phase. The usable surface of sheets (which must be of A4 If drawings are referred to in an international appli- size) must not exceed 26.2 cm x 17.0 cm. The sheets cation and are not found in the search copy file, the must not contain frames around the usable surface. examiner should refer the application to a Special

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Program Examiner in his or her Technology Center. 37 CFR 1.438. The abstract. See Administrative Instructions Section 310. (a) Requirements as to the content and form of the abstract are set forth in PCT Rule 8, and shall be adhered to. 1826 The Abstract [R-6] (b) Lack of an abstract upon filing of an international appli- cation will not affect the granting of a filing date. However, failure PCT Rule 8. to furnish an abstract within one month from the date of the notifi- The Abstract cation by the Receiving Office will result in the international application being declared withdrawn. 8.1.Contents and Form of the Abstract The abstract must consist of a summary of the dis- (a) The abstract shall consist of the following: closure as contained in the description, the claims and (i) a summary of the disclosure as contained in the any drawings. Where applicable, it must also contain description, the claims, and any drawings; the summary shall indi- the most characteristic chemical formula. The abstract cate the technical field to which the invention pertains and shall be must be as concise as the disclosure permits (prefera- drafted in a way which allows the clear understanding of the tech- nical problem, the gist of the solution of that problem through the bly 50 to 150 words if it is in English or when trans- invention, and the principal use or uses of the invention; lated into English). National practice (see MPEP (ii) where applicable, the chemical formula which, among § 608.01(b)) also provides a maximum of 150 words all the formulae contained in the international application, best for the abstract. See 37 CFR 1.72(b). The PCT range characterizes the invention. of 50 - 150 words is not absolute but publication prob- (b) The abstract shall be as concise as the disclosure permits lems could result when the PCT limit is increased (preferably 50 to 150 words if it is in English or when translated into English). beyond the 150 word limit. Maintaining the PCT (c) The abstract shall not contain statements on the alleged upper limit is encouraged. As a rule of thumb, it can merits or value of the claimed invention or on its speculative be said that the volume of the text of the abstract, application. including one of the figures from the drawings (if (d) Each main technical feature mentioned in the abstract any), should not exceed what can be accommodated and illustrated by a drawing in the international application shall on an A4 sheet of typewritten matter, 1 1/2 spaced. be followed by a reference sign, placed between parentheses. The abstract of the international application as filed 8.2.Figure must begin on a new sheet following the claims (Administrative Instructions Section 207). The other (a) If the applicant fails to make the indication referred to in physical requirements must correspond to those for Rule 3.3(a)(iii), or if the International Searching Authority finds the description. The abstract must be so drafted that it that a figure or figures other than that figure or those figures sug- gested by the applicant would, among all the figures of all the can efficiently serve as a scanning tool for the pur- drawings, better characterize the invention, it shall, subject to poses of searching in the particular art. These and paragraph (b), indicate the figure or figures which should accom- other requirements concerning the abstract are spelled pany the abstract when the latter is published by the International out in detail in PCT Rule 8. Useful guidance can be Bureau. In such case, the abstract shall be accompanied by the fig- obtained from the “Guidelines for the Preparation of ure or figures so indicated by the International Searching Author- Abstracts Under the Patent Cooperation Treaty,” pub- ity. Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures suggested by the applicant. lished in the PCT Gazette (No. 5/1978). Those Guide- (b) If the International Searching Authority finds that none lines may be obtained, in English and French, from of the figures of the drawings is useful for the understanding of the International Bureau. the abstract, it shall notify the International Bureau accordingly. In The abstract should be primarily related to what is such case, the abstract, when published by the International new in the art to which the invention pertains. Phrases Bureau, shall not be accompanied by any figure of the drawings even where the applicant has made a suggestion under Rule should not be used which are implicit, (for instance, 3.3(a)(iii). “the invention relates to...”), and statements on the alleged merits or value of the invention are not 8.3.Guiding Principles in Drafting allowed. The abstract shall be so drafted that it can efficiently serve as a Where the receiving Office finds that the abstract is scanning tool for purposes of searching in the particular art, espe- cially by assisting the scientist, engineer or researcher in formulat- missing, it invites the applicant to furnish it within a ing an opinion on whether there is a need for consulting the time limit fixed in the invitation. The international international application itself. application is considered withdrawn if no abstract is

Rev. 7, July 2008 1800-44 PATENT COOPERATION TREATY 1827.01 furnished to the receiving Office within the time limit the USPTO web site (see MPEP § 1730). Applicants fixed. Where the receiving Office has not invited the are urged to refer to this list before submitting any applicant to furnish an abstract, the International fees to the USPTO. Searching Authority establishes one. The same Pursuant to PCT Rules 14.1(c), *>15.4<, and applies where the abstract does not comply with the 16.1(f), the *>international filing<, transmittal, and requirements outlined in the preceding paragraphs. search fee payable is the *>international filing<, Where the abstract is established by the International Searching Authority, the applicant may **>propose transmittal, and search fee in effect on the *>receipt< modifications of, or comment on, the new abstract date of the international application. See 37 CFR until the expiration of 1 month from the date of mail- 1.431(c). ing of the international search report (PCT Rule 38.3 > ).< 1827.01 Refund of International Applica- SUMMARY OF ABSTRACT REQUIREMENTS tion Fees [R-6]

Preferably 50-150 words. Should contain: 37 CFR 1.446. Refund of international application filing and processing fees. (A) Indication of field of invention. (a) Money paid for international application fees, where paid (B) Clear indication of the technical problem. by actual mistake or in excess, such as a payment not required by law or treaty and its regulations, may be refunded. A mere change (C) Gist of invention’s solution of the problem. of purpose after the payment of a fee will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty- (D) Principal use or uses of the invention. five dollars or less unless a refund is specifically requested and (E) Reference numbers of the main technical fea- will not notify the payor of such amounts. If the payor or party tures placed between parentheses. requesting a refund does not provide the banking information nec- essary for making refunds by electronic funds transfer, the Office (F) Where applicable, chemical formula which may use the banking information provided on the payment instru- best characterizes the invention. ment to make any refund by electronic funds transfer. (b) Any request for refund under paragraph (a) of this sec- Should not contain: tion must be filed within two years from the date the fee was paid. If the Office charges a deposit account by an amount other than an (A) Superfluous language. amount specifically indicated in an authorization under § 1.25(b), (B) Legal phraseology such as “said” and any request for refund based upon such charge must be filed within two years from the date of the deposit account statement “means.” indicating such charge and include a copy of that deposit account (C) Statements of alleged merit or speculative statement. The time periods set forth in this paragraph are not application. extendable. (D) Prohibited items as defined in PCT Rule 9. (c) Refund of the supplemental search fees will be made if such refund is determined to be warranted by the Director or the Director’s designee acting under PCT Rule 40.2(c). 1827 Fees [R-2] (d) The international and search fees will be refunded if no international filing date is accorded or if the application is with- A complete list of Patent Cooperation Treaty fee drawn before transmittal of the record copy to the International amounts which are to be paid to the United States Bureau (PCT Rules 15.6 and 16.2). The search fee will be Patent and Trademark Office, for both the national refunded if the application is withdrawn before transmittal of the and international stages, can be found at the beginning search copy to the International Searching Authority. The trans- of each weekly issue of the Official Gazette of the mittal fee will not be refunded. United States Patent and Trademark Office and on the (e) The handling fee (§ 1.482(b)) will be refunded (PCT >Office of< PCT Legal *>Administration< page of Rule 57.6) only if:

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(1) The Demand is withdrawn before the Demand has not party to the Paris Convention for the Protection of been sent by the International Preliminary Examining Authority to Industrial Property (Paris Convention). However, a the International Bureau, or PCT Contracting State that is not a Member of the (2) The Demand is considered not to have been submitted WTO would not be obliged to recognize the effects of (PCT Rule 54.4(a)). such a priority claim. Although 37 CFR 1.446(a) indicates that a “mere Effective July 1, 1998, applicant may correct or add change of purpose after the payment of a fee will not a priority claim by a notice submitted to the Receiving entitle a party to a refund of such fee,” 37 CFR Office or the International Bureau >(IB)< within 16 1.446(d) and (e) contain exceptions to this general months from the priority date, or where the priority statement. date is changed, within 16 months from the priority According to 37 CFR 1.446(d), the search fee will date so changed, whichever period expires first, pro- be refunded if no international filing date is accorded vided that a notice correcting or adding a priority or if the application is withdrawn before the search claim may in any event be submitted until the expira- copy is transmitted to the International Searching tion of 4 months from the international filing date. Authority. The transmittal fee will not be refunded. PCT Rule 26bis.1 and 37 CFR 1.451 and 1.465. According to 37 CFR 1.446(e), the handling fee will be refunded if the Demand is withdrawn before Under the PCT procedure, the applicant may file the Demand has been sent by the International Prelim- the certified copy of the earlier filed national applica- inary Examining Authority to the International tion together with the international application in the Bureau. receiving Office for transmittal with the record copy, Refund of the supplemental search fee will be made or alternatively the certified copy may be submitted if the applicant is successful in a protest (filed pursu- by the applicant to the **>IB< or the receiving Office ant to 37 CFR 1.477) to a holding of lack of unity of not later than 16 months from the priority date or, if invention. The supplemental search fee must be paid the applicant has requested early processing in any and be accompanied by (1) a protest and (2) a request designated Office, not later than the time such pro- for refund of the supplemental search fee. cessing or examination is requested. The **>IB< will Any request for refund of the search fee made after normally furnish copies of the certified copy to the the search copy has been transmitted to the Interna- various designated Offices so that the applicant will tional Searching Authority must be directed to the not normally be required to submit certified copies to International Searching Authority and not to the each designated Office. >If the earlier filed applica- Receiving Office. This is clearly necessary where tion was filed with the U.S. Patent and Trademark applicant has chosen the European Patent Office or Office, applicant may request the U.S. Receiving the Korean Intellectual Property Office as the Interna- Office (RO/US) to prepare, and transmit to the IB, a tional Searching Authority.< certified copy of the earlier application. In interna- tional applications filed in the RO/US on or after 1828 Priority Claim and Document [R-6] August 31, 2007, the RO/US will electronically trans- mit the certified copy of the earlier application if the An applicant who claims the priority of one or more applicant has made a request in accordance with PCT earlier national, regional or international applications Rule 17.1(b) and 37 CFR 1.451(b). Further, in such for the same invention must indicate on the Request, international applications filed on or after August 31, at the time of filing, the country in or for which it was 2007, the USPTO has waived the fee set out in 37 filed, the date of filing, and the application number. CFR 1.19(b)(1)(iii)(A) for electronically providing a See PCT Article 8 and PCT Rule 4.10 for priority copy of the patent application as filed.< claim particulars and PCT Rule 90bis.3 for with- drawal of priority claims. Note that under PCT Rule For use of the priority document in a U.S. national 4.10, an applicant may claim the priority of an appli- application which entered the national stage from an cation filed in or for a State which is a Member of the international application after compliance with 35 World Trade Organization (WTO), even if that State is U.S.C. 371, see MPEP § 1893.03(c).

Rev. 7, July 2008 1800-46 PATENT COOPERATION TREATY 1830

> of the expiration of the priority period, and where 1828.01 Restoration of the Right of applicant desires to request restoration of the right of priority under the in spite of due care standard. Appli- Priority [R-6] cations filed with, or forwarded to, the International Bureau must have a foreign filing license. On April 1, 2007, the regulations to the PCT were amended to allow applicants with applications which It must be noted that restoration of a right of prior- were filed on or after that date and which were also ity to a prior application by the United States Receiv- filed after the expiration of the 12 month priority ing Office, or by any other receiving Office, under the period but within two months of the expiration of the provisions of PCT Rule 26bis.3, will not entitle appli- priority period, to request that the right of priority be cants to a right of priority to such prior application in restored, provided that the failure to file the applica- any application which enters the national stage under tion within the priority period was in spite of due care 35 U.S.C. 371, or in any application filed under 35 or unintentional. See PCT Rule 26bis.3. Grantable U.S.C. 111(a) which claims benefit under 35 U.S.C. requests for restoration of the right of priority must be 120 and 365(c) to an international application in filed within two months from the date of expiration of which the right to priority has been restored. See 35 the priority period as defined by new PCT Rule 2.4, U.S.C. 119. It must also be noted that even though and must be accompanied by: (i) the requisite fee; (ii) restoration of such a right will not entitle applicant to a notice under PCT Rule 26bis.1(a) adding the prior- the right of priority in a subsequent United States ity claim, if the priority claim in respect of the earlier application, the priority date will still govern all PCT application is not contained in the international appli- time limits, including the thirty-month period for fil- cation; and (iii) a statement that the delay in filing the ing national stage papers and fees under 37 CFR international application within the priority period 1.495. PCT Article 2(ix), which defines “priority was unintentional. The Director may require addi- date” for purposes of computing time limits, contains tional information where there is a question whether no limitation that the priority claim be valid. Thus, for the delay was unintentional. If the applicant makes a example, in an international application containing an request for early publication under PCT Article earliest priority claim to a German application filed 21(2)(b), any of requirements (i), (ii), or (iii) above thirteen months prior to the filing date of the interna- which are filed after the technical preparations for tional application, the filing date of the German appli- international publication have been completed by the cation will be used as the basis for computing time International Bureau shall be considered as not having limits under the PCT, including the thirty-month time been submitted in time. period set forth in 37 CFR 1.495 to submit the basic national fee (37 CFR 1.492(a)) to avoid abandonment, The International Bureau has indicated that it even though applicant would not be entitled to prior- intends to decide these matters under both the in spite ity to the German application in the United States of due care and unintentional standards. Therefore, in national phase since the German application was filed view of the fact that the USPTO only decides these more than twelve months from the international filing matters under the unintentional standard, applicants date. See 35 U.S.C. 119(a) and 365(b).< may wish to consider filing directly with the Interna- tional Bureau as receiving Office instead of the United States Receiving Office in the situation where 1830 International Application Trans- applicant desires to request restoration of the right of mittal Letter [R-5] priority under the in spite of due care standard. Appli- cants may also request that an application be for- A PCT international application transmittal letter, warded to the International Bureau for processing in Form PTO-1382, is available ** for applicants to use its capacity as a receiving Office in accordance with when filing PCT international applications and related PCT Rule 19.4(a)(iii) in situations where applicants, documents with the United States Receiving Office. after the international application has been filed, real- The form >, which< is intended to simplify the filing ize that the application was filed after the expiration of PCT international applications and related docu- of the 12 month priority period but within two months ments **>with the United States Receiving Office,

1800-47 Rev. 7, July 2008 1832 MANUAL OF PATENT EXAMINING PROCEDURE may be obtained online at http://www.uspto.gov/web/ drawn (abandoned) because the Record Copy of the offices/pac/dapps/pct/chapter1.htm.< international application was not received in time by the International Bureau (37 CFR 5.3(d), PCT Article 1832 License Request for Foreign Filing 12(3), and PCT Rule 22.3). It is, however, possible to Under the PCT prevent abandonment as to the United States of Amer- ica if it has been designated, by fulfilling the require- A license for foreign filing is not required to file an ments of 35 U.S.C. 371(c). international application in the United States Receiv- ing Office but may be required before the applicant or 1834 Correspondence [R-3] the U.S. Receiving Office can forward a copy of the international application to a foreign patent office, the PCT Rule 92. International Bureau or other foreign authority Correspondence (35 U.S.C. 368, 37 CFR 5.1 and 5.11). A foreign fil- 92.1.Need for Letter and for Signature ing license to permit transmittal to a foreign office or (a) Any paper submitted by the applicant in the course of the international authority is not required if the interna- international procedure provided for in the Treaty and these Regu- tional application does not disclose subject matter in lations, other than the international application itself, shall, if not addition to that disclosed in a prior U.S. national itself in the form of a letter, be accompanied by a letter identifying the international application to which it relates. The letter shall be application filed more than 6 months prior to the fil- signed by the applicant. ing of the international application (37 CFR 5.11(a)). (b) If the requirements provided for in paragraph (a) are not In all other instances (direct foreign filings outside the complied with, the applicant shall be informed as to the non-com- PCT or filings in a foreign receiving Office), the pliance and invited to remedy the omission within a time limit applicant should petition for a license for foreign fil- fixed in the invitation. The time limit so fixed shall be reasonable ing (37 CFR 5.12) and if appropriate, identify any in the circumstances; even where the time limit so fixed expires later than the time limit applying to the furnishing of the paper (or additional subject matter in the international applica- even if the latter time limit has already expired), it shall not be less tion which was not in the earlier U.S. national appli- than 10 days and not more than one month from the mailing of the cation (37 CFR 5.14 (c)). This request and disclosure invitation. If the omission is remedied within the time limit fixed information may be supplied on the PCT international in the invitation, the omission shall be disregarded; otherwise, the application transmittal letter, Form PTO-1382. applicant shall be informed that the paper has been disregarded. (c) Where non-compliance with the requirements provided for If no petition or request for a foreign filing license in paragraph (a) has been overlooked and the paper taken into is included in the international application, and it is account in the international procedure, the non-compliance shall clear that a license is required because of the designa- be disregarded. tion of foreign countries and the time at which the Record Copy must be transmitted, it is current Office 92.2.Languages practice to construe the filing of such an international (a) Subject to Rules 55.1 and 66.9 and to paragraph (b) of application to include a request for a foreign filing this Rule, any letter or document submitted by the applicant to the license. If the license can be granted, it will be issued International Searching Authority or the International Preliminary without further correspondence. If no license can be Examining Authority shall be in the same language as the interna- tional application to which it relates. However, where a translation issued, or further information is required, applicant of the international application has been transmitted under Rule will be contacted. The automatic request for a foreign 23.1(b) or furnished under Rule 55.2, the language of such trans- filing license does not apply to the filing of a foreign lation shall be used. application outside the PCT. (b) Any letter from the applicant to the International Search- ing Authority or the International Preliminary Examining Author- EFFECT OF SECRECY ORDER ity may be in a language other than that of the international application, provided the said Authority authorizes the use of such If a secrecy order is applied to an international language. application, the application will not be forwarded (c) [Deleted] to the International Bureau as long as the secrecy (d) Any letter from the applicant to the International Bureau shall be in English or French. order remains in effect (PCT Article 27(8) and (e) Any letter or notification from the International Bureau 35 U.S.C. 368). If the secrecy order remains in effect, to the applicant or to any national Office shall be in English or the international application will be declared with- French.

Rev. 7, July 2008 1800-48 PATENT COOPERATION TREATY 1834

***** the first-mentioned of those agents; or, if the common representative has not appointed an agent but has indi- PCT Administrative Instruction Section 105. cated a special address for notifications, at that Identification of International Application With Two or More Applicants address. > **>Where any international application indicates two or more applicants, it shall be sufficient, for the purpose of identifying that application, to indicate, in any Form or correspondence relating to III. < FILING OF CORRESPONDENCE BY such application, the name of the applicant first named in the MAIL request. The provisions of the first sentence of this Section do not apply to the demand.< The “Express Mail” procedure set forth at 37 CFR 1.10 applies to papers filed with the U.S. Patent and > Trademark Office (USPTO) in international applica- I. < NOTIFICATION UNDER PCT RULE tions. Accordingly, papers filed with the USPTO in 92.1(b) OF DEFECTS WITH REGARD TO international applications will be accorded by the CORRESPONDENCE USPTO the date of deposit with the United States Postal Service as shown on the “date-in” on the If the Office finds that papers, other than the inter- “Express Mail” mailing label as the date of filing in national application itself, are not accompanied by a the USPTO if the provisions of 37 CFR 1.10 are com- letter identifying the international application to plied with. See MPEP § 513. which they relate, or are accompanied by an unsigned If there is a question regarding the date of deposit, letter, or are furnished in the form of an unsigned let- the Express Mail provisions of 37 CFR 1.10(c)-(e) ter, it notifies the applicant and invites him or her to require, in addition to using the “Express Mail Post remedy the omission. The Office disregards the said Office to Addressee” service, an indication of the papers or letter if the omission is not remedied within “Express Mail” mailing label number on each paper the time limit fixed in the invitation (PCT Rule or fee. In situations wherein the correspondence 92.1(b)). If the omission has been overlooked and the includes several papers directed to the same applica- paper taken into account, the omission is disregarded. tion (for example, Request, description, claims, > abstract, drawings, and other papers) the correspon- dence may be submitted with a cover or transmittal II. < CORRESPONDENCE ADDRESS letter, which should itemize the papers. The cover or Where there is a sole applicant without an agent in transmittal letter must have the “Express Mail” mail- an international application, correspondence will be ing label number thereon. sent to the applicant at his or her indicated address; or, The certificate of mailing by first class mail proce- if he or she has appointed one or more agents, to that dure set forth at 37 CFR 1.8 differs from the 37 CFR agent or the first-mentioned of those agents; or, if he 1.10 Express Mail procedure. See 37 CFR or she has not appointed an agent but has indicated a 1.8(a)(2)(i)(D) and (E). It is important to understand special address for notifications, at that special that the 37 CFR 1.8 certificate of mailing procedure address. CANNOT be used for filing any papers during the Where there are two or more applicants who have international stage if the date of deposit is desired. If appointed one or more common agents, correspon- the 37 CFR 1.8 certificate of mailing procedure is dence will be addressed to that agent or the first-men- used, the paper and/or fee will be accorded the date of tioned of those agents. Where no common agent has receipt in the USPTO unless the receipt date falls on a been appointed, correspondence will be addressed to Saturday, Sunday, or Federal holiday in which case the common representative (either the appointed com- the date of receipt will be the next succeeding day mon representative or the applicant who is considered which is not a Saturday, Sunday, or Federal holiday to be the common representative (PCT Rule 90.2) at (37 CFR 1.6(a)(1)). Accordingly, the certificate of the indicated address; or, if the common representa- mailing procedures of 37 CFR 1.8 are not available to tive has appointed one or more agents, to that agent or have a submission during the international stage con-

1800-49 Rev. 7, July 2008 1834.01 MANUAL OF PATENT EXAMINING PROCEDURE sidered as timely filed if the submission is not physi- A signature on a document received via facsimile in cally received at the USPTO on or before the due date. a permitted situation is acceptable as a proper signa- ture. See PCT Rule 92.4(b) and 37 CFR 1.4(d)(1)(ii). 1834.01 Use of Telegraph, Teleprinter, The receipt date of a document transmitted via fac- Facsimile Machine [R-5] simile is the date in the USPTO on which the trans- mission is completed, unless the receipt date is a PCT Rule 92.4 provides that a national Office may Saturday, Sunday, or Federal holiday in which case receive documents by telegraph, teleprinter, or fac- the date of receipt will be the next succeeding day simile machine. However, the United States Patent which is not a Saturday, Sunday, or Federal holiday and Trademark Office has not informed the Interna- (37 CFR 1.6(a)(3)). See 37 CFR 1.6(d). Where a tional Bureau that it accepts such submissions other document is illegible or part of the document is not than facsimile transmissions. Accordingly, applicants received, the document will be treated as not received may not currently file papers in international applica- to the extent that it is illegible or the transmission tions with the United States Patent and Trademark failed. See PCT Rule 92.4(c). Office via telegraph or teleprinter. Generally, any paper may be filed by facsimile 1834.02 Irregularities in the Mail Service transmission with certain exceptions which are identi- PCT Rule 82. fied in 37 CFR 1.6(d). It should be noted that a fac- Irregularities in the Mail Service simile transmission of a document is not permitted and, if submitted, will not be accorded a date of 82.1.Delay or Loss in Mail receipt if the document is: (a) Any interested party may offer evidence that he has (A) Required by statute to be certified; mailed the document or letter five days prior to the expiration of (B) A >color< drawing submitted under 37 CFR the time limit. Except in cases where surface mail normally arrives at its destination within two days of mailing, or where no 1.437; airmail service is available, such evidence may be offered only if (C) An international application for patent; or the mailing was by airmail. In any case, evidence may be offered (D) A copy of the international application and only if the mailing was by mail registered by the postal authori- ties. the basic national fee necessary to enter the national (b) If the mailing, in accordance with paragraph (a), of a stage, as specified in 37 CFR 1.495(b). document or letter is proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, Facsimile transmission may be used to submit sub- delay in arrival shall be excused, or, if the document or letter is stitute sheets (other than >color< drawings), exten- lost in the mail, substitution for it of a new copy shall be permit- sions of time, power of attorney, fee authorizations ted, provided that the interested party proves to the satisfaction of (other than the basic national fee), ** >demands<, the said Office or organization that the document or letter offered response to written opinions, oaths or declarations, in substitution is identical with the document or letter lost. petitions, and translations in international applica- (c) In the cases provided for in paragraph (b), evidence of mailing within the prescribed time limit, and, where the document tions. or letter was lost, the substitute document or letter as well as the A Certificate of Transmission may be used as pro- evidence concerning its identity with the document or letter lost vided in 37 CFR 1.8(a)(1) except in the instances spe- shall be submitted within one month after the date on which the cifically excluded in 37 CFR 1.8(a)(2). Note interested party noticed or with due diligence should have noticed the delay or the loss, and in no case later than six months after the particularly that the Certificate of Transmission can- expiration of the time limit applicable in the given case. not be used for the filing of an international applica- (d) Any national Office or intergovernmental organization tion for patent or correspondence in an international which has notified the International Bureau that it will do so shall, application before the U.S. Receiving Office, the U.S. where a delivery service other than the postal authorities is used to International Searching Authority, or the U.S. Interna- mail a document or letter, apply the provisions of paragraphs (a) tional Preliminary Examining Authority. Guidelines to (c) as if the delivery service was a postal authority. In such a case, the last sentence of paragraph (a) shall not apply but evi- for facsimile transmission are clearly set forth in 37 dence may be offered only if details of the mailing were recorded CFR 1.6(d) and should be read before transmitting by by the delivery service at the time of mailing. The notification facsimile machine. may contain an indication that it applies only to mailings using

Rev. 7, July 2008 1800-50 PATENT COOPERATION TREATY 1836 specified delivery services or delivery services which satisfy spec- INTERRUPTION IN MAIL SERVICE ified criteria. The International Bureau shall publish the informa- tion so notified in the Gazette. The provisions of PCT Rule 82.1(c) apply mutatis (e) Any national Office or intergovernmental organization mutandis for interruptions in the mail service caused may proceed under paragraph (d): by war, revolution, civil disorder, strike, natural (i) even if, where applicable, the delivery service used calamity or other like reasons (PCT Rule 82.2). was not one of those specified, or did not satisfy the criteria speci- Special provisions also apply to mail interruptions fied, in the relevant notification under paragraph (d), or (ii) even if that Office or organization has not sent to the caused by war, revolution, civil disorder, strike, natu- International Bureau a notification under paragraph (d). ral calamity or other like reasons—see PCT Rule 82.2 for details. 82.2.Interruption in the Mail Service See PCT Rule 80.5 for guidance on periods which expire on a non-working day. (a) Any interested party may offer evidence that on any of the 10 days preceding the day of expiration of the time limit the postal service was interrupted on account of war, revolution, civil 1836 Rectification of Obvious *>Mis- disorder, strike, natural calamity, or other like reason, in the local- takes< [R-6] ity where the interested party resides or has his place of business or is staying. **> (b) If such circumstances are proven to the satisfaction of the national Office or intergovernmental organization which is the PCT Rule 91. addressee, delay in arrival shall be excused, provided that the Rectification or Obvious Mistakes in the International interested party proves to the satisfaction of the said Office or Application and Other Documents organization that he effected the mailing within five days after the mail service was resumed. The provisions of Rule 82.1(c) shall 91.1 Rectification of Obvious Mistakes apply mutatis mutandis. (a) An obvious mistake in the international application or DELAY OR LOSS IN MAIL another document submitted by the applicant may be rectified in accordance with this Rule if the applicant so requests. Delay or loss in the mail shall be excused when it is (b) The rectification of a mistake shall be subject to authori- proven to the satisfaction of the receiving Office that zation by the “competent authority”, that is to say: the concerned letter or document was mailed at least (i) in the case of a mistake in the request part of the inter- national application or in a correction thereof—by the receiving five days before the expiration of the time limit. The Office; mailing must have been by registered air mail or, (ii) in the case of a mistake in the description, claims or where surface mail would normally arrive at the desti- drawings or in a correction thereof, unless the International Pre- nation concerned within two days of mailing, by reg- liminary Examining Authority is competent under item (iii)—by istered surface mail (PCT Rule 82.1(a) to (c)). PCT the International Searching Authority; Rule 82 contains detailed provisions governing the (iii) in the case of a mistake in the description, claims or drawings or in a correction thereof, or in an amendment under situation where a letter arrives late or gets lost due to Article 19 or 34, where a demand for international preliminary irregularities in the mail service, for example, because examination has been made and has not been withdrawn and the the mail service was interrupted due to a strike. The date on which international preliminary examination shall start in provisions operate to excuse failure to meet a time accordance with Rule 69.1 has passed—by the International Pre- limit for filing a document for up to six months after liminary Examining Authority; the expiration of the time limit concerned, provided (iv) in the case of a mistake in a document not referred to in items (i) to (iii) submitted to the receiving Office, the Interna- that the document was mailed at least five days before tional Searching Authority, the International Preliminary Examin- the expiration of the time limit. In order to take advan- ing Authority or the International Bureau, other than a mistake in tage of these provisions, the mailing must have been the abstract or in an amendment under Article 19—by that Office, by registered airmail or, where surface mail would Authority or Bureau, as the case may be. normally arrive at the destination concerned within (c) The competent authority shall authorize the rectification two days of mailing, by registered surface mail. Evi- under this Rule of a mistake if, and only if, it is obvious to the competent authority that, as at the applicable date under dence is required to satisfy the Office, and a substitute paragraph (f), something else was intended than what appears in document must be filed promptly—see PCT Rule the document concerned and that nothing else could have been 82.1(b) and (c) for details. intended than the proposed rectification.

1800-51 Rev. 7, July 2008 1836 MANUAL OF PATENT EXAMINING PROCEDURE

(d) In the case of a mistake in the description, claims or 91.3 Authorization and Effect of Rectifications drawings or in a correction or amendment thereof, the competent (a) The competent authority shall promptly decide whether authority shall, for the purposes of paragraph (c), only take into to authorize or refuse to authorize a rectification under Rule 91.1 account the contents of the description, claims and drawings and, and shall promptly notify the applicant and the International where applicable, the correction or amendment concerned. Bureau of the authorization or refusal and, in the case of refusal, (e) In the case of a mistake in the request part of the interna- of the reasons therefor. The International Bureau shall proceed as tional application or a correction thereof, or in a document provided for in the Administrative Instructions, including, as referred to in paragraph (b)(iv), the competent authority shall, for required, notifying the receiving Office, the International Search- the purposes of paragraph (c), only take into account the contents ing Authority, the International Preliminary Examining Authority of the international application itself and, where applicable, the and the designated and elected Offices of the authorization or correction concerned, or the document referred to in refusal. paragraph (b)(iv), together with any other document submitted (b) Where the rectification of an obvious mistake has been with the request, correction or document, as the case may be, any authorized under Rule 91.1, the document concerned shall be rec- priority document in respect of the international application that is tified in accordance with the Administrative Instructions. available to the authority in accordance with the Administrative (c) Where the rectification of an obvious mistake has been Instructions, and any other document contained in the authority’s authorized, it shall be effective: international application file at the applicable date under para- (i) in the case of a mistake in the international applica- graph (f). tion as filed, from the international filing date; (f) The applicable date for the purposes of paragraphs (c) (ii) in the case of a mistake in a document other than the and (e) shall be: international application as filed, including a mistake in a correc- (i) in the case of a mistake in a part of the international tion or an amendment of the international application, from the application as filed—the international filing date; date on which that document was submitted. (ii) in the case of a mistake in a document other than the (d) Where the competent authority refuses to authorize a rec- international application as filed, including a mistake in a correc- tification under Rule 91.1, the International Bureau shall, upon tion or an amendment of the international application—the date request submitted to it by the applicant within two months from on which the document was submitted. the date of the refusal, and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, (g) A mistake shall not be rectifiable under this Rule if: publish the request for rectification, the reasons for refusal by the (i) the mistake lies in the omission of one or more entire authority and any further brief comments that may be submitted elements of the international application referred to in Article 3(2) by the applicant, if possible together with the international appli- or one or more entire sheets of the international application; cation. A copy of the request, reasons and comments (if any) shall (ii) the mistake is in the abstract; if possible be included in the communication under Article 20 (iii) the mistake is in an amendment under Article 19, where the international application is not published by virtue of unless the International Preliminary Examining Authority is com- Article 64(3). petent to authorize the rectification of such mistake under para- (e) The rectification of an obvious mistake need not be taken graph (b)(iii); or into account by any designated Office in which the processing or (iv) the mistake is in a priority claim or in a notice correct- examination of the international application has already started ing or adding a priority claim under Rule 26bis.1(a), where the prior to the date on which that Office is notified under rectification of the mistake would cause a change in the priority Rule 91.3(a) of the authorization of the rectification by the com- date; petent authority. (f) A designated Office may disregard a rectification that provided that this paragraph shall not affect the operation was authorized under Rule 91.1 only if it finds that it would not of Rules 20.4, 20.5, 26bis and 38.3. have authorized the rectification under Rule 91.1 if it had been the (h) Where the receiving Office, the International Searching competent authority, provided that no designated Office shall dis- Authority, the International Preliminary Examining Authority or regard any rectification that was authorized under Rule 91.1 with- the International Bureau discovers what appears to be a rectifiable out giving the applicant the opportunity to make observations, obvious mistake in the international application or another docu- within a time limit which shall be reasonable under the circum- ment, it may invite the applicant to request rectification under this stances, on the Office’s intention to disregard the rectification. Rule. Obvious mistakes in the international application or 91.2 Requests for Rectification other papers submitted by the applicant may generally A request for rectification under Rule 91.1 shall be submitted be rectified under PCT Rule 91, if the rectification is to the competent authority within 26 months from the priority authorized, as required, within the applicable time date. It shall specify the mistake to be rectified and the proposed rectification, and may, at the option of the applicant, contain a limit. Any such rectification is free of charge. The brief explanation. Rule 26.4 shall apply mutatis mutandis as to the omission of entire sheets of the international applica- manner in which the proposed rectification shall be indicated. tion cannot be rectified under PCT Rule 91. Correc-

Rev. 7, July 2008 1800-52 PATENT COOPERATION TREATY 1840 tion of such mistakes may only be made in examination shall start in accordance with PCT Rule accordance with PCT Rule 20.6. Mistakes in the 69.1 has passed; abstract, in amendments under PCT Article 19 (unless (D) by the International Bureau if the mistake is the International Preliminary Examining Authority is in any paper submitted to it other than the interna- competent to authorize the rectification under PCT tional application or amendments or corrections to the Rule 91.1(b)(iii)), or in a priority claim or in a notice application. correcting or adding a priority claim where the rectifi- cation would cause a change in the priority, also can- The request for rectification must be addressed to not be rectified under PCT Rule 91. the authority competent to authorize the rectification. It must be filed within 26 months from the priority Applicants often attempt to rely upon the priority date. application to establish a basis for obvious mistake. The International Searching Authority informs the The priority document (application) cannot be used to applicant of the decision by use of Form PCT/ISA/ support obvious mistake corrections to the descrip- 217, while the International Preliminary Examining tion, claims, or drawings or in a correction or amend- Authority informs the applicant of the decision ment thereof. The rectification is obvious only in the regarding the authorization or refusal to authorize the sense that the competent authority (i.e., the receiving rectification of obvious mistakes by use of Form PCT/ Office, the International Searching Authority, the IPEA/412. International Preliminary Examining Authority, or the < International Bureau), as appropriate, would immedi- ately realize that something else was intended other 1840 The International Searching Au- than what appears in the document and that nothing thority [R-5] else could have been intended than what is offered as rectification. Examples of obvious mistakes that are 35 U.S.C. 362. International Searching Authority and rectifiable include linguistic errors, spelling errors and International Preliminary Examining Authority. grammatical errors so long as the meaning of the dis- (a) The Patent and Trademark Office may act as an Interna- closure does not change upon entry of the rectifica- tional Searching Authority and International Preliminary Examin- ing Authority with respect to international applications in tion. Changes to chemical or mathematical formulas accordance with the terms and conditions of an agreement which would not generally be rectifiable unless they would may be concluded with the International Bureau, and may dis- be common knowledge to anyone. A missing chemi- charge all duties required of such Authorities, including the col- cal formula or missing line of text would not be con- lection of handling fees and their transmittal to the International sidered to be an obvious mistake subject to Bureau. rectification. (b) The handling fee, preliminary examination fee, and any additional fees due for international preliminary examination shall Rectifications must be authorized: be paid within such time as may be fixed by the Director.

(A) by the Receiving Office if the mistake is in 37 CFR 1.413. The United States International Searching the request; Authority. (a) Pursuant to appointment by the Assembly, the United (B) by the International Searching Authority if States Patent and Trademark Office will act as an International the mistake is in the description, claims, or drawings Searching Authority for international applications filed in the or in a correction thereof or in any paper submitted to United States Receiving Office and in other Receiving Offices as that Authority, unless the International Preliminary may be agreed upon by the Director, in accordance with the agree- Examining Authority is competent; ment between the Patent and Trademark Office and the Interna- tional Bureau (PCT Art. 16(3)(b)). (C) by the International Preliminary Examining (b) The Patent and Trademark Office, when acting as an Authority if the mistake is in the description, claims, International Searching Authority, will be identified by the full or drawings or in a correction thereof, or in an amend- title “United States International Searching Authority” or by the ment under Article 19 or 34, or in any paper submitted abbreviation “ISA/US.” (c) The major functions of the International Searching to that Authority, where a demand for Chapter II Authority include: examination has been filed and has not been with- (1) Approving or establishing the title and abstract; drawn and the date on which international preliminary (2) Considering the matter of unity of invention;

1800-53 Rev. 7, July 2008 1840.01 MANUAL OF PATENT EXAMINING PROCEDURE

(3) Conducting international and international-type 43) and (3) for international applications having an searches and preparing international and international-type search international filing date on or after January 1, 2004, reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 and the preparing of a written opinion of the International 47), and issuing declarations that no international search report will be established (PCT Article 17(2)(a)); Searching Authority (PCT Rule 43bis). (4) Preparing written opinions of the International Searching Authority in accordance with PCT Rule 43bis (when III. COMPETENT INTERNATIONAL necessary); and SEARCHING AUTHORITY (5) Transmitting the international search report and the written opinion of the International Searching Authority to the In respect of international applications filed with applicant and the International Bureau. the U.S. Receiving Office, the United States Interna- The United States Patent and Trademark Office tional Searching Authority, which is the Examining (USPTO) agreed to and was appointed by the PCT Corps of the USPTO, is competent to carry out the Assembly, to act as an International Searching international search (PCT Article 16, PCT Rules 35 Authority. As such an Authority, the primary func- and 36, 35 U.S.C. 362 and 37 CFR 1.413). tions are to establish (1) international search reports The European Patent Office >(EPO) or the Korean and (2) for international applications having an inter- Intellectual Property Office (KIPO)< may also be national filing date on or after January 1, 2004, writ- competent to carry out the international search (PCT ten opinions. See PCT Article 16 and PCT Rule 43bis. Article 16, PCT Rules 35 and 36) for international Pursuant to an agreement concluded with the Inter- applications filed with the U.S. Receiving Office. See national Bureau, the USPTO, as an International MPEP **>§§ 1840.01 - 1840.02 for further informa- Searching Authority, agreed to conduct international tion< regarding the competency of the EPO >and the searches and prepare international search reports and KIPO< as an International Searching Authority for written opinions of the International Searching applications filed by U.S. nationals or residents in the Authority, for, in addition to the United States of USPTO or in the International Bureau (IB) as receiv- America, Barbados, Brazil, Egypt, India, Israel, Mex- ing Office. ico, New Zealand, the Philippines, Saint Lucia, South ** Africa, and Trinidad and Tobago. The agreement stip- ulated the English language and specified that the 1840.01 The European Patent Office as subject matter to be searched is that which is searched an International Searching Au- or examined in United States national applications. thority [R-5]

I. TRANSMITTAL OF THE SEARCH COPY Since October 1, 1982, the European Patent Office TO THE INTERNATIONAL SEARCHING (EPO) has been available as an International Search- AUTHORITY ing Authority for PCT applications filed by U.S. The “search copy” is transmitted by the Receiving nationals or residents in the U.S. Patent and Trade- Office to the International Searching Authority (PCT mark Office (USPTO) as receiving Office or in the Article 12(1)), the details of the transmittal are pro- International Bureau (IB) as receiving Office. The vided in PCT Rule 23. choice of International Searching Authority, either the EPO >,the Korean Intellectual Property Office II. THE MAIN PROCEDURAL STEPS IN (KIPO)< or the USPTO, must be made by the appli- THE INTERNATIONAL SEARCHING cant on filing the international application. The EPO AUTHORITY has expressed the following limitations concerning its competency to act as an International Searching The main procedural steps that any international Authority. For updates or possible changes to these application goes through in the International Search- limitations, applicants should consult the PCT News- ing Authority are (1) the making of the international letter which is available in electronic form from the search (PCT Article 15), (2) the preparing of the inter- web site of the World Intellectual Property Organiza- national search report (PCT Article 18 and PCT Rule tion **>(www.wipo.int/pct/en/newslett/)<.

Rev. 7, July 2008 1800-54 PATENT COOPERATION TREATY 1840.01

I. SUBJECT MATTER THAT WILL NOT BE A61K 39 Medicinal preparations containing SEARCHED BY THE EPO antigens or antibodies A. Field of Biotechnology A61K 48 Medicinal preparations containing genetic material which is inserted The EPO is not a competent authority within the into cells of the living body to treat meaning of PCT Article 16(3)(b), and will not carry genetic diseases; Gene therapy out an international search in respect of any interna- tional application filed on or after March 1, 2002 and A01H New plants or processes for before January 1, 2004 if the application: (A) was obtaining them; plant reproduction filed with the USPTO as receiving Office by a by tissue culture techniques national or resident of the U.S.; or (B) was filed with the IB as receiving Office by a national or resident of For information, U.S. classes covering the corre- the U.S. (provided the application did not also iden- sponding subject matter are listed below: tify as an applicant at its time of filing a national or resident of a European Patent Convention (EPC) Con- tracting State),where such application contains one or 424 Drug, bio-affecting and body treating more claims relating to the field of biotechnology as compositions defined by the following units of the International Patent Classification: 435 Chemistry: molecular biology and microbiology 436 Chemistry: analytical and immuno- C12M Apparatus for enzymology or logical testing microbiology 514 Drug, bio-affecting and body treating C12N Micro-organisms or enzymes; compositions compositions thereof 530 Chemistry: natural resins or deriva- C12P Fermentation or enzyme-using tives; peptides or proteins; lignins or processes to synthesise a desired reaction products thereof chemical compound or composi- tion or to separate optical isomers 536 Organic compounds–part of the class from a racemic mixture 532-570 series C12Q Measuring or testing processes 800 Multicellular living organisms and involving enzymes or micro- unmodified parts thereof organisms; compositions or test 930 Peptide or protein sequence papers therefor; processes of pre- paring such compositions; condi- tion-responsive control in B. Field of Business Methods microbiological or enzymological The EPO is not a competent authority within the processes meaning of PCT Article 16(3)(b) and will not carry C07K Peptides out an international search in respect of any interna- tional application filed on or after March 1, 2002 if G01N 33/50 Chemical analysis of biological the application: (A) is filed with the USPTO as receiv- (including material, e.g. blood, urine; testing ing Office by a national or resident of the U.S.; or (B) subdivisions) involving biospecific ligand bind- is filed with the IB as receiving Office by a national or ing methods; immunological test- resident of the U.S. (provided the application does not ing also identify as an applicant at its time of filing a

1800-55 Rev. 7, July 2008 1840.01 MANUAL OF PATENT EXAMINING PROCEDURE national or resident of an EPC Contracting State), where such application contains one or more claims relating to the field of business methods as defined by 705 Data processing: financial, business prac- the following units of the International Patent Classi- tice, management, or cost/price determi- fication: nation

The U.S. Receiving Office will forward all interna- **>G06Q Data processing systems or meth- tional applications to the EPO as ISA if so indicated ods, specially adapted for adminis- by the applicant and the EPO will perform a compe- trative, commercial, financial, tence check on the search copy. Where the EPO finds managerial, supervisory or fore- that it was indicated as the ISA but the application casting purposes; systems or meth- falls under the limitations indicated above, the EPO ods specially adapted for will ex officio change the ISA from EPO to the administrative, commercial, finan- USPTO and will inform the applicant, the Interna- cial, managerial, supervisory or tional Bureau and the USPTO accordingly. The EPO forecasting purposes, not other- will transfer moneys received as the search fee as well wise provided for as the search copy to the USPTO. G06Q 10/00 Administration, e.g., office auto- mation or reservations; Manage- C. Declaration Under PCT Article 17(2)(a)(i) ment, e.g., resource or project It should be noted that even when the European management Patent Office is a competent International Searching G06Q 30/00 Commerce, e.g., marketing, shop- Authority (for example, if one or more applicants is a ping, billing, auctions or e-com- resident or national of an EPC contracting state and merce the application was filed with the International Bureau as receiving Office), the EPO nonetheless will G06Q 40/00 Finance, e.g., banking, investment not search, by virtue of PCT Article 17(2)(a)(i), any or tax processing; Insurance, e.g., international application to the extent that it considers risk analysis or pensions that the international application relates to subject matter set forth in PCT Rule 39.1. G06Q 50/00 Systems or methods specially adapted for a specific business sec- II. FEES FOR SERVICES OF THE ISA/EP tor, e.g., health care, utilities, tour- ism or legal services The international search fee for the European Patent Office must be paid to the USPTO as a Receiv- G06Q 90/00 Systems or methods specially ing Office within one month from the time of filing adapted for administrative, com- the international application. The search fee for the mercial, financial, managerial, European Patent Office is announced weekly in the supervisory or forecasting pur- Official Gazette in United States dollars. The search poses, not involving significant fee will change as costs and exchange rates require. If data processing exchange rates fluctuate significantly, the fee may G06Q 99/00 Subject matter not provided for in change frequently. Notice of changes will be pub- other groups of this subclass< lished in the Official Gazette shortly before the effec- tive date of any change. For information, the U.S. class covering the corre- If the European Patent Office as the International sponding subject matter is listed below: Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in PCT Rule 13, the European Patent Office will invite applicants to

Rev. 7, July 2008 1800-56 PATENT COOPERATION TREATY 1840.02 timely pay directly to it an additional search fee in The international search fee for the KIPO must be Euros for each additional invention. paid to the USPTO as a receiving Office within one month from the time of filing the international appli- > cation. The search fee for the KIPO is announced 1840.02 The Korean Intellectual Proper- weekly in the Official Gazette in United States dol- ty Office as an International lars. The search fee will change as costs and exchange Searching Authority [R-5] rates require. If exchange rates fluctuate significantly, the fee may change frequently. Notice of changes will Since January 1, 2006, the Korean Intellectual be published in the Official Gazette shortly before the Property Office (KIPO) has been available as an Inter- effective date of any change. national Searching Authority for PCT applications filed by U.S. nationals or residents in the U.S. Patent If the KIPO as the International Searching Author- and Trademark Office (USPTO) as receiving Office or ity considers that the international application does in the International Bureau (IB) as receiving Office. not comply with the requirement of unity of invention The choice of International Searching Authority, as set forth in PCT Rule 13, the KIPO may invite either the KIPO, the European Patent Office (EPO) or applicants to timely pay directly to it an additional the USPTO, must be made by the applicant on filing search fee in Korean won for each additional inven- the international application. tion.<

1800-57 Rev. 7, July 2008 1842 MANUAL OF PATENT EXAMINING PROCEDURE

1842 Basic Flow Under the PCT [R-2] *> Figure 1842_1.Reformed PCT System

<

Rev. 7, July 2008 1800-58 PATENT COOPERATION TREATY 1842

I. MEASURING TIME LIMITS UNDER THE V. DEADLINE FOR FILING THE DEMAND PCT > Time limits under the PCT are measured from the A. International Applications Having a Filing “priority date” of the application. The priority date for Date On or After January 1, 2004 the purposes of computing time limits is defined in PCT Article 2(xi). Where an international application International preliminary examination is optional, does not contain any priority claim under PCT Article but if a demand for international preliminary exami- 8, the international filing date is considered to be the nation is filed in an international application having priority date. an international filing date on or after January 1, 2004, it must be filed prior to the expiration of which- II. INTERNATIONAL FILING DATE ever of the following periods expires later: (A) three months from the date of transmittal to the applicant of An international application under the Patent Coop- the international search report and the written opin- eration Treaty is generally filed within 12 months ion; or (B) 22 months from the priority date. Other- after the filing of the first application directed to the wise the demand shall be considered as if it had not same subject matter, so that priority may be claimed been submitted and the International Preliminary under PCT Article 8 and Article 4 of the Stockholm Examining Authority shall so declare. See PCT Rule 54. In order to take advantage of a national phase Act of the Paris Convention for the Protection of entry time limit of at least 30 months from the priority Industrial Property. PCT Article 11 specifies the ele- date in relation to all States designated in the interna- ments required for an international application to be tional application, it may be necessary to file a accorded an international filing date. demand before the expiration of 19 months from the priority date. See subsection VI.A., below. III. ESTABLISHMENT OF THE INTERNA- TIONAL SEARCH REPORT >AND WRIT- B. International Applications Having a Filing TEN OPINION OF THE INTERNATIONAL Date Before January 1, 2004< SEARCHING AUTHORITY< International Preliminary Examination is optional, As provided in PCT Rule 42 >and PCT Rule and a Demand for International Preliminary Examina- 43bis<, the time limit for establishing the interna- tion may be filed at any time. However, in order to tional search report (or a declaration that no interna- take advantage of a national phase entry time limit of tional search report will be established) >and, for at least 30 months from the priority date in relation to international applications having an international fil- all States designated in the international application, it ing date on or after January 1, 2004, the written opin- may be necessary to file a demand before the expira- ion,< is three months from the receipt of the search tion of 19 months from the priority date. >See subsec- copy by the International Searching Authority, or nine tion VI.A., below.< months from the priority date, whichever time limit expires later. VI. DEADLINE FOR FILING COPY, TRANS- LATION, AND FEE IN NATIONAL STAGE IV. INTERNATIONAL PUBLICATION OFFICES

Under PCT Article 21, the international publication A listing of all national and regional offices, and the of the international application by the International corresponding time limits for entering the national Bureau shall be effected promptly after the expiration stage following PCT Chapter I and PCT Chapter II, of 18 months from the priority date of that applica- may be found on WIPO’s web site at: http:// tion. www.wipo.int/pct/en/index.html.

1800-59 Rev. 7, July 2008 1843 MANUAL OF PATENT EXAMINING PROCEDURE

A. National Stage Entry Following PCT Chapter whereas, for the other claims, the said report shall be established I as provided in Article 18. (3)(a) If the International Searching Authority considers that PCT Article 22(1) was amended, effective April 1, the international application does not comply with the require- 2002, to specify that the national stage requirements ment of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. The International are due not later than at the expiration of 30 months Searching Authority shall establish the international search report from the priority date if no demand has been filed. on those parts of the international application which relate to the Prior to April 1, 2002, PCT Article 22(1) specified invention first mentioned in the claims (“main invention”) and, that these requirements were due not later than at the provided the required additional fees have been paid within the expiration of 20 months from the priority date. See prescribed time limit, on those parts of the international applica- http://www.wipo.int/pct/en/index.html for a list of the tion which relate to inventions in respect of which the said fees were paid. Contracting States that have not yet changed their (b) The national law of any designated State may provide national laws to adopt the 30 month period now set that, where the national Office of the State finds the invitation, forth in PCT Article 22(1). referred to in subparagraph (a), of the International Searching Authority justified and where the applicant has not paid all addi- B. National Stage Entry Following PCT Chapter tional fees, those parts of the international application which con- II sequently have not been searched shall, as far as effects in the State are concerned, be considered withdrawn unless a special fee If the election of a Contracting State has been is paid by the applicant to the national Office of that State. effected by filing a demand prior to the expiration of PCT Rule 43bis. the 19th month from the priority date, the provisions Written Opinion of the International Searching Authority of Article 39 apply rather than the provisions of Arti- cle 22. The deadline for filing the national stage 43bis.1.Written Opinion requirements under PCT Article 39(a) is 30 months (a) Subject to Rule 69.1(b-bis), the International Searching from the priority date, but any national law may fix Authority shall, at the same time as it establishes the international time limits which expire later than the time limit pro- search report or the declaration referred to in Article 17(2)(a), vided in PCT Article 39(a). See PCT Article 39(b) establish a written opinion as to: and the list of time limits found on WIPO’s web site at (i) whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industri- http://www.wipo.int/pct/en/index.html. ally applicable; (ii) whether the international application complies with 1843 The International Search [R-6] the requirements of the Treaty and these Regulations in so far as checked by the International Searching Authority. PCT Article 17. The written opinion shall also be accompanied by such Procedure Before the International Searching Authority other observations as these Regulations provide for. **> (1) Procedure before the International Searching Authority (b) For the purposes of establishing the written opinion, shall be governed by the provisions of this Treaty, the Regula- Articles 33(2) to (6) and 35(2) and (3) and Rules 43.4, 43.6bis, 64, tions, and the agreement which the International Bureau shall con- 65, 66.1(e), 66.7, 67, 70.2(b) and (d), 70.3, 70.4(ii), 70.5(a), 70.6 clude, subject to this Treaty and the Regulations, with the said to 70.10, 70.12, 70.14 and 70.15(a) shall apply mutatis mutandis.< Authority. (c) The written opinion shall contain a notification inform- (2)(a) If the International Searching Authority considers: ing the applicant that, if a demand for international preliminary (i) that the international application relates to a subject examination is made, the written opinion shall, under Rule matter which the International Searching Authority is not 66.1bis(a) but subject to Rule 66.1bis(b), be considered to be a required, under the Regulations, to search, and in the particular written opinion of the International Preliminary Examining case decides not to search, or Authority for the purposes of Rule 66.2(a), in which case the (ii) that the description, the claims, or the drawings, fail applicant is invited to submit to that Authority, before the expira- to comply with the prescribed requirements to such an extent that tion of the time limit under Rule 54bis.1(a), a written reply a meaningful search could not be carried out, the said Authority together, where appropriate, with amendments. shall so declare and shall notify the applicant and the International The international search is a thorough, high quality Bureau that no international search report will be established. (b) If any of the situations referred to in subparagraph (a) search of the most relevant resources. Upon comple- is found to exist in connection with certain claims only, the inter- tion of the international search an international search national search report shall so indicate in respect of such claims, report is established. The report provides information

Rev. 7, July 2008 1800-60 PATENT COOPERATION TREATY 1843.01 on the relevant prior art to the applicant, the public, that it is or is not obvious), provided that the making available to the designated Offices, and the International Prelimi- the public occurred prior to the international filing date. nary Examining Authority. (b) When any written disclosure refers to an oral disclosure, use, exhibition, or other means whereby the contents of the writ- PCT Article 15 describes the objective of the inter- ten disclosure were made available to the public, and such making national search, i.e., to uncover relevant prior art, and available to the public occurred on a date prior to the international also describes the international-type search. It should filing date, the international search report shall separately mention be noted generally that an international-type search is that fact and the date on which it occurred if the making available to the public of the written disclosure occurred on a date which is performed on all U.S. national applications filed after the same as, or later than, the international filing date. June 1, 1978. (c) Any published application or any patent whose publica- Some major amendments to the PCT Rules became tion date is the same as, or later than, but whose filing date, or, effective January 1, 2004. One of the consequences of where applicable, claimed priority date, is earlier than the interna- these amendments is that for all international applica- tional filing date of the international application searched, and which would constitute relevant prior art for the purposes of Arti- tions having an international filing date on or after cle 15(2) had it been published prior to the international filing January 1, 2004, and subject to PCT Rule 69.1(b-bis), date, shall be specially mentioned in the international search the International Searching Authority establishes a report. written opinion of the International Searching Author- ity at the same time it establishes either the interna- 33.2.Fields to Be Covered by the International Search tional search report or the declaration of non- (a) The international search shall cover all those technical establishment of the international search report under fields, and shall be carried out on the basis of all those search files, PCT Article 17(2)(a). (For applications having an which may contain material pertinent to the invention. international filing date prior to January 1, 2004, the (b) Consequently, not only shall the art in which the inven- tion is classifiable be searched but also analogous arts regardless International Searching Authority establishes an inter- of where classified. national search report but does not establish a written (c) The question what arts are, in any given case, to be opinion.) The written opinion indicates whether the regarded as analogous shall be considered in the light of what claimed invention appears to be novel, to involve an appears to be the necessary essential function or use of the inven- inventive step (to be non-obvious), and to be industri- tion and not only the specific functions expressly indicated in the ally applicable. The written opinion also indicates any international application. (d) The international search shall embrace all subject matter defects in the form or content of the international that is generally recognized as equivalent to the subject matter of application under the PCT Articles or Regulations. In the claimed invention for all or certain of its features, even addition, the written opinion includes any observa- though, in its specifics, the invention as described in the interna- tions that the International Searching Authority tional application is different. wishes to make on the clarity of the claims, the 33.3.Orientation of the International Search description, and the drawings, or on the question of whether the claims are fully supported by the descrip- (a) International search shall be made on the basis of the tion. claims, with due regard to the description and the drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed. 1843.01 Prior Art for Chapter I Process- (b) In so far as possible and reasonable, the international ing [R-6] search shall cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be PCT Rule 33. directed after they have been amended. Relevant Prior Art for the International Search PCT Rule 64. Prior Art for International Preliminary Examination 33.1.Relevant Prior Art for the International Search 64.1.Prior Art (a) For the purposes of Article 15(2), relevant prior art shall consist of everything which has been made available to the public (a) For the purposes of Article 33(2) and (3), everything anywhere in the world by means of written disclosure (including made available to the public anywhere in the world by means of drawings and other illustrations) and which is capable of being of written disclosure (including drawings and other illustrations) assistance in determining that the claimed invention is or is not shall be considered prior art provided that such making available new and that it does or does not involve an inventive step (i.e., occurred prior to the relevant date.

1800-61 Rev. 7, July 2008 1843.01 MANUAL OF PATENT EXAMINING PROCEDURE

**> assistance in determining that the claimed invention is (b) For the purposes of paragraph (a), the relevant date shall or is not new and that the claimed invention does or be: does not involve an inventive step (i.e., that it is or is (i) subject to items (ii) and (iii), the international filing not obvious), and if the making available to the public date of the international application under international prelimi- nary examination; occurred prior to the international filing date for the (ii) where the international application under international purposes of the international search report and prior to preliminary examination claims the priority of an earlier applica- the earliest validly claimed priority date for the pur- tion and has an international filing date which is within the prior- poses of the written opinion of the International ity period, the filing date of such earlier application, unless the Searching Authority. For further details, see PCT International Preliminary Examining Authority considers that the priority claim is not valid; Rules 33, 43bis.1(b) and 64. (iii)where the international application under international A written disclosure, that is, a document, is preliminary examination claims the priority of an earlier applica- regarded as made available to the public if, at the rele- tion and has an international filing date which is later than the date on which the priority period expired but within the period of two vant date, it was possible for members of the public to months from that date, the filing date of such earlier application, gain access to the content of the document and to unless the International Preliminary Examining Authority consid- acquire possession of the content of the document, ers that the priority claim is not valid for reasons other than the and there was no bar of confidentiality restricting the fact that the international application has an international filing use or dissemination of knowledge gained thereby. date which is later than the date on which the priority period expired. < Where the document only provides the month or the year, but not the specific date, which the document 64.2.Non-Written Disclosures was made available to the public, the content of the In cases where the making available to the public occurred by document is presumed to have been made available to means of an oral disclosure, use, exhibition or other non-written the public on the last day of that month or that year, means (“non-written disclosure”) before the relevant date as defined in Rule 64.1(b) and the date of such non-written disclo- respectively, unless evidence is provided to prove oth- sure is indicated in a written disclosure which has been made erwise. available to the public on a date which is the same as, or later than, Prior art disclosure on the Internet or on an on-line the relevant date, the non-written disclosure shall not be consid- ered part of the prior art for the purposes of Article 33(2) and (3). database is considered in the same manner as other Nevertheless, the international preliminary examination report forms of written disclosure. Information disclosed on shall call attention to such non-written disclosure in the manner the Internet or an on-line database is considered to be provided for in Rule 70.9. publicly available as of the date the disclosure was 64.3.Certain Published Documents publicly posted. Where the examiner obtains an elec- In cases where any application or any patent which would con- tronic document that establishes the publication date stitute prior art for the purposes of Article 33(2) and (3) had it for the Internet disclosure, he/she should make a been published prior to the relevant date referred to in Rule 64.1 printout of this document, which must mention both was published on a date which is the same as, or later than, the rel- the URL of the relevant Internet disclosure and the evant date but was filed earlier than the relevant date or claimed date of publication of that relevant Internet disclosure. the priority of an earlier application which had been filed prior to the relevant date, such published application or patent shall not be The examiner must then cite this printout in the inter- considered part of the prior art for the purposes of Article 33(2) national search report as an “L” document and cite the and (3). Nevertheless, the international preliminary examination relevant Internet disclosure according to the relevance report shall call attention to such application or patent in the man- of its content (“X”, “Y”, “A”) and according to the ner provided for in Rule 70.10. date as established (“X”, “Y”, “A”, “P,X”, “P,Y”, The objective of the international search is to dis- “P,A”, “E”, etc.). See MPEP § 1844.01 **>, subsec- cover relevant prior art (PCT Article 15(2)). “Prior tion VII.< Where the examiner is unable to establish art” consists of everything which has been made the publication date of the relevant Internet disclosure available to the public anywhere in the world by and it is relevant to the inventive step and/or novelty means of written disclosure (including drawings and of the claimed invention, he/she should cite it in the other illustrations); it is relevant in respect of the international search report as a category “L” docu- international application if it is capable of being of ment for those claims which it would have affected if

Rev. 7, July 2008 1800-62 PATENT COOPERATION TREATY 1843.01 it were published in time, giving the date the docu- though they do not meet the definition of prior art in ment was printed out as its publication date. the prior U.S. national application. A further objective of the international search is to avoid, or at least mini- Examiners are also encouraged to cite prior art that mize, additional searching at the national stage. might be of assistance in determining whether other requirements are fulfilled, such as sufficient support The international search is made on the basis of the of the claims by the description and industrial applica- claims, with due regard to the description and the bility. The examiner should also note any documents drawings (if any) contained in the international appli- that may be of importance for other reasons, such as cation (PCT Article 15(3)) and should cover the entire documents putting doubt upon the validity of any pri- subject matter to which the claims are directed or to ority claimed, documents contributing to a better or which they might reasonably be expected to be more correct understanding of the claimed invention, directed after they have been amended (PCT Rule and documents illustrating the technological back- 33.3(b)). ground, but the examiner should not spend time in The relevant date for the purpose of considering searching for these documents, nor the consideration prior art for the purposes of establishment of the writ- of such matters unless there is a special reason for ten opinion of the International Searching Authority is doing so in a particular case. Documents which do not defined in PCT Rule 64.1(b) as the international filing qualify as prior art because they post-date the claimed date or, where the international application contains a invention may nevertheless be cited to show a univer- * claim for priority, **>the date provided in PCT Rule sal fact, such as characteristics or properties of a 64.1(b)(ii)-(iii). See MPEP § 1878.01(a).< material, or a specific scientific fact, or to show the In establishment of the written opinion, when deter- level of ordinary skill in the art. Furthermore, examin- mining whether there is inventive step, account ers must recognize that different designated Offices should be taken of what the applicant acknowledges may have different definitions of what is the effective in his/her description as known. Such admissions date of prior art. Accordingly, when performing the should be regarded as correct and used when consid- search, examiners should be mindful to pick out and ering whether the claimed invention lacks novelty select for citation, where appropriate, prior art which and/or inventive step where appropriate. may be relevant in offices other than the one in which A nonwritten disclosure such as an oral disclosure, they are situated. However, the examiner need not use, exhibition or other means of disclosure is not rel- expand the search beyond the standard search parame- evant prior art for the purposes of the international ters to discover such art. Where the search has been search unless it is substantiated by a written disclo- performed and such potentially relevant prior art has sure made available to the public prior to the interna- been identified, examiners are encouraged to, for tional filing date and it is the written disclosure which example, cite all relevant art published prior to the constitutes the prior art. However, if the date on which international filing date even if that art and the inter- the written disclosure was made available to the pub- national application under consideration have com- lic was on or after the filing date of the international mon applicants and/or inventors. As such, if the application under consideration, the search report examiner is basing the international search on a prior should separately mention that fact and the date on search performed in a prior related U.S. national which the written disclosure was available, even application, it may be necessary for the examiner to though such a written disclosure does not meet the review the prior art published within the time period definition of relevant prior art in the international of the one year preceding the filing date of the prior phase, so long as the non-written disclosure was made U.S. application for any written disclosures based on available to the public on a date prior to the interna- the applicant’s own work that may have been pub- tional filing date since such a non-written disclosure lished within that time period. Any such documents may be considered to be prior art under national law are considered prior art in an international application in the national phase. See PCT Rules 33.1(b), 64.2 and are cited on the international search report even and 70.9.

1800-63 Rev. 7, July 2008 1843.02 MANUAL OF PATENT EXAMINING PROCEDURE

DOCUMENTS AND DATABASES SEARCHED 1843.02 < Certain Subject Matter Need BY THE INTERNATIONAL SEARCHING Not Be Searched [R-2] AUTHORITY > The International Searching Authority must PCT Rule 39. endeavor to discover as much of the relevant prior art Subject Matter under Article 17(2)(a)(i) as its facilities permit (PCT Article 15(4)), and, in any case, must consult the so-called “minimum documen- 39.1.Definition tation” (PCT Rule 34). No International Searching Authority shall be required to search an international application if, and to the extent to which, Even though completeness should be the ultimate its subject matter is any of the following: goal of the international search, this goal may at times (i) scientific and mathematical theories, be difficult to obtain, because of such factors as text (ii) plant or animal varieties or essentially biological pro- search limitations and the inevitable imperfections of cesses for the production of plants and animals, other than micro- any classification system and its implementation. The biological processes and the products of such processes, examiner therefore consults the appropriate minimum (iii)schemes, rules or methods of doing business, performing documentation and the most relevant search resources purely mental acts or playing games, (iv) methods for treatment of the human or animal body by for the technology, including databases listed in the surgery or therapy, as well as diagnostic methods, U.S. Search Guidance index (available through the (v) mere presentations of information, USPTO Intranet web site), and organizes the search (vi) computer programs to the extent that the International effort and utilizes the search time in such a manner as Searching Authority is not equipped to search prior art concerning such programs. to reduce to a minimum the possibility of failing to discover existing highly relevant prior art, such as art PCT Rule 66. that fully anticipates any claims. Procedure Before the International Preliminary Examining Authority When conducting the search, it may be necessary to make use of the Internet as a search tool. Where the 66.1.Basis of the International Preliminary Examination international application has not yet been published at ***** the time of the search, there exists the danger that (e) Claims relating to inventions in respect of which no search terms used in the search on non-secure Internet international search report has been established need not be the search engines or in databases available on the Inter- subject of international preliminary examination. net may be observed by third parties. Accordingly, all web sites must be treated as non-secure unless the PCT Rule 67. Subject Matter Under Article 34(4)(a)(i) Office has a commercial arrangement with a service provider in order to maintain confidentiality and a 67.1.Definition secure connection to that web site. Consequently, No International Preliminary Examining Authority shall be extreme caution must be exercised when using the required to carry out an international preliminary examination on Internet as a search tool where (as in most cases) the an international application if, and to the extent to which, its sub- ject matter is any of the following: international application has not yet been published. Where a relevant database is accessible via the Inter- (i) scientific and mathematical theories, net, but an alternative secure connection to the same (ii) plant or animal varieties or essentially biological pro- cesses for the production of plants and animals, other than micro- database is accessible, the secure connection must be biological processes and the products of such processes, used. Where no secure connection to a database on the (iii)schemes, rules, or methods of doing business, perform- Internet is available, the search may be conducted on ing purely mental acts, or playing games, the Internet using generalized search terms represent- (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods, ing combinations of features that relate to the claimed (v) mere presentations of information, invention, which have already been shown to exist in (vi) computer programs to the extent that the International the state of the art. Preliminary Examining Authority is not equipped to carry out an

Rev. 7, July 2008 1800-64 PATENT COOPERATION TREATY 1843.04 international preliminary examination concerning such pro- that the lack of the international search report in such grams.< case will not have, in itself, any influence on the The USPTO has declared that it will search and validity of the international application and the latter’s examine, in international applications, all subject mat- processing will continue, including its communication ter searched and examined in U.S. national applica- to the designated Offices. tions. However under PCT *>Rules< 39, >43bis.1(b), 1843.03 No Search Required if Claims 66.1(e) and 67.1,< no International Searching Author- ity is required to perform an international search >or Are Unclear [R-6] to establish a written opinion concerning novelty, If the International Searching Authority considers inventive step and industrial applicability< where the that the description, the claims, or the drawings fail to international application relates to any of the follow- comply with the prescribed requirements to such an ing subject matters: extent that a meaningful search could not be carried (A) Scientific and mathematical theories; out, it may declare that it will not establish a search (B) Plant or animal varieties or essentially biolog- report (PCT Article 17(2)(a)(ii)). Further, for applica- ical processes for the production of plants and ani- tions having an international filing date on or after mals, other than microbiological processes and the January 1, 2004, if the International Searching products of such processes; Authority considers that the description, claims, or (C) Schemes, rules or methods of doing business, drawings are so unclear, or the claims are so inade- performing purely mental acts or playing games; quately supported by the description that no meaning- (D) Methods for treatment of the human or animal ful opinion can be formed on the novelty, inventive body by surgery or therapy, as well as diagnostic step (non-obviousness), or industrial applicability of methods; the claimed invention, the Authority shall not go into (E) Mere presentation of information; and these issues in its written opinion with regard to the (F) Computer programs to the extent ** the said claims so affected (PCT Rules 43bis.1(b) and Authority is not equipped to search prior art **>con- *>66.1(e)<). For example, the examiner may deter- cerning such programs<. mine that a meaningful search cannot be carried out or that no meaningful opinion can be formed in certain >See PCT Rule 39. In addition, the examiner is cases where a nucleotide and/or amino acid sequence not required to search the international application, to listing is not furnished in accordance with the pre- the extent that a meaningful search cannot be carried scribed standard or in a computer readable form. See out, in certain cases where a nucleotide and/or amino Administrative Instructions Section 513(c) and MPEP acid sequence listing is not furnished in accordance § 1848. Further, the examiner may determine that a with the prescribed standard or in a computer readable meaningful search cannot be carried out or that no form. See Administrative Instructions Section 513(c). meaningful opinion can be formed for improper mul- However, the U.S. Patent and Trademark Office has tiple dependent claims (see PCT Rule 6.4(a)). declared that it will search and examine all subject matter searched and examined in U.S. national appli- 1843.04 Procedure for Claims Not Re- cations.< quired To Be Searched and for The applicant considering the filing of an interna- Claims That Are Unclear [R-6] tional application may be well advised not to file one if the subject matter of the application falls into one of The International Searching Authority (ISA) may the above mentioned areas. If he or she still does file, declare that a meaningful search cannot be carried out the International Searching Authority may declare with respect to some of the claims only and/or that that it will not establish an international search report. only certain claims relate to subject matter which the Accordingly, applicant should take into consideration ISA is not required to and has decided not to search. which International Searching Authority (e.g., Euro- Where only some of the claims will not be searched, pean Patent Office) he or she selects to conduct the the ISA searches the remaining claims of the interna- international search. It is to be noted, nevertheless, tional application. Any unsearched claims and the rea-

1800-65 Rev. 7, July 2008 1843.05 MANUAL OF PATENT EXAMINING PROCEDURE sons why those claims have not been searched are no opinion with regard to novelty, inventive step or indicated in Box >No.< II of the international search industrial applicability will be established with regard report (Form PCT/ISA/210). to those claims. In most instances it will be sufficient If the examiner determines that none of the claims for the examiner to (A) indicate that no international will be searched, the examiner declares that no search search report has been established for the relevant report will be established using *>Form< PCT/ISA/ claims as the reason for not establishing an opinion on 203. The lack of the international search report will novelty, inventive step, and industrial applicability not, in itself, have any influence on the validity of the and (B) refer to the international search report or dec- international application and the latter’s processing laration of non-establishment of the international will continue, including its communication to the des- search report for further details. ignated Offices. If the international application cites a document 1843.05 Time Limit for Establishing the that is not published or otherwise not accessible to the International Search Report ISA and the document appears essential to a correct and the Written Opinion of the understanding of the invention to the extent that a International Searching Author- meaningful international search would not be possible ity [R-6] without knowledge of the content of that document, the ISA may postpone the search and request that the applicant first provide first a copy of the document, if Publication of the international application occurs possible to do so within the time limits for the prepa- at 18 months from the earliest priority date or, where ration of the international search report of the ISA there is no priority date, 18 months from the interna- under the PCT. If no copy of the document is tional filing date. The international search report is received, the ISA should first attempt to carry out the subject to international publication. The written opin- international search and then, if necessary, indicate ion is not published but is made available to the public that no meaningful search could be carried out in total after the expiration of 30 months from the priority or that the search needed to be restricted. date. See PCT Rule 44ter. The Office goal is to have the search report and, if the application has an interna- For international applications having an interna- tional filing date on or after January 1, 2004, the writ- tional filing date on or after January 1, 2004, and sub- ten opinion, mailed in sufficient time to reach the ject to PCT Rule 69.1(b-bis), the ISA establishes the International Bureau by the end of 16 months from written opinion of the International Searching Author- the priority date or 9 months from the filing date if no ity (Form PCT/ISA/237) at the same time it estab- priority claim is made. This is necessary since the lishes either the international search report (Form technical preparations for publication are completed PCT/ISA/210) or the declaration of non-establishment by 17.5 months from the earliest priority date. In view of the international search report (Form PCT/ISA/ of the treaty mandated publication and the time 203). However, if the ISA determines that for any or needed for technical preparation, the Office sets time all claims (A) the international application relates to periods for completion of the search report and the subject matter for which it is not required to establish written opinion which will ensure sufficient time to a written opinion concerning novelty, inventive step complete internal processing and review and achieve and industrial applicability, (B) the description, receipt of the search report and the written opinion at claims, or drawings, are so unclear, or the claims are the International Bureau by the 16th month from the so inadequately supported by the description, that no priority date. See PCT Rule 42.1 and 43bis.1(a). meaningful opinion can be formed on the novelty, inventive step, or industrial applicability, of the Thus, as a matter of practice, each Technology Cen- claimed invention, or (C) the subject matter of the ter tends to set its internal time period for completion claims relates to inventions for which no international of the search report and the written opinion to meet search report will be established, the ISA indicates, in the time limits set by the International Application Box >No.< III of the written opinion of the Interna- Processing Division. The International Application tional Searching Authority (Form PCT/ISA/237), that Processing Division sets its time for completion to

Rev. 7, July 2008 1800-66 PATENT COOPERATION TREATY 1844 ensure adequate time for review, corrections (where to the International Bureau contains two main sheets necessary) and mailing. (“first sheet” and “second sheet”) to be used for all ** searches. These two main sheets are intended for The Patent Cooperation Treaty is extremely date recording the important features of the search such as sensitive and for that reason, examiners are encour- the fields searched and for citing documents revealed aged to complete the international search and prepare by the search. The printed international search report the search report, and in applications having an inter- form also contains five optional continuation sheets national filing date filed on or after January 1, 2004, for use where necessary. They are the: “continuation the written opinion, promptly after receipt. Monitor- of first sheet (1),” “continuation of first sheet (2),” ing and tracking procedures have been devised to “continuation of first sheet (3),” “continuation of sec- minimize the risk of late search reports and written ond sheet” and “ annex,” respectively. opinions and/or date of transmission thereof. The patent family annex sheet is not currently used by 1844 The International Search Report the United States International Searching Authority since patent family information is not readily avail- [R-6] able to the examiner. The “continuation of first sheet PCT Article 18. (1)” is to be used only when the international applica- The International Search Report tion includes a nucleotide and/or amino acid sequence and indicates the basis on which the international (1) The international search report shall be established search was carried out, since the relevant listings or within the prescribed time limit and in the prescribed form. related tables may be filed or furnished at different (2) The international search report shall, as soon as it has been established, be transmitted by the International Searching times and in different forms. The “continuation of Authority to the applicant and the International Bureau. first sheet (2)” is used where an indication is made on (3) The international search report or the declaration referred the first sheet that claims were found unsearchable to in Article 17(2)(a) shall be translated as provided in the Regula- (item 2) and/or unity of invention is lacking (item 3). tions. The translations shall be prepared by or under the responsi- The relevant indications must then be made on that bility of the International Bureau. continuation sheet. The “continuation of first sheet The results of the international search are recorded (3)” is to contain the text of the abstract where an in the international search report (Form PCT/ISA/ abstract or an amended abstract has been established 210), which, together with the written opinion of the by the International Searching Authority (item 5) and International Searching Authority (Form PCT/ISA/ an indication to that effect is made on the first sheet. 237) for applications having an international filing The “continuation of second sheet” is to be used date on or after January 1, 2004, is transmitted with where the space on the second sheet is insufficient for Form PCT/ISA/220. The search report will be pub- the citation of documents. The form also includes an lished by the International Bureau and, together with “extra sheet” which may be used whenever additional the written opinion of the International Searching space is required to complete information from the Authority, will serve as a basis for examination of the other sheets. international application by the designated Offices and the International Preliminary Examining Author- It is to be noted that only the “second sheet”, the ity. “continuation of second sheet” (if any), the “continua- The search report is only for the purpose of identi- tion of first sheet (2)” (if any), and the “extra sheet” fying prior art and should not contain any expressions (if any), as well as any separate sheet with informa- of opinion, reasoning, argument or explanation as to tion on members of patent families, will be the subject any cited prior art. However, in applications having an of international publication, as the “first sheet,” “con- international filing date on or after January 1, 2004, tinuation of first sheet (1)” (if any), and the “continua- such comments should be included in the written tion of first sheet (3)” (if any) contain only opinion of the International Searching Authority. information which will already appear on the front The printed international search report form (Form page of the publication of the international application PCT/ISA/210) to be transmitted to the applicant and (PCT Rule *>48.2(b)<).

1800-67 Rev. 7, July 2008 1844.01 MANUAL OF PATENT EXAMINING PROCEDURE

CONTENTS OF THE INTERNATIONAL B. Box 1b – Rectification of an Obvious Mistake SEARCH REPORT Where the application includes the rectification of The international search report (PCT Rule 43) con- an obvious mistake authorized by or notified to the tains, among other things, the citations of the docu- International Searching Authority under PCT Rule 91, ments considered to be relevant (PCT Rule 43.5 and box 1b of the first sheet is checked. The authorization Administrative Instructions Section 503), the classifi- or notification will generally be indicated on a Notifi- cation of the subject matter of the invention (PCT cation of Decision Concerning Request for Rectifica- Rule 43.3 and Administrative Instructions Section tion (Form PCT/RO/109 or PCT/ISA/217) (see MPEP 504) and an indication of the fields searched (PCT § 1836). Rule 43.6). Citations of particular relevance must be C. Box 1c And Box No. I – Nucleotide and/or specially indicated (Administrative Instructions Sec- Amino Acid Sequence Listings and Related tion 505); citations of certain *>special< categories of Tables< documents are also indicated (Administrative Instruc- tions Section 507); citations which are not relevant to Where the application discloses any nucleotide and/ all the claims must be cited in relation to the claim or or amino acid sequence, box *>1c< of the first sheet is claims to which they are relevant (Administrative checked and Box No. I (appearing on “continuation of Instructions Section 508); if only certain passages of first sheet (1)”) indicates the format (that is, whether the cited document are particularly relevant, they in paper copy or *>electronic< form) and status (that must be identified, for example, by indicating the is whether filed with the international application or page, the column or the lines, where the passage later, for purposes of search) of the sequence listing, appears >(PCT Rule 43.5(e)<. and any related tables. **> 1844.01 Preparing the International Search Report (Form PCT/ISA/ II. < BOX 2 AND BOX NO. II – LIMITATION< 210) [R-6] OF THE SUBJECT OF THE INTERNA- TIONAL SEARCH ** The report indicates whether **>any claims are The first sheet of the international search report unsearchable for any of the reasons indicated below. indicates the total number of sheets in the report. The If any such limitations of the subject of the search are correct number is entered, not including sheets that applied, the claims in respect of which a search has have not been filled-in (blank sheets). The number of not been carried out are identified and the reasons for sheets only includes the number of sheets from Form this are indicated. The three categories where such PCT/ISA/210. limitations< may arise are: **> (A) claims drawn to subject matter not required to be searched by the International Searching Authority I. BASIS OF THE REPORT (see MPEP § 1843.02); (B) claims in respect of which a meaningful A. Box 1a – Language search cannot be carried out (see MPEP § 1843.03); >and< In most circumstances, the first box under box 1a (C) multiple dependent claims which do not com- is checked indicating that the search is carried out on ply with PCT Rule 6.4(a) (see MPEP § 1843.03)>.< the basis of the international application in the lan- guage in which it was filed. Alternatively, the second ** box under box 1a is checked and an indication of Where claims are not searched for any of the rea- English made when the search is on the basis of a sons identified in (A)-(C) above, box 2 of the first translation of the international application into sheet of the international search report is checked. In English. addition, Box No. II of the international search report

Rev. 7, July 2008 1800-68 PATENT COOPERATION TREATY 1844.01

(on “continuation of first sheet (2)”) is completed, test. The second box would not be checked since the giving the details. ISA/US does not require a protest fee. The third box > would be checked if the payment of any additional search fees is not accompanied by a protest. See III. BOX 3 AND BOX NO. III – LACK OF MPEP § 1850, subsection X., for a discussion of pro- UNITY OF THE CLAIMED INVENTION test procedure.<

The report indicates whether the search is limited IV. TITLE, ABSTRACT, AND FIGURE FOR due to a lack of unity of invention. If unity is lacking, PUBLICATION the claims in respect of which a search has not been carried out are identified and the reasons for this are The international application must contain an indicated.< abstract and a title. The examiner considers the Where lack of unity has been found (see MPEP abstract (together with the title of the invention and § 1850), box 3 of the first sheet of the international the figure of the drawings to be published with the search report is checked. In addition, Box No. III of abstract) in relation to the requirements of the Regula- the international search report (on “continuation of tions under the PCT. The examiner indicates approval first sheet (2)”) is completed, irrespective of whether or amendment of *>the title of the invention,< the text an invitation to pay additional search fees has issued. of the abstract, ** and the selection of the figure that The search report indicates the separate inventions is to accompany the abstract in items 4 to 6 of the first claimed in the application, whether additional search sheet of the international search report. fees were requested and paid, and which claims were A. >Box 4 - An explanation of the separate inventions is The Request (Contents) entered in the appropriate area in Box No. III (see ***** MPEP § 1850). If applicant paid all the required additional search 4.3.Title of the Invention fees for additional inventions, the examiner should The title of the invention shall be short (preferably from two to check item 1 under Box No. III indicating that the seven words when in English or translated into English) and pre- international search report covers all searchable cise. claims. ***** If the examiner did not invite payment of addi- PCT Rule 37. tional search fees, item 2 should be checked under Missing or Defective Title Box. No. III and the international search report will cover all searchable claims. 37.1.Lack of Title If, in response to a lack of unity of invention, appli- If the international application does not contain a title and the receiving Office has notified the International Searching Author- cant paid only some of the required additional search ity that it has invited the applicant to correct such defect, the Inter- fees for additional inventions, the examiner should national Searching Authority shall proceed with the international check item 3 under Box No. III and indicate the search unless and until it receives notification that the said appli- claims for which fees were paid and therefore, cov- cation is considered withdrawn. ered by the international search. 37.2.Establishment of Title If the international search report is based on the If the international application does not contain a title and the invention first mentioned in the claims, the examiner International Searching Authority has not received a notification should check item 4 under Box No. III and indicate from the receiving Office to the effect that the applicant has been the claims limited to the first mentioned invention that invited to furnish a title, or if the said Authority finds that the title are covered by the international search report. does not comply with Rule 4.3, it shall itself establish a title. Such title shall be established in the language in which the international Regarding the three boxes indicating a Remark on application is to be published or, if a translation into another lan- Protest, the first box would be checked if the payment guage was transmitted under Rule 23.1(b) and the International of any additional search fees is accompanied by a pro- Searching Authority so wishes, in the language of that translation.</p><p>1800-69 Rev. 7, July 2008 1844.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>The title must be short and precise (preferably from (d) Each main technical feature mentioned in the abstract two to seven words in English or when translated into and illustrated by a drawing in the international application shall English). Furthermore, the title should clearly and be followed by a reference sign, placed between parentheses. concisely state the technical designation of the inven- 8.2.Figure tion. In this regard the following should be taken into account: (a) If the applicant fails to make the indication referred to in Rule 3.3(a)(iii), or if the International Searching Authority finds (A) personal names or trade names or similar that a figure or figures other than that figure or those figures sug- terms of non-technical nature which do not serve to gested by the applicant would, among all the figures of all the identify the invention should not be used; drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should accom- (B) the abbreviation “etc.,” being vague, should pany the abstract when the latter is published by the International not be used and should be replaced by an indication of Bureau. In such case, the abstract shall be accompanied by the fig- what it is intended to cover; ure or figures so indicated by the International Searching Author- (C) titles such as “Method,” “Apparatus,” ity. Otherwise, the abstract shall, subject to paragraph (b), be “Chemical Compounds” alone or similar vague titles accompanied by the figure or figures suggested by the applicant. do not clearly state the technical designation of the (b) If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of invention and should not be used. the abstract, it shall notify the International Bureau accordingly. In In general, the examiner is required to draft a new such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the drawings title if the applicant failed to provide a title or if the even where the applicant has made a suggestion under Rule title is deficient because it does not comply with the 3.3(a)(iii). requirements of PCT Rule 4.3. The examiner is not required to gain the applicant’s approval of the new PCT Rule 38. title established by the examiner. Missing or Defective Abstract >On the first sheet of the international search 38.1.Lack of Abstract report, the examiner indicates the title text is approved (the first box under Box 4) or has been established If the international application does not contain an abstract and the receiving Office has notified the International Searching (the second box under Box 4).< Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the inter- B. >Box 5 and Box 6 - < Abstract and Figure for national search unless and until it receives notification that the Publication said application is considered withdrawn.</p><p>PCT Rule 8. 38.2.Establishment of Abstract The Abstract **>If the international application does not contain an abstract and the International Searching Authority has not received a noti- 8.1.Contents and Form of the Abstract fication from the receiving Office to the effect that the applicant (a) The abstract shall consist of the following: has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself (i) a summary of the disclosure as contained in the establish an abstract. Such abstract shall be established in the lan- description, the claims, and any drawings; the summary shall indi- guage in which the international application is to be published or, cate the technical field to which the invention pertains and shall be if a translation into another language was transmitted under Rule drafted in a way which allows the clear understanding of the tech- 23.1(b) and the International Searching Authority so wishes, in nical problem, the gist of the solution of that problem through the the language of that translation. invention, and the principal use or uses of the invention; (ii) where applicable, the chemical formula which, among 38.3.Modification of Abstract all the formulae contained in the international application, best characterizes the invention. The applicant may, until the expiration of one month from the (b) The abstract shall be as concise as the disclosure permits date of mailing of the international search report, submit to the (preferably 50 to 150 words if it is in English or when translated International Searching Authority: into English). (i) proposed modifications of the abstract; or (c) The abstract shall not contain statements on the alleged (ii) where the abstract has been established by the Authority, merits or value of the claimed invention or on its speculative proposed modifications of, or comments on, that abstract, or both application. modifications and comments; </p><p>Rev. 7, July 2008 1800-70 PATENT COOPERATION TREATY 1844.01</p><p> and the Authority shall decide whether to modify the abstract (D) Abstracts may be incomprehensible if the accordingly. Where the Authority modifies the abstract, it shall numerals of the selected figure(s) do not correspond notify the modification to the International Bureau. < with those in the abstract. Thus, this should be In general, the examiner will have to establish a avoided. new abstract if the applicant did not provide an (E) An absence of reference numbers on the fig- abstract or if the abstract does not comply with PCT ures must be accepted as the examiner has no mecha- Rule 8. In determining the definitive contents of the nism to initiate their addition. abstract, or establishing the text of the abstract anew (F) Each main technical feature mentioned in the where it is missing, the examiner should take into abstract and illustrated by a drawing should be fol- consideration the fact that the abstract is merely for lowed by a reference sign, placed between parenthe- use as technical information and, in particular, must ses. not be used for the purpose of interpreting the scope **>In box 5 of the first sheet of the international of the protection sought. The abstract constitutes an search report, the examiner indicates approval of the efficient instrument for the purpose of assisting the text of the abstract by checking the first box. When scientist, engineer, or researcher in searching in the the text of the abstract is missing or defective the sec- particular technical field and should in particular ond box is checked and the new abstract is established make it possible to assess whether there is need for by entering the text of the new abstract. The defect or consulting the international application itself. WIPO reason for establishing the new abstract should be guidelines for the preparation of abstracts are found in indicated, e.g., too long or missing. WIPO Standard ST.12/A, which is available from WIPO’s web site (www.wipo.int/scit/en/standards/ The applicant may submit modifications of the standards.htm). abstract until the expiration of one month from the date of mailing of the search report.< If the examiner In considering the adequacy of the applicant’s establishes a new abstract, the applicant **>may pro- abstract and figure, because of practical difficulties pose modifications of, and/or comment on,< the new experienced by the International Bureau with publica- abstract after it has been established in the interna- tion, examiners should have particular regard to the tional search report. The applicant is allowed one following: month from the date of mailing of the international (A) It is important that the abstract be as concise search report to respond to the examiner’s abstract in as the disclosure permits (preferably 50 to 150 words the report. If the applicant does comment, the exam- if it is in English or when translated into English). iner takes the applicant’s comments into consider- Within this constraint the abstract must provide a ation. It is not necessary for the examiner to reply to summary of the technical information about the dis- the applicant’s comments even if adverse. If the closure as contained in the description, claims, and examiner decides to amend the abstract established in drawings. It should be drafted so as to serve as an effi- the international search report >based on the proposed cient scanning tool for searching purposes in the art. modifications and/or comment,< the International (B) Phrases should not be used which can be Bureau and the applicant are notified using Form implied, such as “This disclosure concerns,” “The PCT/ISA/205. See PCT Rule *>38.3< and Adminis- invention defined by this disclosure,” and “This trative Instructions Section 515. invention relates to.” When indicating the figure to be published, the (C) Only one figure should normally be selected applicant’s suggestion is found in Box >No.< IX of unless this would lead to inadequate disclosure. The the request **>(Form PCT/RO/101)<. Where none of inclusion of more than two figures should not be con- the figures is considered useful for the understanding sidered except in extreme circumstances where neces- of the abstract, this is indicated at the appropriate box sary information cannot be otherwise conveyed. (**>box 6b< of the first sheet of Form PCT/ISA/210). Where none of the figures is considered useful for the When no drawings accompany the application, none understanding of the invention (even where the appli- of the boxes are checked. >Otherwise, box 6a is cant has suggested a figure), no figure should be checked and the reason for selecting the figure to be selected. published is indicated, i.e., as suggested by the appli-</p><p>1800-71 Rev. 7, July 2008 1844.01 MANUAL OF PATENT EXAMINING PROCEDURE cant, as selected by the examiner because either the details of the earlier search. In the later case, a sum- applicant failed to suggest a figure in Box No. IX of mary of the earlier search should be included. Where Form PCT/RO/101 or the figure better characterizes the previous application has been published, this the invention.< It is not recommended to select more information is recorded in the international search than one figure; however, if it is necessary to do so report. then the wording of the form should be changed to reflect the change from single case to plural case. For VII. >BOX C -< DOCUMENTS CONSIDERED example, “figure” is changed to “figures”, “is” to TO BE RELEVANT “are” and **>“ No. ” to “Nos.”<. The completion of Box C of the second sheet of the V. >BOX A -< CLASSIFICATION OF international search report can be considered as hav- SUBJECT MATTER ing three components. These are: (A) the citation cate- gory; (B) the citation of the document together with The International Searching Authority assigns identification of the relevant passages where appropri- obligatory International Patent Classification (IPC) ate; and (C) the identification of relevant claim num- symbols in accordance with the rules as set forth in bers. The citation of multiple documents showing the the Guide to the IPC and in the IPC itself (using the same inventive elements should be kept to a mini- edition of the IPC in force at the time), whereby the mum. Further, when citing a document, the examiner technical subject of the invention of the application is should clearly indicate which portions of the docu- identified. The International Searching Authority then ment are most relevant. records the International Patent Classification >and U.S. Classification< in Box A of the second sheet of A. Citation Category the international search report. The IPC Guide can be accessed via the Patent Examiner’s Toolkit under Documents which are cited are given a category Classification Tools or via WIPO’s web site indication by way of an alphabetic character, details (www.wipo.int). of which are given in Administrative Instructions Sec- tions 505 and 507 and below. The categories for cita- VI. >BOX B -< RECORDING THE SEARCH tions are also explained under the “documents considered to be relevant” section of the report. A cat- The examiner records the search history in Box B egory should always be indicated for each document of the second sheet of the international search report. cited. Where needed, combinations of different cate- In recording the search history of the international gories are possible. search, the examiner lists the classification identifica- tion of the fields searched. Examiners are also encour- 1. Particularly Relevant Documents aged to record the search history in sufficient detail to allow examiners of national stage applications to fully Where a document cited in the international search interpret and rely upon the international search. This report is particularly relevant, it is indicated by the let- includes recording the details of any patent and non- ters “X” or “Y”. Category “X” is applicable where a patent literature searches as well as searches con- document is such that when taken alone, a claimed ducted on the Internet. invention cannot be considered novel or where a doc- Where the international search report is entirely or ument is such that when considered in light of com- partly based on a previous search made for an applica- mon general knowledge, a claimed invention cannot tion relating to a similar subject, the previous applica- be considered to involve an inventive step. Category tion number and the relevant search history consulted “Y” is applicable where a document is such that a for this previous search is, where appropriate, identi- claimed invention cannot be considered to involve an fied as having been consulted for the international inventive step when the document is combined with application in question, except in those instances one or more other documents of the same category, where the details of an earlier search cannot be ascer- such combination being obvious to a person skilled in tained, or whenever it is impractical to record the full the art.</p><p>Rev. 7, July 2008 1800-72 PATENT COOPERATION TREATY 1844.01</p><p>2. Documents Defining the State of the Art and 7. Documents Cited in the Application Not Prejudicing Novelty or Inventive Step When the search report cites documents already Where a document cited in the international search mentioned in the description of the patent application report represents state of the art and is not prejudicial for which the search is carried out, such documents to the novelty or inventive step of the claimed inven- may be identified on the search report by the wording tion, it is indicated by the letter “A”. “cited in the application” under the cited document.</p><p>3. Documents Which Refer to a Non-Written 8. Documents Cited for Other Reasons Disclosure Where in the search report any document is cited Where a document cited in the international search for reasons other than those referred to in the forego- report refers to a non-written disclosure referred to in ing paragraphs (in particular as evidence), for exam- PCT Rule 33.1(b), the letter “O” is entered. Examples ple: of such disclosures include conference proceedings. The document category “O” is always accompanied (A) a document which may throw doubt on a pri- by a symbol indicating the relevance of the document, ority claim (Article 4(C)(4) of the Paris Convention), for example: “O,X”, “O,Y”, or “O,A”. or 4. Intermediate Documents (B) a document cited to establish the publication date of another citation, Documents published on dates falling between the date of filing of the application being searched and the the document is indicated by the letter “L”. Brief rea- date of priority claimed, or the earliest priority if there sons for citing the document should be given. Docu- is more than one (see PCT Article 2(xi)(b)), are ments of this type need not be indicated as relevant to denoted by the letter “P”. The letter “P” is also given any particular claims. However, where the evidence to a document published on the very day of the earli- that they provide relates only to certain claims (for est date of priority of the patent application under example the “L” document cited in the search report consideration. The document category “P” is always may invalidate the priority in respect of certain claims accompanied by a symbol indicating the relevance of and not others), then the citation of the document the document, for example: “P,X”, “P,Y”, or “P,A”. should refer to those claims. **> 5. Documents Relating to the Theory or Principle Underlying the Invention B. < Citation of the Documents</p><p>Where any document cited in the search report is a Identification of any document should be made document that may be useful for a better understand- according to WIPO Standard ST.14 (see Administra- ing of the principle or theory underlying the inven- tive Instructions Section 503). For “A” citations it is tion, or is cited to show that the reasoning or the facts not necessary to indicate the relevant claims unless underlying the invention are incorrect, it is indicated there is good reason to do so; for example where there by the letter “T”. is a clear lack of unity a priori (see MPEP § 1850) 6. Potentially Conflicting Patent Documents and the citation is relevant only to a particular claim or group of claims or when the claims meet the crite- Any patent document bearing a filing or priority ria of novelty, inventive step, and industrial applica- date earlier than the filing date of the application bility under PCT Article 33(2) to (4) and the “A” searched (not the priority date) but published on or category citations represent the most relevant prior later than that date and the content of which would art. The box on the second sheet of Form PCT/ISA/ constitute prior art relevant to novelty (PCT Article 210 entitled “Further documents listed are in the con- 33(2)) is indicated by the letter “E” (see Administra- tinuation of Box C” is checked if a continuation sheet tive Instructions Section 507(b) and PCT Rule is used to list additional documents that will not fit in 33.1(c)). the space provided in Box C.</p><p>1800-73 Rev. 7, July 2008 1844.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>> report and the date of actual completion, that is, the date on which the report was drawn up are indicated C. Relationship Between Documents and Claims at the bottom of the second sheet of the international Each citation should include a reference to the search report. This information is generated automati- claims to which it relates (see Administrative Instruc- cally by the OACS software when preparing the inter- tions Section 508). If necessary, various relevant parts national search report. The international search report of the document cited should each be related to the will be accompanied by a transmittal letter (Form claims in like manner (with the exception of “L” doc- PCT/ISA/220) indicating the date the search report uments and “A” documents). It is also possible for the was mailed to the applicant. ** See MPEP § same document to represent a different category with *>1845.02<. respect to different claims. For example: Pursuant to PCT Rule 43.8, the international search WO1990/001867 A (WIDEGREN LARS (SE)) 8 report must indicate the name of the officer of the March 1990 (08-03-1990), figures 1 and 2 International Searching Authority responsible for the X 1 report, i.e., the “authorized officer.” An “authorized Y 2-5 officer” is the person who actually performed the A 6-10 search work and prepared the search report, or another The above example means that Figures 1 and 2 of person who was responsible for supervising the the cited document disclose subject matter which search. See Administrative Instructions Section 514. prejudices the novelty or inventive step of claim 1, which prejudices the inventive step of claims 2-5 Thus, an examiner need not have signatory authority when combined with another document cited in the in order to be named as an authorized officer on the search report, and which represents non-prejudicial search report. However, the “file copy” of the search state of the art for the subject matter of claims 6-10.< report must be signed by an examiner having at least partial signatory authority. VIII. FINALIZATION OF THE SEARCH The international search report should be mailed REPORT within 3 months of receipt of the search copy or The identification of the International Searching within 9 months from the priority date, whichever is Authority which established the international search later.</p><p>Rev. 7, July 2008 1800-74 PATENT COOPERATION TREATY 1844.01</p><p>**></p><p>1800-75 Rev. 7, July 2008 1844.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Rev. 7, July 2008 1800-76 PATENT COOPERATION TREATY 1844.01</p><p>1800-77 Rev. 7, July 2008 1844.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p><</p><p>Rev. 7, July 2008 1800-78 PATENT COOPERATION TREATY 1845.01</p><p>1845 Written Opinion of the Interna- national Searching Authority is not required in the tional Searching Authority [R-6] limited instance where a demand for international pre- liminary examination and required fees (PCT Rule PCT Rule 43bis. 69.1(a)) have been filed with the United States Inter- Written Opinion of the International Searching Authority national Preliminary Examining Authority and the examiner considers all the conditions of PCT Article 43bis.1.Written Opinion 34(2)(c)(i) to (iii) to be fulfilled. In this limited **> instance, a positive international preliminary exami- (a) Subject to Rule 69.1(b-bis), the International Searching nation report may be issued. See PCT Rule 69.1(b- Authority shall, at the same time as it establishes the international bis)). search report or the declaration referred to in Article 17(2)(a), The applicant must be notified in the written opin- establish a written opinion as to:< (i) whether the claimed invention appears to be novel, to ion of the defects found in the application. The exam- involve an inventive step (to be non-obvious), and to be industri- iner is further required to fully state the reasons for ally applicable; his/her opinion (PCT *>Rules 66.1bis and<66.2(b)) (ii) whether the international application complies with and invite a written reply, with amendments where the requirements of the Treaty and these Regulations in so far as appropriate (PCT Rule 66.2(c)). checked by the International Searching Authority. The written opinion shall also be accompanied by 1845.01 Preparing the Written Opinion such other observations as these Regulations provide for. **> of the International Searching (b) For the purposes of establishing the written opinion, Authority (Form PCT/ISA/237) Articles 33(2) to (6) and 35(2) and (3) and Rules 43.4, 43.6bis, 64, 65, 66.1(e), 66.7, 67, 70.2(b) and (d), 70.3, 70.4(ii), 70.5(a), 70.6 [R-7] to 70.10, 70.12, 70.14 and 70.15(a) shall apply mutatis mutandis.< (c) The written opinion shall contain a notification inform- The International Patent Classification and U.S ing the applicant that, if a demand for international preliminary Classification in the header on the cover sheet of examination is made, the written opinion shall, under Rule Form PCT/ISA/237 is to be consistent with the indi- 66.1bis(a) but subject to Rule 66.1bis(b), be considered to be a cation of classification of subject matter in Box A on written opinion of the International Preliminary Examining the second sheet of the International Search Report Authority for the purposes of Rule 66.2(a), in which case the applicant is invited to submit to that Authority, before the expira- (Form PCT/ISA/210). tion of the time limit under Rule 54bis.1(a), a written reply The Boxes marked on the cover sheet represent a together, where appropriate, with amendments. summary of the indications detailed on the subsequent relevant sheets of Form PCT/ISA/237. For international applications having an interna- tional filing date on or after January 1, 2004, the I. BOX NO. I. — BASIS OF OPINION examiner is required, in most instances, to establish a written opinion on novelty, inventive step, and indus- When completing Box No. I, item 1, of Form PCT/ trial applicability of the claimed invention at the same ISA/237, the examiner must indicate whether or not time he/she establishes the international search report. the opinion has been established on the basis of the The international search report and written opinion international application in the language in which it together serve to inform the International Preliminary was filed. If a translation was furnished for the pur- Examining Authority of the documents and arguments pose of the search, this must be indicated. necessary to complete the relevant assessments if Box No. I, item 2 of Form PCT/ISA/237 is to be international preliminary examination is demanded, marked when the opinion is established taking into and to inform the designated Offices of information account the rectification of an obvious mistake under that may be relevant to examination in the national PCT Rule 91. phase. (The written opinion is transmitted to the des- With respect to Box No. I, item 3 of Form PCT/ ignated offices in the form of an international prelimi- ISA/237, if the opinion has been based on a nucle- nary report on patentability if no international otide and/or amino acid sequence disclosed and nec- preliminary examination report is established under essary to the claimed invention, the examiner must Chapter II of the PCT). A written opinion of the Inter- indicate the type of material (i.e., a sequence listing </p><p>1800-79 Rev. 7, July 2008 1845.01 MANUAL OF PATENT EXAMINING PROCEDURE and/or tables related thereto), the format of the mate- Authority should not be delayed to await a response to rial (i.e., on paper or in electronic form) and the time the invitation. The written opinion of the ISA will of filing/furnishing (i.e., contained in the interna- ordinarily be established as if the priority claim had tional application as filed, filed together with the been validly claimed even though the copy and/or international application in electronic form and/or fur- translation has not been furnished. However, failure to nished subsequently to the ISA for the purposes of the timely furnish a copy of the priority document and/or search). If more than one version or copy of the translation may result in any further written opinion sequence listing and/or tables relating thereto is filed, or international preliminary examination report of the the examiner must indicate whether the applicant has International Preliminary Examining Authority being provided the required statement indicating that the established as if the priority had not been claimed. information in the subsequent or additional copies are If applicant fails to furnish a copy or translation of identical to that in the application as filed or does not the earlier application, whose priority has been go beyond the application as filed, as appropriate. claimed, check item 1 and then check the first box of the subsection if applicant failed to furnish a copy of II. BOX NO. II. — PRIORITY the earlier application whose priority has been Box No. II of Form PCT/ISA/237 is to inform claimed, and check the second box of the subsection if applicant of the status of a request for priority. Where applicant failed to furnish a translation of the earlier one or more citations of the international search report application whose priority has been claimed. were published after the earliest priority date, the When the claim for priority has been found invalid validity of that earliest priority date requires checking. (e.g., the notification under PCT Rule 26bis.2(b) has Where the priority document is one which is in the been provided or all claims are directed to inventions records of the ISA, it should be obtained from those which were not described and enabled by the earlier records. If a copy of the priority document is not application), check item 2 in Box II and indicate why available before preparation of the written opinion of the claim for priority has been found invalid follow- the ISA because it has not yet been provided by the ing item 3 “Additional observations”. applicant, and if that earlier application was not filed with that Authority in its capacity as a national Office III. BOX NO. III. — NON-ESTABLISHMENT or the priority document is not available to that OF OPINION ON NOVELTY, INVENTIVE Authority from a digital library in accordance with the STEP AND INDUSTRIAL APPLICABILI- Administrative Instructions, the written opinion of the TY ISA may be established as if the priority had been val- idly claimed. Box No. III of Form PCT/ISA/237 is intended to If the examiner needs a copy of a foreign priority cover situations where some or all claims of an appli- document, the copy will be supplied on request to the cation are so unclear or inadequately supported by the International Bureau (IB) unless the IB has not yet description that the question of novelty, inventive step received the priority document, in which case the (nonobviousness), and industrial applicability cannot examiner may invite the applicant to furnish such a be considered, or where the international application copy. See PCT Rule 66.7(a). The examiner may con- or claims thereof relate to subject matter for which it sult with the Technology Center Special Program is not required to establish a written opinion concern- Examiner regarding requesting a copy of the priority ing novelty, inventive step and industrial applicability, document from the IB. If the priority document is not or where no international search report has been in English, the examiner may invite the applicant to established for the claims. furnish a translation of the priority document within If some or all of the claims of an application relate two months of the invitation. See PCT Rule 66.7(b). to subject matter for which it is not required to estab- Box No. II, item 3, “Additional Observations” may be lish a written opinion concerning novelty, inventive used to invite applicant to supply a copy of the prior- step and industrial applicability, check the appropriate ity document and/or translation. Preparation of the box, indicate which claims relate to that subject mat- written opinion by the International Searching ter and specify the reasons e.g., improper multiple </p><p>Rev. 7, July 2008 1800-80 PATENT COOPERATION TREATY 1845.01 dependent claims that fail to comply with PCT Rule If a lack of unity exists, the examiner would mark 6.4. the second box under item 3. However, since the rea- sons for the lack of unity have already been set forth If some or all of the claims of an application are so on the simultaneously issued international search unclear that no meaningful opinion could be formed, report, the examiner can simply state that the reason check the appropriate box, indicate which claims are the requirement of unity of invention is not complied unclear and specify the reasons. with is set forth in the international search report. The If some or all of the claims are so inadequately sup- first box under item 3 would never be marked. ported by the description that no meaningful opinion Item 4 is used by the examiner to indicate which could be formed, check the appropriate box. parts of the application form the basis of the opinion If no international search report has been estab- after the lack of unity of invention has been explained. lished for certain claims, check the appropriate box The first box should be checked when the opinion is and indicate the claim numbers. established for all parts. Otherwise, the second box is If the nucleotide and/or amino acid sequence listing checked and the relevant claims identified. does not comply with Annex C of the Administrative V. BOX NO. V. — REASONED STATEMENT Instructions, the examiner must indicate whether the WITH REGARD TO NOVELTY, INVEN- written form and/or the electronic form is not in com- TIVE STEP, AND INDUSTRIAL APPLI- pliance and the reason for the non-compliance. Fur- CABILITY OF CLAIMS ther, if tables related to the sequence listing are included as part of the international application, and In Box No. V of Form PCT/ISA/237, the examiner these tables fail to comply with the technical require- must list in summary form all claims with regard to ments of Annex C of the Administrative Instructions, the criteria of novelty (N), inventive step (IS), and the examiner must indicate this in Box No. III. industrial applicability (IA). For definitions of nov- elty, inventive step, and industrial applicability see IV. BOX NO. IV. — LACK OF UNITY OF MPEP §§ 1878.01(a)(1), 1878.01(a)(2), and INVENTION 1878.01(a)(3), respectively. Box No. V is the main purpose of the written opin- Box No. IV of Form PCT/ISA/237 should be used ion. All claims without fatal defects are treated on the by the examiner to notify applicant that lack of unity merits in Box No. V as to novelty, inventive step has been found by checking item 1, and one of the (nonobviousness) and industrial applicability. four boxes under item 1. The treatment of claims in Box No. V is similar in If applicant paid additional fees for additional format to an Office action in a U.S. national patent inventions, the examiner should check the first box application except that the words “rejection,” “patent- under item 1. ability,” and “allowable are never used in a written If the additional fees were paid under protest, the opinion. On the international level, all written opin- examiner should check the second box under item 1. ions are nonbinding and a patent does not issue; what does issue is an international preliminary report on Regarding the third box, since the ISA/US does not patentability (IPRP), which is nonbinding on the require a protest fee, this box would not be checked. elected States. If the search report is based on the first mentioned Examiner statements in Box No. V can be positive invention (no additional search fees were paid), the or negative. If the claims define over the prior art and examiner should check the fourth box under item 1. meet the test of novelty, inventive step (nonobvious- Item 2 of Box No. IV is to be completed if the ness) and industrial applicability, a positive statement examiner determines that unity of invention is lacking equivalent to detailed reasons for allowance in a cor- but chooses not to invite the applicant to agree to a responding U.S. national application should be pro- search limited to the first mentioned invention or pay vided, indicating how the claims meet the tests of additional fees. novelty, inventive step and industrial applicability. </p><p>1800-81 Rev. 7, July 2008 1845.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Form paragraphs 18.04 and 18.04.01 may be used for 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), this purpose. and the verb --lack-- or --lacks--, as appropriate. 2. In bracket 2, insert name of prior art relied upon. ¶ 18.04 Meets Novelty and Inventive Step ¶ 18.02 Lacks Inventive Step - One Reference Claim [1] the criteria set out in PCT Article 33(2)-(3), because Claim [1] an inventive step under PCT Article 33(3) as being the prior art does not teach or fairly suggest [2]. obvious over [2]. [3] Examiner Note: Examiner Note: 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and insert the verb --meet-- or --meets--, as appropriate. and the verb --lack-- or --lacks--, as appropriate. 2. In bracket 2, insert the details of the claimed subject matter 2. In bracket 2, insert name of prior art relied upon. that render it unobvious over the prior art. 3. In bracket 3, add reasoning. 3. If the claims also meet the industrial applicability criteria set out in PCT Article 33(4), this form paragraph should be followed ¶ 18.02.01 Lacks Inventive Step - Two References by form paragraph 18.04.01. Claim [1] an inventive step under PCT Article 33(3) as being 4. If the claims do not meet the industrial applicability criteria obvious over [2] in view of [3]. [4] set out in PCT Article 33(4), this form paragraph should be fol- Examiner Note: lowed by form paragraph 18.03. 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), ¶ 18.04.01 Meets Industrial Applicability and the verb --lack-- or --lacks--, as appropriate. 2. In bracket 2, insert name of PRIMARY prior art relied upon. Claim [1] the criteria set out in PCT Article 33(4), and thus [2] 3. In bracket 3, insert name of SECONDARY prior art relied industrial applicability because the subject matter claimed can be upon. made or used in industry. 4. In bracket 4, add reasoning. Examiner Note: ¶ 18.02.02 Lacks Inventive Step - Additional Reference 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), Claim [1] an inventive step under PCT Article 33(3) as being and the verb --meet-- or -- meets--, as appropriate. obvious over the prior art as applied in the immediately preceding 2. In bracket 2, insert --have-- or --has--, as appropriate. paragraph and further in view of [2]. [3] 3. If the claims meet all of the requirements of PCT Article 33(2)-(4), use form paragraph 18.04 before this form paragraph to Examiner Note: provide positive statements for novelty and inventive step under 1. This form paragraph may follow either 18.02 or 18.02.01. PCT Article 33(2)-(3). 2. In bracket 1, pluralize “claim” if needed, insert claim no.(s), 4. If the claims have industrial applicability but lack novelty and the verb --lack-- or --lacks--, as appropriate. and inventive step, use this form paragraph and additionally use 3. In bracket 2, insert name of additional prior art relied upon. form paragraph 18.01. 4. In bracket 3, add reasoning. 5. If the claims have industrial applicability and novelty but ¶ 18.03 Lacks Industrial Applicability lack inventive step, use this form paragraph and additionally use Claim [1] industrial applicability as defined by PCT Article one or more of form paragraphs 18.02, 18.02.01 and 18.02.02, as 33(4). [2] appropriate. 6. If the claims do not have industrial applicability, use form Examiner Note: paragraph 18.03 instead of this form paragraph. 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate. If, on the other hand, it is the opinion of the exam- 2. In bracket 2, add reasoning. iner that some or all claims lack novelty, inventive step, or industrial applicability, specific reasons must be given similar to those used in U.S. national appli- Examiners are encouraged to indicate any amend- cations. ments which applicant could present which would Form paragraphs 18.01, 18.02, 18.02.01, 18.02.02, avoid a negative statement in the international prelim- and 18.03 may be used, as appropriate, to explain the inary examination report in the event that applicant negative statements listed in Box No. V. chooses to file a demand. </p><p>¶ 18.01 Lacks Novelty VI. BOX NO. VI. — CERTAIN DOCUMENTS Claim [1] novelty under PCT Article 33(2) as being antici- CITED pated by [2]. Since all documents cited at the time of establish- Examiner Note: ment of the written opinion will be listed on the </p><p>Rev. 7, July 2008 1800-82 PATENT COOPERATION TREATY 1845.01 simultaneously established search report, there is no VIII. BOX NO. VIII. — CERTAIN OBSERVA- need to also list them on the written opinion, and as TIONS ON THE INTERNATIONAL AP- such this box should be left blank. PLICATION</p><p>VII. BOX NO. VII. — CERTAIN DEFECTS IN In Box No. VIII, the examiner notifies the applicant THE INTERNATIONAL APPLICATION of observations made as to the clarity of the claims, the description, the drawings, or on the question In Box No. VII of Form PCT/ISA/237, defects in whether the claims are fully supported by the descrip- the form and content of the international application tion. are identified. If the claims, the description, or the drawings are so Defects that would be listed in Box No. VII include unclear, or the claims are so inadequately supported informalities such as misplaced and/or omitted draw- by the description, that no meaningful opinion can be ing numerals, misspelled words, and grammatical formed on the question of novelty, inventive step errors. (nonobviousness) or industrial applicability, the appli- The following form paragraphs are used in Box No. cant is so informed in Box No. III. See PCT Article VII of PCT/ISA/237, “Certain defects in the interna- 34(4)(a)(ii). Reasons for the examiner’s opinion that tional application,” for noting technical defects. the claims, description and drawings, etc., lack clarity **> must also be provided. If the above situation is found to exist in certain ¶ 18.08 Drawing - Defect in Form or Contents Thereof claims only, the provisions of PCT Article 34(4)(a)(ii) The drawings contain the following defect(s) in the form or shall apply to those claims only. content thereof: [1] If the lack of clarity of the claims, the description, Examiner Note: or the drawings is of such a nature that it is possible to In bracket 1, insert identification of defects in drawings. form a meaningful opinion on the claimed subject matter, then it is required that the examiner consider < the claims and render a written opinion on novelty, inventive step, and industrial applicability in Box No. ¶ 18.08.01 Drawing Is Required V. The subject matter of this application admits of illustration by Since the claims of an international application are drawing to facilitate understanding of the invention. Applicant is required under PCT Article 7(1) to furnish a drawing. not subject to a rejection on either art or indefiniteness consistent with U.S. practice, observations by the **> examiner with regard to clarity of the claims, the description and the drawings will be treated in the ¶ 18.09 Description - Defect in Form or Contents Thereof form of an objection in the written opinion in Box No. The description contains the following defect(s) in the form or VIII. contents thereof: [1] The following form paragraphs may be used in Box Examiner Note: No. VIII, “Certain observations on the international In bracket 1, insert the technical problem, e.g., misspelled application,” of Form PCT/ISA/237 for noting objec- word. tions which are substantive rather than merely techni- cal in nature. ¶ 18.10 Claims - Defect in Form or Contents Thereof **> Claim [1] contain(s) the following defect(s) in the form or con- tents thereof: [2] ¶ 18.11 Drawing Objections - Lack Clarity Examiner Note: The drawings are objected to under PCT Article 7 as lacking clarity under PCT Article 7 because: [1] 1. In bracket 1, pluralize “claim” if needed, and insert claim no.(s). Examiner Note: 2. In bracket 2, identify the technical deficiency. In bracket 1, insert reasons why the drawings lack clarity, e.g., < inaccurate showing.</p><p>1800-83 Rev. 7, July 2008 1845.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>¶ 18.12.01 Claims Objectionable - Inadequate Written ¶ 18.15 Claims Objectionable - Indefiniteness Description Claim [1] objected to under PCT Article 6 as lacking clarity Claim [1] objected to under PCT Article 6 because the claim because claim [2] indefinite for the following reason(s): [3] [2] not fully supported by the description. The application, as Examiner Note: originally filed, did not describe: [3] 1. In brackets 1 and 2, pluralize “claim” if needed, insert claim Examiner Note: no.(s) and the appropriate verb --is-- or --are--. 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), 2. In bracket 3, insert reasons. and the verb --is-- or --are--, as appropriate. 2. In bracket 2, pluralize “claim” if needed, and insert the verb - < -is-- or --are--. 3. In bracket 3, identify subject matter not described in the IX. AUTHORIZED OFFICER application as filed. Pursuant to PCT Rules 43bis.1 and 70.14, the writ- ¶ 18.13.01 Claims Objectionable - Non-Enabling ten opinion of the International Searching Authority Disclosure must indicate the name of the officer of the Interna- Claim [1] objected to under PCT Article 6 because the claim tional Searching Authority responsible for the written [2] not fully supported by the description. The description does opinion, i.e., the “authorized officer.” An “authorized not disclose the claimed invention in a manner sufficiently clear officer” is the person who actually performed the and complete for the claimed invention to be carried out by a per- son skilled in the art as required by PCT Article 5 because: [3] search work and prepared the search report and the written opinion, or another person who was responsi- Examiner Note: ble for supervising the search and the establishment of 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) the written opinion. See Administrative Instructions and the appropriate verb --is-- or --are--. 2. In bracket 2, pluralize “claim” if needed, insert the verb --is-- Section 514. Thus, an examiner need not have signa- or --are--. tory authority in order to be named as an authorized 3. In bracket 3, identify the claimed subject matter that is not officer on the written opinion. However, the “file enabled and explain why it is not enabled. copy” of the written opinion must be signed by an ¶ 18.14.01 Claims Objectionable - Lack of Best Mode examiner having at least partial signatory authority. Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The description fails to X. TIME TO REPLY set forth the best mode contemplated by the applicant for carrying If, in response to the written opinion of the Interna- out the claimed invention as required by PCT Rule 5.1(a)(v) because: [3]. tional Searching Authority (Form PCT/ISA/237), applicant wishes to file a demand and amendments Examiner Note: and/or arguments, the time period for response is 3 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) months from the mailing of the international search and the appropriate verb --is-- or --are--. 2. In bracket 2, pluralize “claim” if needed, and insert the report and the written opinion or before the expiration appropriate verb --is-- or --are--. of 22 months from the priority date, whichever 3. In bracket 3, insert the objection and reasons. expires later.</p><p>Rev. 7, July 2008 1800-84 PATENT COOPERATION TREATY 1845.01</p><p>1800-85 Rev. 7, July 2008 1845.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Rev. 7, July 2008 1800-86 PATENT COOPERATION TREATY 1845.01</p><p>1800-87 Rev. 7, July 2008 1845.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Rev. 7, July 2008 1800-88 PATENT COOPERATION TREATY 1845.01</p><p>1800-89 Rev. 7, July 2008 1845.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>**></p><p><</p><p>Rev. 7, July 2008 1800-90 PATENT COOPERATION TREATY 1845.02</p><p>1845.02 Notification of Transmittal of the examiner should make sure the Form PCT/ISA/220 International Search Report and being issued is the version of the form dated April 2002 and entitled “Notification of Transmittal of the the Written Opinion of the International Search Report or the Declaration.” International Searching Authority, or the Declaration I. ADDRESS FOR CORRESPONDENCE (Form PCT/ISA/220) [R-6] The address for correspondence is taken from the The examiner completes the Notification of Trans- request (Form PCT/ISA/101). When an agent repre- mittal of the International Search Report and the Writ- sents the applicant, the address for correspondence is ten Opinion of the International Searching Authority, listed in Box No. IV of the PCT request Form. For or >the< Declaration (Form PCT/ISA/220) upon com- applicants processing their own applications, the pletion of the International Search Report (Form PCT/ address for correspondence may be listed in Box No. ISA/210) or the Declaration of Non-Establishment of II of the request Form. However, where **>a Notifi- the International Search Report (Form PCT/ISA/203) cation of the Recording of a Change (Form PCT/IB/ and, for applications filed on or after January 1, 2004, 306)< shows any changes in the applicant or address completion of the Written Opinion of the International for correspondence effected under PCT Rule 92bis, Searching Authority (Form PCT/ISA/237). the later address is used. The Form PCT/ISA/220 serves as a cover letter for the PCT/ISA/210 or PCT/ISA/203 and for the PCT/ II. APPLICANT ISA/237. >The Form PCT/ISA/220 indicates the mailing When there is more than one applicant in respect of date, which is important for the computation of the the international application, only the first mentioned time limit for filing amendments to the claims under of these on the request Form is indicated in the inter- PCT Article 19 (see MPEP § 1853) and proposed national search report. Other applicants, if any, are modifications of, or comments on, the abstract. In indicated by the words “et al” following the first applications filed on or after January 1, 2004, the applicant’s name. The first mentioned applicant is mailing date on Form PCT/ISA/220 may also estab- indicated in Box No. II of the request Form, a second lish the time limit for making a demand under PCT applicant is listed in Box No. III; further applicants Rule 54bis.1 (see MPEP § 1842, subsection V.A.) and are listed on the continuation sheet if there are more for making Article 34 Amendments that will be than two applicants. Company names are >prefera- ensured consideration by the examiner (see MPEP § bly< written in capital letters; for personal names the 1871).< family name is >preferably< given first in capital let- When processing an application having an interna- ters and the given names are in mixed case. This helps tional filing date filed prior to January 1, 2004, the to identify the family name.</p><p>1800-91 Rev. 7, July 2008 1845.02 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>**></p><p>Rev. 7, July 2008 1800-92 PATENT COOPERATION TREATY 1845.02</p><p>1800-93 Rev. 7, July 2008 1845.02 MANUAL OF PATENT EXAMINING PROCEDURE</p><p><</p><p>Rev. 7, July 2008 1800-94 PATENT COOPERATION TREATY 1848</p><p>1846 Sections of the Articles, Regula- the international application to the extent that a meaningful search can be carried out without the sequence listing. tions, and Administrative Instruc- (e) Any sequence listing not contained in the international tions Under the PCT Relevant to application as filed, whether furnished in response to an invitation under paragraph (a) or (b) or otherwise, shall not form part of the the International *>Searching Au- international application, but this paragraph shall not prevent the thority< [R-2] applicant from amending the description in relation to a sequence listing pursuant to Article 34(2)(b). PCT Articles 15 - 20 (Appendix T); (f) Where the International Searching Authority finds that PCT Rules 33 - 47 (Appendix T); and the description does not comply with Rule 5.2(b), it shall invite Administrative Instructions Sections 501 - *>518< the applicant to submit the required correction. Rule 26.4 shall apply mutatis mutandis to any correction offered by the applicant. (Appendix AI). The International Searching Authority shall transmit the correc- ** tion to the receiving Office and to the International Bureau. 1848 Sequence Listings and Tables Re- PCT Administrative Instruction Section 513. lated to Sequence Listings [R-6] Sequence Listings</p><p>PCT Rule 13ter. (a) Where the International Searching Authority receives a Nucleotide and/or Amino Acid Sequence Listings correction of a defect under Rule 13ter.1(f), it shall: (i) indelibly mark, in the upper right-hand corner of each 13ter.1.Procedure Before the International Searching replacement sheet, the international application number and the Authority date on which that sheet was received; (a) Where the international application contains disclosure (ii) indelibly mark, in the middle of the bottom margin of of one or more nucleotide and/or amino acid sequences, the Inter- each replacement sheet, the words “SUBSTITUTE SHEET national Searching Authority may invite the applicant to furnish to (*>Rule< 13ter.1(f))” or their equivalent in the language of publi- it, for the purposes of the international search, a sequence listing cation of the international application; in electronic form complying with the standard provided for in the (iii)indelibly mark on the letter containing the correction, Administrative Instructions, unless such listing in electronic form or accompanying any replacement sheet, the date on which that is already available to it in a form and manner acceptable to it, and letter was received; to pay to it, where applicable, the late furnishing fee referred to (iv) keep in its files a copy of the letter containing the cor- paragraph (c), within a time limit fixed in the invitation. rection or, when the correction is contained in a replacement (b) Where at least part of the international application is sheet, the replaced sheet, a copy of the letter accompanying the filed on paper and the International Searching Authority finds that replacement sheet, and a copy of the replacement sheet; the description does not comply with Rule 5.2(a), it may invite the (v) promptly transmit any letter and any replacement applicant to furnish, for the purposes of the international search, a sheet to the International Bureau, and a copy thereof to the receiv- sequence listing in paper form complying with the standard pro- ing Office. vided for in the Administrative Instructions, unless such listing in (b) Where the international search report and the written paper form is already available to it in a form and manner accept- opinion of the International Searching Authority are based on a able to it, whether or not the furnishing of a sequence listing in sequence listing that was not contained in the international appli- electronic form is invited under paragraph (a), and to pay, where cation as filed but was furnished subsequently to the International applicable, the late furnishing fee referred to in paragraph (c), Searching Authority, the international search report and the writ- within a time limit fixed in the invitation. ten opinion of the International Searching Authority shall so indi- (c) The furnishing of a sequence listing in response to an cate. invitation under paragraph (a) or (b) may be subjected by the (c) Where a meaningful international search cannot be car- International Searching Authority to the payment to it, for its own ried out and a meaningful written opinion, as to whether the benefit, of a late furnishing fee whose amount shall be determined claimed invention appears to be novel, to involve an inventive by the International Searching Authority but shall not exceed 25% step (to be non-obvious) and to be industrially applicable, cannot of the international filing fee referred to in item 1 of the Schedule be established because a sequence listing is not available to the of Fees, not taking into account any fee for each sheet of the inter- International Searching Authority in the required form, that national application in excess of 30 sheets, provided that a late Authority shall so state in the international search report or decla- furnishing fee may be required under either paragraph (a) or (b) ration referred to in Article 17(2)(a), and in the written opinion. but not both. (d) The International Searching Authority shall indelibly (d) If the applicant does not, within the time limit fixed in mark, in the upper right-hand corner of the first sheet of any the invitation under paragraph (a) or (b), furnish the required sequence listing on paper which was not contained in the interna- sequence listing and pay any required late furnishing fee, the tional application as filed but was furnished subsequently to that International Searching Authority shall only be required to search Authority, the words “SUBSEQUENTLY FURNISHED </p><p>1800-95 Rev. 7, July 2008 1850 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>SEQUENCE LISTING” or their equivalent in the language of Instructions Section 801(c) permits a receiving Office publication of the international application. that has not notified the IB under Administrative (e) The International Searching Authority shall keep in its Instructions Section 801(b) to decide in a particular files: case to accept such sequence listing filings. The RO/ (i) any sequence listing on paper which was not con- tained in the international application as filed but was furnished US will accept applications where the sequence list- subsequently to that Authority; and ing and/or table is filed using CD-R or CD-ROM as (ii) any sequence listing in electronic form furnished for the electronic medium, and where no paper copy of the purposes of the international search. the sequence listing part is submitted. The application must be filed in accordance with the Guidelines set Where an international application contains disclo- forth in MPEP § 1823.02, subsection II. A in order to sure of a nucleotide and/or amino acid sequence, the be accepted. There may be significant cost savings if description must contain a listing of the sequence such a submission is accepted. If accepted under the complying with the standard specified in Annex C of USPTO’s Guidelines, the electronic submission the Administrative Instructions. See MPEP § 1823.02. counts as 400 sheets in addition to the actual number If the International Searching Authority finds that an of sheets of the Request, description excluding the international application contains such a disclosure sequence listing part thereof, claims, abstract and but that the description does not include such a listing drawings. Four copies of the electronic submission of or that the listing included does not comply with that the sequence listing are required. One copy goes to standard, the International Searching Authority may the IB as part of the Record copy; the second copy invite the applicant to furnish a listing complying with becomes part of the Home copy; the third copy that standard. becomes part of the Search copy; and the fourth copy If the International Searching Authority finds that a goes to the Scientific and Technical Information Cen- sequence listing is not in an electronic form provided ter (STIC) as the electronic form (also known as the for in the Administrative Instructions, it may invite computer readable form (CRF). Three copies of the the applicant to furnish a listing to it in such a form. electronic submission of any table related to the An invitation from the International Searching sequence listing are required. One copy goes to the IB Authority to furnish a sequence listing complying as part of the record copy; the second copy becomes with the standard specified in the Administrative part of the home copy; the third copy becomes part of Instructions, will specify a time limit for complying the search copy. See MPEP § 1823.02. with the invitation. Any sequence listing furnished by the applicant in response to the invitation must be 1850 Unity of Invention Before the Inter- accompanied by a statement to the effect that the list- national Searching Authority [R-7] ing does not include matter which goes beyond the disclosure in the international application as filed. If PCT Rule 13. the applicant does not comply within that time limit, Unity of Invention the search undertaken by the International Searching Authority may be *>limited<. 13.1.Requirement If the applicant wishes to include such a listing in The international application shall relate to one invention only the text of the description itself, appropriate amend- or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). ments may be made later under PCT Article 34, pro- vided that the applicant files a Demand for 13.2.Circumstances in Which the Requirement of Unity of international preliminary examination. Invention Is to Be Considered Fulfilled The United States Receiving Office has not notified Where a group of inventions is claimed in one and the same the International Bureau under Administrative international application, the requirement of unity of invention Instructions Section 801(b) that it is prepared to referred to in Rule 13.1 shall be fulfilled only when there is a tech- accept the filing in electronic form of the sequence nical relationship among those inventions involving one or more of the same or corresponding special technical features. The listing and/or any tables related to the sequence listing expression “special technical features” shall mean those technical of international applications under Administrative features that define a contribution which each of the claimed Instructions Section 801(a). However, Administrative inventions, considered as a whole, makes over the prior art.</p><p>Rev. 7, July 2008 1800-96 PATENT COOPERATION TREATY 1850</p><p>13.3.Determination of Unity of Invention Not Affected by the total or partial reimbursement to the applicant of the additional Manner of Claiming fees. On the request of the applicant, the text of both the protest The determination whether a group of inventions is so linked and the decision thereon shall be notified to the designated Offices as to form a single general inventive concept shall be made with- together with the international search report. The applicant shall out regard to whether the inventions are claimed in separate submit any translation thereof with the furnishing of the transla- claims or as alternatives within a single claim. tion of the international application required under Article 22. (d) The membership of the review body referred to in para- 13.4.Dependent Claims graph (c) may include, but shall not be limited to, the person who Subject to Rule 13.1, it shall be permitted to include in the made the decision which is the subject of the protest. same international application a reasonable number of dependent (e) The examination of a protest referred to in paragraph (c) claims, claiming specific forms of the invention claimed in an may be subjected by the International Searching Authority to the independent claim, even where the features of any dependent payment to it, for its own benefit, of a protest fee. Where the claim could be considered as constituting in themselves an inven- applicant has not, within the time limit under Rule 40.1(iii), paid tion. any required protest fee, the protest shall be considered not to have been made and the International Searching Authority shall so 13.5.Utility Models declare. The protest fee shall be refunded to the applicant where Any designated State in which the grant of a utility model is the review body referred to in paragraph (c) finds that the protest sought on the basis of an international application may, instead of was entirely justified. Rules 13.1 to 13.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility 37 CFR 1.475. Unity of invention before the International models once the processing of the international application has Searching Authority, the International Preliminary started in that State, provided that the applicant shall be allowed at Examining Authority and during the national stage. least two months from the expiration of the time limit applicable (a) An international and a national stage application shall under Article 22 to adapt his application to the requirements of the relate to one invention only or to a group of inventions so linked said provisions of the national law. as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an PCT Rule 40. application, the requirement of unity of invention shall be fulfilled Lack of Unity of Invention (International Search) only when there is a technical relationship among those inventions involving one or more of the same or corresponding special tech- 40.1Invitation to Pay Additional Fees; Time Limit nical features. The expression “special technical features” shall The invitation to pay additional fees provided for in Article mean those technical features that define a contribution which 17(3)(a) shall: each of the claimed inventions, considered as a whole, makes over (i) specify the reasons for which the international applica- the prior art. tion is not considered as complying with the requirement of unity (b) An international or a national stage application contain- of invention; ing claims to different categories of invention will be considered (ii) invite the applicant to pay the additional fees within one to have unity of invention if the claims are drawn only to one of month from the date of the invitation, and indicate the amount of the following combinations of categories: those fees to be paid; and (1) A product and a process specially adapted for the (iii)invite the applicant to pay, where applicable, the protest manufacture of said product; or fee referred to in Rule 40.2(e) within one month from the date of (2) A product and a process of use of said product; or the invitation, and indicate the amount to be paid. (3) A product, a process specially adapted for the manu- facture of the said product, and a use of the said product; or 40.2.Additional Fees (4) A process and an apparatus or means specifically (a) The amount of the additional fees due for searching designed for carrying out the said process; or under Article 17(3)(a) shall be determined by the competent Inter- (5) A product, a process specially adapted for the manu- national Searching Authority. facture of the said product, and an apparatus or means specifically (b) The additional fees due for searching under Article designed for carrying out the said process. 17(3)(a) shall be payable direct to the International Searching (c) If an application contains claims to more or less than one Authority. of the combinations of categories of invention set forth in para- (c) Any applicant may pay the additional fees under protest, graph (b) of this section, unity of invention might not be present. that is, accompanied by a reasoned statement to the effect that the (d) If multiple products, processes of manufacture or uses international application complies with the requirement of unity are claimed, the first invention of the category first mentioned in of invention or that the amount of the required additional fees is the claims of the application and the first recited invention of each excessive. Such protest shall be examined by a review body con- of the other categories related thereto will be considered as the stituted in the framework of the International Searching Authority, main invention in the claims, see PCT Article 17(3)(a) and which, to the extent that it finds the protest justified, shall order § 1.476(c).</p><p>1800-97 Rev. 7, July 2008 1850 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(e) The determination whether a group of inventions is so the claims to different categories of invention in the linked as to form a single general inventive concept shall be made application and permit retention in the same applica- without regard to whether the inventions are claimed in separate tion for searching and/or preliminary examination, claims or as alternatives within a single claim. claims to the categories which meet the requirements I. THE REQUIREMENT FOR “UNITY OF of PCT Rule 13.2. INVENTION” PCT Rule 13.2, as it was modified effective July 1, Any international application must relate to one 1992, no longer specifies the combinations of catego- invention only or to a group of inventions so linked as ries of invention which are considered to have unity of to form a single general inventive concept (PCT Arti- invention. Those categories, which now appear as a cle 3(4)(iii) and 17(3)(a), PCT Rule *>13.1<, and 37 part of Chapter 10 of the International Search and Pre- CFR 1.475). Observance of this requirement is liminary Examination Guidelines, may be obtained checked by the International Searching Authority and from the Patent Examiner’s Toolkit link or from WI- may be relevant in the national (or regional) phase. PO’s website (www.wipo.int/pct/en/texts/gd- The decision in Caterpillar Tractor Co. v. Commis- lines.htm). The categories of invention in former PCT sioner of Patents and Trademarks, 650 F. Supp. 218, Rule 13.2 have been replaced with a statement de- 231 USPQ 590 (E.D. Va. 1986) held that the Patent scribing the method for determining whether the re- and Trademark Office interpretation of 37 CFR quirement of unity of invention is satisfied. Unity of 1.141(b)(2) as applied to unity of invention determi- invention exists only when there is a technical rela- nations in international applications was not in accor- tionship among the claimed inventions involving one dance with the Patent Cooperation Treaty and its or more special technical features. The term “special implementing regulations. In the Caterpillar interna- technical features” is defined as meaning those techni- tional application, the USPTO acting as an Interna- cal features that define a contribution which each of tional Searching Authority, had held lack of unity of the inventions considered as a whole, makes over the invention between a set of claims directed to a process prior art. The determination is made based on the con- for forming a sprocket and a set of claims drawn to an tents of the claims as interpreted in light of the de- apparatus (die) for forging a sprocket. The court scription and drawings. Chapter 10 of the stated that it was an unreasonable interpretation to say International Search and Preliminary Examination that the expression “specifically designed” as found in Guidelines also contains examples concerning unity former PCT Rule 13.2(ii) means that the process and of invention. apparatus have unity of invention if they can only be used with each other, as was set forth in MPEP § II. DETERMINATION OF “UNITY OF IN- 806.05(e). VENTION” Therefore, when the Office considers international applications as an International Searching Authority, An international application should relate to only as an International Preliminary Examining Authority, one invention or, if there is more than one invention, and during the national stage as a Designated or the inclusion of those inventions in one international Elected Office under 35 U.S.C. 371, PCT Rule 13.1 application is only permitted if all inventions are so and 13.2 will be followed when considering unity of linked as to form a single general inventive concept invention of claims of different categories without (PCT Rule 13.1). With respect to a group of inven- regard to the practice in national applications filed tions claimed in an international application, unity of under 35 U.S.C. 111. No change was made in restric- invention exists only when there is a technical rela- tion practice in United States national applications tionship among the claimed inventions involving one filed under 35 U.S.C. 111 outside the PCT. or more of the same or corresponding special techni- In applying PCT Rule 13.2 to international applica- cal features. The expression “special technical fea- tions as an International Searching Authority, an tures” is defined in PCT Rule 13.2 as meaning those International Preliminary Examining Authority and to technical features that define a contribution which national stage applications under 35 U.S.C. 371, each of the inventions, considered as a whole, makes examiners should consider for unity of invention all over the prior art. The determination is made on the </p><p>Rev. 7, July 2008 1800-98 PATENT COOPERATION TREATY 1850 contents of the claims as interpreted in light of the considered on its merits, the benefit of any doubt description and drawings (if any). being given to the applicant. Whether or not any particular technical feature From the preceding paragraphs it is clear that the makes a “contribution” over the prior art, and there- decision with respect to unity of invention rests with fore constitutes a “special technical feature,” should the International Searching Authority or the Interna- be considered with respect to novelty and inventive tional Preliminary Examining Authority. However, step. For example, a document discovered in the inter- the International Searching Authority or the Interna- national search shows that there is a presumption of tional Preliminary Examining Authority should not lack of novelty or inventive step in a main claim, so raise objection of lack of unity of invention merely that there may be no technical relationship left over because the inventions claimed are classified in sepa- the prior art among the claimed inventions involving rate classification groups or merely for the purpose of one or more of the same or corresponding special restricting the international search to certain classifi- technical features, leaving two or more dependent cation groups. claims without a single general inventive concept. Unity of invention has to be considered in the first Lack of unity of invention may be directly evident place only in relation to the independent claims in an “a priori,” that is, before considering the claims in international application and not the dependent relation to any prior art, or may only become apparent claims. By “dependent” claim is meant a claim which “a posteriori,” that is, after taking the prior art into contains all the features of one or more other claims consideration. For example, independent claims to A and contains a reference, preferably at the beginning, + X, A + Y, X + Y can be said to lack unity a priori as to the other claim or claims and then states the addi- there is no subject matter common to all claims. In the tional features claimed (PCT Rule 6.4). The examiner case of independent claims to A + X and A + Y, unity should bear in mind that a claim may also contain a of invention is present a priori as A is common to reference to another claim even if it is not a dependent both claims. However, if it can be established that A is claim as defined in PCT Rule 6.4. One example of known, there is lack of unity a posteriori, since A (be this is a claim referring to a claim of a different cate- it a single feature or a group of features) is not a tech- gory (for example, “Apparatus for carrying out the nical feature that defines a contribution over the prior process of Claim 1 ...,” or “Process for the manufac- art. ture of the product of Claim 1 ...”). Similarly, a claim Although lack of unity of invention should cer- to one part referring to another cooperating part, for tainly be raised in clear cases, it should neither be example, “plug for cooperation with the socket of raised nor maintained on the basis of a narrow, literal Claim 1 ...”) is not a dependent claim. or academic approach. There should be a broad, prac- If the independent claims avoid the prior art and tical consideration of the degree of interdependence of satisfy the requirement of unity of invention, no prob- the alternatives presented, in relation to the state of lem of lack of unity arises in respect of any claims the art as revealed by the international search or, in that depend on the independent claims. In particular, it accordance with PCT Article 33(6), by any additional does not matter if a dependent claim itself contains a document considered to be relevant. If the common further invention. For example, suppose claim 1 matter of the independent claims is well known and claims a turbine rotor blade shaped in a specified the remaining subject matter of each claim differs manner such that it avoids the prior art, while claim 2 from that of the others without there being any unify- is for a “turbine rotor blade as claimed in claim 1” and ing novel inventive concept common to all, then produced from alloy Z. Then no objection under PCT clearly there is lack of unity of invention. If, on the Rule 13 arises either because alloy Z was new and its other hand, there is a single general inventive concept composition was not obvious and thus the alloy itself that appears novel and involves inventive step, then already contains the essential features of an indepen- there is unity of invention and an objection of lack of dent possibly later patentable invention, or because, unity does not arise. For determining the action to be although alloy Z was not new, its application in taken by the examiner between these two extremes, respect of turbine rotor blades was not obvious, and rigid rules cannot be given and each case should be thus represents an independent invention in conjunc-</p><p>1800-99 Rev. 7, July 2008 1850 MANUAL OF PATENT EXAMINING PROCEDURE tion with turbine rotor blades. As another example, 13.3 does not prevent an Authority from objecting to suppose that the main claim defines a process avoid- alternatives being contained within a single claim on ing the prior art for the preparation of a product A the basis of considerations such as clarity, the concise- starting from a product B and the second claim reads: ness of claims or the claims fee system applicable in “Process according to claim 1 characterized by pro- that Authority. ducing B by a reaction using the product C.” In this Objection of lack of unity of invention does not case, too, no objection arises under PCT Rule 13, normally arise if the combination of a number of indi- whether or not the process for preparation of B from vidual elements is claimed in a single claim (as C is novel and inventive, since claim 2 contains all the opposed to distinct embodiments as discussed in the features of claim 1. Equally, no problem arises in the paragraph immediately above), even if these elements case of a genus/species situation where the genus seem unrelated when considered individually. claim avoids the prior art, provided the genus claim is directed only to alternatives of a similar nature and III. ILLUSTRATIONS OF PARTICULAR SIT- the species falls entirely within the genus. To deter- UATIONS mine if a genus claim is directed only to alternatives “of a similar nature,” see subsection III.B. below. There are three particular situations for which the Moreover, no problem arises in the case of a combina- method for determining unity of invention contained tion/subcombination situation where the subcombina- in PCT Rule 13.2 is explained in greater detail: tion claim avoids the prior art and the combination (A) Combinations of different categories of claim includes all the features of the subcombination. claims; If, however, an independent claim does not avoid (B) So-called “Markush practice”; and the prior art, then the question whether there is still an (C) Intermediate and final products. inventive link between all the claims dependent on that claim needs to be carefully considered. If there is Principles for the interpretation of the method con- no link remaining, an objection of lack of unity a pos- tained in PCT Rule 13.2, in the context of each of teriori (that is, arising only after assessment of the those situations are set out below. It is understood that prior art) may be raised. Similar considerations apply the principles set out below are, in all instances, inter- in the case of a genus/species or combination/sub- pretations of and not exceptions to the requirements combination situation. of PCT Rule 13.2. This method for determining whether unity of Examples to assist in understanding the interpreta- invention exists is intended to be applied even before tion on the three areas of special concern referred to in the commencement of the international search. Where the preceding paragraph are set out in Chapter 10 of a search of the prior art is made, an initial determina- the International Search and Preliminary Examination tion of unity of invention, based on the assumption Guidelines which can be obtained from the Patent that the claims avoid the prior art, may be reconsid- Examiner’s Toolkit link or from WIPO’s web site ered on the basis of the results of the search of the (www.wipo.int/pct/en/texts/gdlines.htm). prior art. Alternative forms of an invention may be claimed A. Combinations of Different Categories of either in a plurality of independent claims, or in a sin- Claims gle claim. In the latter case, the presence of the inde- The method for determining unity of invention pendent alternatives may not be immediately under PCT Rule 13 shall be construed as permitting, apparent. In either case, however, the same criteria in particular, the inclusion of any one of the following should be applied in deciding whether there is unity of combinations of claims of different categories in the invention. Accordingly, lack of unity of invention same international application: may exist within a single claim. Where the claim con- tains distinct embodiments that are not linked by a (A) In addition to an independent claim for a single general inventive concept, the objection as to given product, an independent claim for a process lack of unity of invention should be raised. PCT Rule specially adapted for the manufacture of the said </p><p>Rev. 7, July 2008 1800-100 PATENT COOPERATION TREATY 1850 product, and an independent claim for a use of the of unity of invention be made without regard to said product; or whether the inventions are claimed in separate claims (B) In addition to an independent claim for a or as alternatives within a single claim), with the pro- given process, an independent claim for an apparatus visions set out above (thus resulting in a set based on or means specifically designed for carrying out the each of a number of independent claims in the same said process; or category under PCT Rule 13.3). The proliferation of (C) In addition to an independent claim for a claims arising from a combined effect of this kind given product, an independent claim for a process should be accepted only exceptionally. For example, specially adapted for the manufacture of the said independent claims are permissible for two related product and an independent claim for an apparatus or articles such as a transmitter and receiver; however, it means specifically designed for carrying out the said does not follow that an applicant may include also, in process. the one international application, four additional inde- pendent claims: two for a process for the manufacture A process is specially adapted for the manufacture of the transmitter and the receiver, respectively, and of a product if it inherently results in the product and two for use of the transmitter and receiver, respec- an apparatus or means is specifically designed for car- tively. rying out a process if the contribution over the prior A single general inventive concept must link the art of the apparatus or means corresponds to the con- claims in the various categories and in this connection tribution the process makes over the prior art. the wording above should be carefully noted. The link Thus, a process shall be considered to be specially between product and process in (A) is that the process adapted for the manufacture of a product if the must be “specially adapted for the manufacture of” claimed process inherently results in the claimed the product. Similarly, in (B), the apparatus or means product with the technical relationship being present claimed must be “specifically designed for” carrying between the claimed product and claimed process. out the process. Likewise, in (C), the process must be The words “specially adapted” are not intended to “specially adapted for the manufacture of” the product imply that the product could not also be manufactured and the apparatus must be “specifically designed for” by a different process. carrying out the process. In combinations (A) and (C), Also an apparatus or means shall be considered to the emphasis is on, and the essence of the invention be specifically designed for carrying out a claimed should primarily reside in, the product, whereas in process if the contribution over the prior art of the combination (B) the emphasis is on, and the invention apparatus or means corresponds to the contribution should primarily reside in, the process. (See Examples the process makes over the prior art. Consequently, it in Chapter 10 of the International Search and Prelimi- would not be sufficient that the apparatus or means is nary Examination Guidelines which can be obtained merely capable of being used in carrying out the from the Patent Examiner’s Toolkit link or from claimed process. However, the expression “specifi- WIPO’s web site (www.wipo.int/pct/en/texts/ cally designed” does not imply that the apparatus or gdlines.htm.)) means could not be used for carrying out another pro- cess, nor that the process could not be carried out B. “Markush Practice” using an alternative apparatus or means. More extensive combinations than those set forth The situation involving the so-called Markush prac- above should be looked at carefully to ensure that the tice wherein a single claim defines alternatives (chem- requirements of both PCT Rule 13 (unity of inven- ical or non-chemical) is also governed by PCT Rule tion) and PCT Article 6 (conciseness of claims) are 13.2. In this special situation, the requirement of a satisfied. In particular, while a single set of indepen- technical interrelationship and the same or corre- dent claims according to one of (A), (B), or (C) above sponding special technical features as defined in PCT is always permissible, it does not require the Interna- Rule 13.2, shall be considered to be met when the tional Authority to accept a plurality of such sets alternatives are of a similar nature. which could arise by combining the provisions of When the Markush grouping is for alternatives of PCT Rule 13.3 (which provides that the determination chemical compounds, they shall be regarded as being </p><p>1800-101 Rev. 7, July 2008 1850 MANUAL OF PATENT EXAMINING PROCEDURE of a similar nature where the following criteria are C. Intermediate and Final Products fulfilled: The situation involving intermediate and final prod- (A) All alternatives have a common property or ucts is also governed by PCT Rule 13.2. activity; and The term “intermediate” is intended to mean inter- mediate or starting products. Such products have the (B)(1) A common structure is present, i.e., a sig- ability to be used to produce final products through a nificant structural element is shared by all of the alter- physical or chemical change in which the intermediate natives; or loses its identity. (B)(2) In cases where the common structure can- Unity of invention shall be considered to be present not be the unifying criteria, all alternatives belong to a in the context of intermediate and final products recognized class of chemical compounds in the art to where the following two conditions are fulfilled: which the invention pertains. (A) The intermediate and final products have the In paragraph (B)(1), above, the words “significant same essential structural element, in that: structural element is shared by all of the alternatives” (1) The basic chemical structures of the inter- refer to cases where the compounds share a common mediate and the final products are the same, or chemical structure which occupies a large portion of (2) The chemical structures of the two prod- their structures, or in case the compounds have in ucts are technically closely interrelated, the intermedi- common only a small portion of their structures, the ate incorporating an essential structural element into commonly shared structure constitutes a structurally the final product; and distinctive portion in view of existing prior art, and (B) The intermediate and final products are tech- the common structure is essential to the common nically interrelated, this meaning that the final product property or activity. The structural element may be a is manufactured directly from the intermediate or is single component or a combination of individual separated from it by a small number of intermediates components linked together. all containing the same essential structural element. In paragraph (B)(2), above, the words “recognized Unity of invention may also be considered to be class of chemical compounds” mean that there is an present between intermediate and final products of expectation from the knowledge in the art that mem- which the structures are not known, for example, as bers of the class will behave in the same way in the between an intermediate having a known structure context of the claimed invention. In other words, each and a final product the structure of which is not member could be substituted one for the other, with known, or as between an intermediate of unknown the expectation that the same intended result would be structure and a final product of unknown structure. In achieved. order to satisfy unity in such cases, there must be suf- The fact that the alternatives of a Markush grouping ficient evidence to lead one to conclude that the inter- can be differently classified should not, taken alone, mediate and final products are technically closely be considered to be justification for a finding of a lack interrelated as, for example, when the intermediate of unity of invention. contains the same essential element as the final prod- When dealing with alternatives, if it can be shown uct or incorporates an essential element into the final that at least one Markush alternative is not novel over product. the prior art, the question of unity of invention should It is possible to accept in a single international be reconsidered by the examiner. Reconsideration application different intermediate products used in does not necessarily imply that an objection of lack of different processes for the preparation of the final unity shall be raised. (See Examples in Chapter 10 of product, provided that they have the same essential the International Search and Preliminary Examination structural element. Guidelines which can be obtained from the Patent The intermediate and final products shall not be Examiner’s Toolkit link or from WIPO’s web site separated, in the process leading from one to the (www.wipo.int/pct/en/texts/gdlines.htm.)) other, by an intermediate which is not new.</p><p>Rev. 7, July 2008 1800-102 PATENT COOPERATION TREATY 1850</p><p>If the same international application claims differ- Authority) for the additional invention(s) together ent intermediates for different structural parts of the with that for the invention first mentioned. For inter- final product, unity shall not be regarded as being national applications having a filing date on or after present between the intermediates. January 1, 2004, in considering the amount of work If the intermediate and final products are families involved, the examiner should take into account the of compounds, each intermediate compound shall cor- time needed to create the written opinion as well as respond to a compound claimed in the family of the that needed to perform the search, since even when final products. However, some of the final products the additional work with regard to the search is negli- may have no corresponding compound in the family gible, the opposite may be the case for the written of the intermediate products so that the two families opinion of the International Searching Authority and need not be absolutely congruent. therefore justify requesting the additional fees. If it is As long as unity of invention can be recognized considered that the total additional work does not jus- applying the above interpretations, the fact that, tify requesting additional fees, all results are included besides the ability to be used to produce final prod- in the international search report (and where applica- ucts, the intermediates also exhibit other possible ble, the written opinion) without inviting the applicant effects or activities shall not affect the decision on to pay an additional search fee in respect of the addi- unity of invention. (See Examples in Chapter 10 of tional inventions searched but stating the finding of the International Search and Preliminary Examination lack of unity of invention. Guidelines which can be obtained from the Patent Examiner’s Toolkit link or from WIPO’s web site V. INVITATION TO PAY ADDITIONAL (www.wipo.int/pct/en/texts/gdlines.htm.)) FEES</p><p>IV. SEARCH OF ADDITIONAL INVENTIONS The search fee which the applicant is required to WITHOUT PAYMENT OF FEES pay is intended to compensate the International Searching Authority for carrying out an international If little or no additional search effort is required, search (and for international applications having a fil- reasons of economy may make it advisable for the ing date on or after January 1, 2004, for preparing a examiner, while making the search for the main written opinion), but only where the international invention, to search at the same time, despite the non- application meets the “requirement of unity of inven- payment of additional fees, one or more additional tion”. That means that the international application inventions in the classification units consulted for the must relate to only one invention or must relate to a main invention. The international search for such group of inventions which are so linked as to form a additional inventions will then have to be completed single general inventive concept (PCT Articles in any further classification units which may be rele- 3(4)(iii) and 17(3)(a)). vant, when the additional search fees have been paid. If the International Searching Authority finds that This situation may occur when the lack of unity of the international application does not comply with the invention is found either “a priori” or “a posteriori.” requirement of unity of invention, the applicant will When the examiner finds lack of unity of invention, be informed of the lack of unity of invention by a normally, the applicant is invited to pay fees for the communication preceding the issuance of the interna- search of additional inventions. In exceptional cir- tional search report (and for international applications cumstances, however, the examiner may be able to having a filing date on or after January 1, 2004, a establish both an international search (and for interna- written opinion of the International Searching Author- tional applications having a filing date on or after Jan- ity), which contains an invitation to pay additional uary 1, 2004, a written opinion) covering more than search fees. (Form PCT/ISA/206 or USPTO/299 (tele- one invention with negligible additional work, in par- phone practice), see below). This invitation specifies ticular, when the inventions are conceptually very the reasons the international application is not consid- close. In those cases, the examiner may decide to ered to comply with the requirement of unity of complete the international search (and where applica- invention, identifies the separate inventions, and indi- ble, the written opinion of the International Searching cates the number of additional search fees and the </p><p>1800-103 Rev. 7, July 2008 1850 MANUAL OF PATENT EXAMINING PROCEDURE amount to be paid (PCT Rules 40.1, 40.2(a) and (b)). cant has paid any additional fee within the prescribed The International Searching Authority cannot con- time limits. sider the application withdrawn for lack of unity of Where, within the prescribed time limit, the appli- invention, nor invite the applicant to amend the cant does not pay any additional fees or only pays claims, but informs the applicant that, if the interna- some of the additional fees indicated, certain parts of tional search report is to be drawn up in respect of the international application will consequently not be those inventions present other than the first men- searched. The lack of an international search report in tioned, then the additional fees must be paid within respect of such parts of the international application one month from the date of the invitation to pay addi- will, in itself, have no influence on the validity of the tional fees (PCT Rule 40.1). Such additional fees are international application and processing of the inter- payable directly to the International Searching national application will continue, both in the interna- Authority which is conducting the search, i.e., the tional and in the national (regional) phases. The United States Patent and Trademark Office (USPTO), unsearched claims, upon entry into the national stage, will be considered by the examiner and may be the the European Patent Office (EPO), or the Korean subject of a holding of lack of unity of invention. Intellectual Property Office (KIPO). The search fee amounts for the USPTO, EPO, and KIPO are found in VI. PREPARATION OF THE INVITATION TO each weekly edition of the Official Gazette. PAY ADDITIONAL FEES In the invitation to pay additional fees, the Interna- An Invitation to Pay Additional Fees and, Where tional Searching Authority should set out a logically Applicable, Protest Fee (Form PCT/ISA/206) is used presented, technical reasoning containing the basic to invite the applicant to pay additional search fees. In considerations behind the finding of lack of unity the space provided on form PCT/ISA/206, the exam- (PCT Rule 40.1). iner should indicate the number of inventions claimed Since these payments must take place within the in the international application covering which partic- time limit set by the International Searching Authority ular claims and explain why the international applica- so as to enable the observation of the time limit for tion is not considered to comply with the establishing the international search report set by PCT requirements of unity of invention. The examiner Rule 42, the International Searching Authority should should then indicate the total amount of additional fees required for the search of all claimed inventions. endeavor to ensure that international searches be made as early as possible after the receipt of the Any claims found to be unsearchable under PCT search copy. The International Searching Authority Article 17(2)(b) are not included with any invention. Unsearchable claims include the following: finally draws up the international search report (and for international applications having a filing date on (A) claims drawn to subject matter not required to or after January 1, 2004, the written opinion of the be searched by the International Searching Authority International Searching Authority) on those parts of (see MPEP § 1843.02); the international application which relate to the “main (B) claims in respect of which a meaningful invention,” that is, the invention or the group of search cannot be carried out (see MPEP § 1843.03); inventions so linked as to form a single general inven- (C) multiple dependent claims which do not com- tive concept first mentioned in the claims (PCT Arti- ply with PCT Rule 6.4(a) (see MPEP § 1843.03). cle 17(3)(a)). Moreover, the international search report (and for international applications having a fil- In the box provided at the top of the form, the time ing date on or after January 1, 2004, the written opin- limit of one month for response is set according to ion of the International Searching Authority) will be PCT Rule 40.1. Extensions of time are not permitted. established also on those parts of the international VII. AUTHORIZED OFFICER application which relate to any invention (or any group of inventions so linked as to form a single gen- Form PCT/ISA/206 must be signed by an examiner eral inventive concept) in respect of which the appli- with at least partial signatory authority.</p><p>Rev. 7, July 2008 1800-104 PATENT COOPERATION TREATY 1850</p><p>VIII. TELEPHONIC UNITY PRACTICE IX. FORM PARAGRAPHS FOR LACK OF UNITY IN INTERNATIONAL APPLICA- Telephone practice may be used to allow applicants TIONS to pay additional fees if **> (A) Applicant or applicant’s legal representative has a USPTO deposit account, ¶ 18.05 Heading for Lack of Unity Action for PCT Applications During the International Phase (Including (B) Applicant or the legal representative orally Species) agrees to charge the additional fees to the account, and REQUIREMENT FOR UNITY OF INVENTION (C) A complete record of the telephone conversa- As provided in 37 CFR 1.475(a), an international application tion is included with the international search report shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement including: of unity of invention”). Where a group of inventions is claimed in (1) Examiner’s name; an international application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among (2) Authorizing attorney’s name; those inventions involving one or more of the same or correspond- (3) Date of conversation; ing special technical features. The expression “special technical features” shall mean those technical features that define a contri- (4) Inventions for which additional fees paid; bution which each of the claimed inventions, considered as a and whole, makes over the prior art. (5) Deposit account number and amount to be The determination whether a group of inventions is so linked charged. as to form a single general inventive concept shall be made with- out regard to whether the inventions are claimed in separate When the telephone practice is used in making lack claims or as alternatives within a single claim. See 37 CFR 1.475(e). of unity requirements, it is critical that the examiner orally inform applicant that there is no right to protest When Claims Are Directed to Multiple Processes, Products, the holding of lack of unity of invention for any group and/or Apparatuses: of invention(s) for which no additional search fee has Products, processes of manufacture, processes of use, and been paid. apparatuses are different categories of invention. When an appli- cation includes claims to more than one product, process, or appa- The examiner must further orally advise applicant ratus, the first invention of the category first mentioned in the that any protest to the holding of lack of unity or the claims of the application and the first recited invention of each of amount of additional fee required must be filed in the other categories related thereto will be considered as the “main writing no later than one month from the mailing date invention” in the claims. In the case of non-compliance with unity of the international search report. The examiner of invention and where no additional fees are timely paid, the should fill in the information on Form USPTO/299 international search and/or international preliminary examination, as appropriate, will be based on the main invention in the claims. “Chapter I PCT Telephone Memorandum for Lack of See PCT Article 17(3)(a), 37 CFR 1.475(d), 37 CFR 1.476(c) and Unity” as a record of the telephonic holding of lack of 37 CFR 1.488(b)(3). unity. As provided in 37 CFR 1.475(b), an international application If the applicant or the legal representative or agent containing claims to different categories of invention will be con- sidered to have unity of invention if the claims are drawn only to refuses to either agree to a search limited to the first one of the following combinations of categories: mentioned invention or authorize payment of addi- (1) A product and a process specially adapted for the manu- tional fees over the telephone, or if applicant does not facture of said product; or have a deposit account, the examiner should send a (2) A product and process of use of said product; or written invitation using Form PCT/ISA/206. (3) A product, a process specially adapted for the manufac- If a written invitation is required, the examiner ture of the said product, and a use of the said product; or should, if possible, submit the written invitation to the (4) A process and an apparatus or means specifically designed for carrying out the said process; or Technology Center for review and mailing within 7 (5) A product, a process specially adapted for the manufac- days from the date the international application is ture of the said product, and an apparatus or means specifically charged to the examiner. designed for carrying out the said process.</p><p>1800-105 Rev. 7, July 2008 1850 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Otherwise, unity of invention might not be present. See 37 ¶ 18.07.01 Same or Corresponding Technical Feature CFR 1.475(c). Lacking Among Groups ______[1] lack unity of invention because the groups do not share the same or corresponding technical feature. This application contains the following inventions or groups of inventions which are not so linked as to form a single general Examiner Note: inventive concept under PCT Rule 13.1. 1. This form paragraph may be used, for example, where the claims of Group I are directed to A + B, whereas the claims of Examiner Note: Group II are directed to C + D, and thus the groups do not share a 1. Begin all Lack of Unity actions for PCT applications during technical feature. the international phase (including species) with this heading. 2. In bracket 1: For international applications in the interna- 2. Follow with form paragraphs 18.06 - 18.06.02, 18.07 - tional phase, identify the groups involved by Roman numerals 18.07.03, as appropriate. (e.g., “Groups I and II”) in accordance with the groups listed 3. Use form paragraph 18.18 for lack of unity in U.S. national using form paragraphs 18.06 - 18.06.02. For U.S. national stage stage applications submitted under 35 U.S.C. 371. applications under 35 U.S.C. 371, identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions < have been grouped using form paragraphs 18.06 - 18.06.02, or ¶ 18.06 Lack of Unity - Three Groups of Claims identify the species involved where species have been listed using form paragraph 18.20. Group [1], claim(s) [2], drawn to [3]. Group [4], claim(s) [5], drawn to [6]. ¶ 18.07.02 Shared Technical Feature Does Not Make a Group [7], claim(s) [8], drawn to [9]. Contribution Over the Prior Art Examiner Note: [1] lack unity of invention because even though the inventions 1. In brackets 1, 4 and 7, insert Roman numerals for each of these groups require the technical feature of [2], this technical Group. feature is not a special technical feature as it does not make a con- 2. In brackets 2, 5 and 8, insert respective claim numbers. tribution over the prior art in view of [3]. [4] 3. In brackets 3, 6 and 9, insert respective names of grouped inventions. Examiner Note: 1. In bracket 1: For international applications in the interna- ¶ 18.06.01 Lack of Unity - Two (or Additional) Groups of tional phase, identify the groups involved by Roman numerals Claims (e.g., “Groups I and II”) in accordance with the groups listed Group [1], claim(s) [2], drawn to [3]. using form paragraphs 18.06 - 18.06.02. For U.S. national stage Group [4], claim(s) [5], drawn to [6]. applications under 35 U.S.C. 371, identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions Examiner Note: have been grouped using form paragraphs 18.06 - 18.06.02, or This form paragraph may be used alone or following form identify the species involved where species have been listed using paragraph 18.06. form paragraph 18.20. 2. In bracket 2, identify the technical feature shared by the ¶ 18.06.02 Lack of Unity - One Additional Group of groups. Claims 3. In bracket 3, insert citation of prior art reference(s) demon- Group [1], claim(s) [2], drawn to [3]. strating the shared technical feature does not make a contribution Examiner Note: over the prior art. Whether a particular technical feature makes a “contribution” over the prior art, and, therefore, constitutes a “spe- This form paragraph may be used following either form para- cial technical feature,” is considered with respect to novelty and graph 18.06 or 18.06.01. inventive step. **> 4. In bracket 4, explain how the shared technical feature lacks novelty or inventive step in view of the reference(s). ¶ 18.07 Lack of Unity - Reasons Why Inventions Lack Unity ¶ 18.07.03 Heading – Chemical Compound Alternatives of The groups of inventions listed above do not relate to a single Markush Group Are Not of a Similar Nature general inventive concept under PCT Rule 13.1 because, under Where a single claim defines alternatives of a Markush group, PCT Rule 13.2, they lack the same or corresponding special tech- the requirement of a technical interrelationship and the same or nical features for the following reasons: corresponding special technical features as defined in Rule 13.2, is considered met when the alternatives are of a similar nature. Examiner Note: When the Markush grouping is for alternatives of chemical com- Follow with form paragraphs 18.07.01 through 18.07.03, as pounds, the alternatives are regarded as being of a similar nature appropriate. where the following criteria are fulfilled:</p><p>Rev. 7, July 2008 1800-106 PATENT COOPERATION TREATY 1850</p><p>(A) all alternatives have a common property or activity; (e.g., “Groups I and II”) in accordance with the groups listed AND using form paragraphs 18.06 - 18.06.02. For U.S. national stage (B)(1) a common structure is present, that is, a significant applications under 35 U.S.C. 371, identify the species involved structural element is shared by all of the alternatives; OR where species have been listed using form paragraph 18.20. (B)(2) in cases where the common structure cannot be the 2. In bracket 2, identify common structure. unifying criteria, all alternatives belong to a recognized class of 3. In bracket 3, insert citation of prior art reference(s) relied chemical compounds in the art to which the invention pertains. upon to demonstrate the commonly shared structure is not distinc- tive. The phrase “significant structural element is shared by all of 4. In bracket 4, explain why the compounds do not belong to a the alternatives” refers to cases where the compounds share a recognized class of chemical compounds. common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a ¶ 18.07.03c Alternatives Do Not Share a Common small portion of their structures, the commonly shared structure Structure or Belong to Recognized Class constitutes a structurally distinctive portion in view of existing The chemical compounds of [1] are not regarded as being of prior art, and the common structure is essential to the common similar nature because: (1) all the alternatives do not share a property or activity. common structure and (2) the alternatives do not all belong to a The phrase “recognized class of chemical compounds” means recognized class of chemical compounds. [2] that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context Examiner Note: of the claimed invention, i.e. each member could be substituted 1. In bracket 1: For international applications in the interna- one for the other, with the expectation that the same intended tional phase, identify the groups involved by Roman numerals result would be achieved. (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage Examiner Note: applications under 35 U.S.C. 371, identify the species involved 1. This heading should be used when the chemical alternatives where species have been listed using form paragraph 18.20. of a Markush group are determined to lack unity of invention. 2. In bracket 2, insert reasoning. 2. Follow with form paragraphs listed using form paragraphs 18.07.03a - 18.07.03c, as appropriate. < ¶ 18.07.03a Alternatives Lack Common Property or Activity X. PROTEST PROCEDURE The chemical compounds of [1] are not regarded as being of PCT Administrative Instruction Section 502. similar nature because all of the alternatives do not share a com- Transmittal of Protest Against Payment of Additional Fees mon property or activity. [2] and Decision Thereon Where International Application Is Examiner Note: Considered to Lack Unity of Invention 1. In bracket 1: For international applications in the inter- national phase, identify the groups involved by Roman numerals The International Searching Authority shall transmit to the (e.g., “Groups I and II”) in accordance with the groups listed applicant, preferably at the latest together with the international using form paragraphs 18.06 - 18.06.02. For U.S. national stage search report, any decision which it has taken under Rule 40.2(c) applications under 35 U.S.C. 371, identify the species involved on the protest of the applicant against payment of additional fees where species have been listed using form paragraph 18.20. where the international application is considered to lack unity of 2. In bracket 2, insert reasoning. invention. At the same time, it shall transmit to the International Bureau a copy of both the protest and the decision thereon, as well ¶ 18.07.03b Alternatives Share a Common Structure - as any request by the applicant to forward the texts of both the However, the Common Structure is Not a Significant protest and the decision thereon to the designated Offices. Structural Element and the Alternatives Do Not Belong to a Recognized Class 37 CFR 1.477. Protest to lack of unity of invention before Although the chemical compounds of [1] share a common the International Searching Authority. structure of [2], the common structure is not a significant struc- (a) If the applicant disagrees with the holding of lack of tural element because it represents only a small portion of the unity of invention by the International Searching Authority, addi- compound structures and does not constitute a structurally distinc- tional fees may be paid under protest, accompanied by a request tive portion in view of [3]. Further, the compounds of these for refund and a statement setting forth reasons for disagreement groups do not belong to a recognized class of chemical com- or why the required additional fees are considered excessive, or pounds. [4] both (PCT Rule 40.2(c)). (b) Protest under paragraph (a) of this section will be exam- Examiner Note: ined by the Director or the Director’s designee. In the event that 1. In bracket 1: For international applications in the interna- the applicant’s protest is determined to be justified, the additional tional phase, identify the groups involved by Roman numerals fees or a portion thereof will be refunded.</p><p>1800-107 Rev. 7, July 2008 1851 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(c) An applicant who desires that a copy of the protest and XII. AUTHORIZED OFFICER the decision thereon accompany the international search report when forwarded to the Designated Offices may notify the Interna- Form PCT/ISA/212 must be signed by a TC Direc- tional Searching Authority to that effect any time prior to the issu- tor. See MPEP § 1002.02 (c), item (2). ance of the international search report. Thereafter, such notification should be directed to the International Bureau (PCT XIII. UNITY OF INVENTION - NUCLEOTIDE Rule 40.2(c)). SEQUENCES</p><p>The applicant may protest the allegation of lack of Under 37 CFR 1.475 and 1.499 et seq., when unity of invention or that the number of required addi- claims do not comply with the requirement of unity of tional fees is excessive and request a refund of the invention, i.e., when the claimed subject matter does additional fee(s) paid. If, and to the extent that, the not involve “one or more of the same or correspond- International Searching Authority finds the protest ing special technical features,” 37 CFR 1.475(a), an justified, the fee(s) are refunded (PCT Rule 40.2(c)). additional fee is required to maintain the claims in the (The additional search fees must be paid for any pro- same application. 37 CFR 1.476(b). test to be considered.) Nucleotide sequences encoding the same protein are considered to satisfy the unity of invention stan- Protest of allegation of lack of unity is in the form dard and will continue to be examined together. of a reasoned statement accompanying payment of the Examples concerning Unity of Invention involving additional fee, explaining why the applicant believes biotechnological inventions may be found in Chapter that the requirements of unity of invention are ful- 10 of the International Search and Preliminary Exami- filled and fully taking into account the reasons indi- nation Guidelines which can be obtained from the cated in the invitation to pay additional fees issued by Patent Examiner’s Toolkit link or from the WIPO’s the International Searching Authority. Any such pro- web site (www.wipo.int/pct/en/texts/gdlines.htm). test filed with the U.S. International Searching Authority will be decided by a Technology Center 1851 Identification of Patent Documents Director (MPEP § 1002.02(c) item (2)). To the extent [R-6] applicant’s protest is found to be justified, total or par- tial reimbursement of the additional fee will be made. The examiner, in completing the international On the request of the applicant, the text of both the search report as well as the written opinion and inter- national preliminary examination report, is required to protest and the decision thereon is sent to the desig- cite the references in accordance with the provisions nated Offices together with the international search of Administrative Instructions Sections 503 and 611 report (37 CFR 1.477(c)). and WIPO Standard ST.14. These sections of the Administrative Instructions require reference citations XI. NOTIFICATION OF DECISION ON PRO- to include, in addition to other information which is TEST apparent from the forms which the examiner fills out, an indication of the two-letter country code of the A Notification of Decision of Protest or Declaration country or entity issuing or publishing the document That Protest Considered Not to Have Been Made and the standard code for identifying the kind of (Form PCT/ISA/212) is used by the Technology Cen- patent document. The discussion which follows is ter (TC) to inform the applicant of the decision limited to the identification of patent documents (and regarding applicant’s protest on the payment of addi- nonpatent publications) and a listing of the two-letter tional fees concerning unity of invention. The TC country codes for countries or other entities which checks the appropriate box, i.e., 1 or 2. If box 2 is issue or publish industrial property information. checked, a clear and concise explanation as to why the The standard codes for identifying different kinds protest concerning the unity of invention was found to of patent documents are found in the “WIPO Hand- be unjustified must be given. Since the space is lim- book on Industrial Property Information and Docu- ited, supplemental attachment sheet(s) should be mentation” - WIPO Standard ST.16 which is incorporated whenever necessary. published by the World Intellectual Property Organi-</p><p>Rev. 7, July 2008 1800-108 PATENT COOPERATION TREATY 1851 zation. The listing is extensive. The Special Program Standard ST.16 or, if not indicated on that document, Examiners in each Technology Center (TC) have a as provided in that Standard, if possible; complete copy of Standard ST.16. It is also accessible (D) The name of the patentee or applicant (in cap- on WIPO’s web site **>(www.wipo.int/scit/en/stan- ital letters, where appropriate, abbreviated); dards/standards.htm).< Provided herein is an abbrevi- (E) The date of publication of the cited patent ated version representing the countries and codes document or, in case of a corrected patent document, commonly used by the examiner in preparing search the date of issuance of the corrected patent document reports. as referred to under INID code (48) of WIPO Stan- U.S. patents published before January 2, 2001, are dard ST.9 and, if provided on the document, the sup- Code A documents generally. Beginning with patents plementary correction code as referred to under INID published on January 2, 2001, U.S. patents are Code code (15); B documents. Patent Application Publications, first (F) Where applicable, the pages, columns, lines published on March 15, 2001, are Code A documents. or paragraph numbers where the relevant passages Reexamination certificates published before January appear, or the relevant figures of the drawings. 2, 2001, are Code B documents. Reexamination cer- The following examples illustrate the citation of a tificates published on or after January 2, 2001, are patent document as indicated above: Code C documents. Tables providing a complete list of the kind codes of patents and other documents pub- JP 10-105775 A (NCR INTERNATIONAL INC.) lished by the USPTO are included in MPEP 24 April 1998 (24.04.1998) paragraphs 26 to 30. § 901.04(a). All nonpatent literature documents are DE 3744403 A1 (JOSEK, A.) 29 August 1991 (29- Code N. Numerical designations are sometimes found 08-1991), page 1, abstract. on published documents along with the letter code US 5,635,683 A (MCDERMOTT, R. M. et al.) 03 designation. These should be used by the examiner June 1997 (03/06/1997), column 7, lines 21 to 40. only if such numerical designation is on the docu- ment. Numerical codes along with letter codes can be STANDARD CODE FOR THE IDENTIFICATION found, for example, on certain published patent docu- OF DIFFERENT KINDS OF PATENT DOCU- ments such as the German Offenlegungsschrift and MENTS published international applications. If numerical des- ignations are not provided, the examiner should use The Code, WIPO Standard ST.16, is subdivided only the letter code designation. into mutually exclusive groups of letters. The groups characterize patent documents, nonpatent literature The most commonly cited documents are patents documents (N), and restricted documents (X). Groups and published patent applications. A guideline for the 1-7 comprise letters enabling identification of docu- citation of such documents is listed below. The listing ments pertaining to different publication levels. is indicated in the order in which the elements should be listed.</p><p>In the case of a patent or published patent applica- Use for documents resulting from a tion: patent application and being identified as the primary or major (A) The Office that issued the document, by the Group 1 series (excluding the utility model two letter code (WIPO Standard ST.3); documents of Group 2 and the special (B) The number of the document as given to it by series of patent documents of Group the Office that issued it (for Japanese patent docu- 3, below) ments the indication of the year of the reign of the Emperor must precede the serial number of the patent A First publication level document); B Second publication level (C) The kind of document, by the appropriate symbols as indicated on the document under WIPO C Third publication level</p><p>1800-109 Rev. 7, July 2008 1851 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Use for special types of patent documents or documents derived Use for utility model documents Group 4 from/relating to patent applications Group 2 having a numbering series other than and not covered by Groups 1 to 3 the documents of Group 1 above, as specified below:</p><p>U First publication level W Documents relating to utility model Y Second publication level documents falling in Group 2 and con- taining bibliographic information and Z Third publication level only the text of an abstract and/or claim(s) and, where appropriate, a drawing Use for special series of patent Group 3 documents</p><p>M Medicament patent documents (e.g., Use for series of patent documents Group 5 documents previously published by not covered by Groups 1 to 4, above FR) E First publication level P Plant patent documents (e.g., published by US) F Second publication level S Design patent documents (e.g., pub- G Third publication level lished by US)</p><p>Use for series of patent documents or documents derived from/relating to patent applications not covered by Use for special types of patent Group 6 documents or documents derived Groups 1 to 5 above, according to the Group 4 from/relating to patent applications special requirements of each and not covered by Groups 1 to 3 industrial property office above, as specified below: H L Documents, not covered by letter code I W, relating to patent documents and containing bibliographic information and only the text of an abstract and/or claim(s) and, where appropriate, a Group 7 Other drawing. N Non-patent literature documents R Separately published search reports X Documents restricted to the internal use T Publication, for information or other of industrial property offices purposes, of the translation of the whole or part of a patent document already published by another office or organization</p><p>Rev. 7, July 2008 1800-110 PATENT COOPERATION TREATY 1851</p><p>List of Examples of Patent Documents, Previously and Currently Published, or Intended To Be Patent Documents Identified as Primary or Published, Divided According to Code CODE: A Major Series — First Publication Level</p><p>China Patent application Patent Documents published before the Identified as Primary or CODE: A examination Major Series — First Publication Level Cuba Patent application</p><p>EXAMPLES: Czechoslovakia Patent application Australia Standard or petty patent Czechoslovakia Inventor’s certificate application application Austria Patent application Czech Republic Prihláška Vynálezu (Aufgebot) (Application for the protection of an inven- Belgium Brevet d’invention/ tion — patent) Uitvindingsoctrooi Denmark Almindeligt tilgaenge- Belgium Brevet de perfectionne- lig patentansøgning ment/Verbeteringsoc- trooi Egypt Patent specification Belgium Demande de brevet European Patent - Patent application d’invention/Uitvin Office published with search dingsoctrooiaanvraag report Brazil Pedido de privilégio European Patent Patent application (Unexamined patent Office published without application for inven- search report tion) European Patent Separate publication Bulgaria Patentna zajavka pre- Office of the search report dostavena za publichna Finland Julkiseksi tullut patent- inspektzija (Patent tihakemus-Allmänt application made avail- tillgänglig patentansö- able to the public) kan Canada Patent (prior to October France Brevet d’invention 1, 1989, under previous (old law) Patent Act) France Brevet d’invention Canada Patent application laid premiére et unique open to public inspec- publication tion under amended Patent Act, as of France Certificat d’addition à October 1, 1989) un brevet d’invention, premiére et unique publication</p><p>1800-111 Rev. 7, July 2008 1851 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Patent Documents Patent Documents Identified as Primary or Identified as Primary or CODE: A CODE: A Major Series — First Major Series — First Publication Level Publication Level</p><p>France Certificat d’utilité, Greece Diploma evresitechnias premiére et unique pub- lication Greece Etisi gia Diploma evres- itechnias France Certificat d’addition à un certificat d’utilité, Greece Etisi gia Diploma premiére et unique pub- tropopiisis lication Hungary Patent application France Demande de brevet India Patent specification d’invention, premiére publication Ireland Patent specification France Demande de certificat Israel Bakashah lepatent d’addition à un brevet (Application of patent d’invention, premiére for invention) publication Italy Domanda di brevetto France Demande de certificat publicata d’utilité, premiére pub- Japan Kôkai tokkyo kôhô lication Japan Kôhyo tokkyo kôhô France Demande de certificat d’addition à un certifi- Luxembourg Brevet d’invention cat d’utilité, premiére publication Luxembourg Certificat d’addition à un brevet d’invention Germany Offenlegungsschrift Malawi Patent application Germany (docu- Patentschrift (Auss- ment published by chliessungspatent), Mexico Patent (Granted patent the Patent Office patent granted in accor- — according to old law) of the former dance with paragraph Mexico Patent application GDR) 17.1 of the Patent Law (according to new law) of the former German Democratic Republic of Mongolia Patent October 27, 1983 Morocco Brevet d’invention Germany (docu- Patentschrift Netherlands Terinzagegelegging ment published by (Wirtschaftspatent), the Patent Office patent granted in accor- New Zealand Patent application of the former dance with paragraph GDR) 17.1 of the Patent Law Norway Alment tilgjengelige of the former German patentsöknader Democratic Republic of OAPI Brevet d’invention October 27, 1983 </p><p>Rev. 7, July 2008 1800-112 PATENT COOPERATION TREATY 1851</p><p>Patent Documents Patent Documents Identified as Primary or Identified as Primary or CODE: A CODE: A Major Series — First Major Series — First Publication Level Publication Level</p><p>Pakistan Patent specification Spain Solicitud de patente con informe sobre el estado Peru Patente de invención de la técnica (Patent Philippines Patent for invention application published with search report) Poland Opis zgloszeniowy wynalazku Spain Solicitud de patente sin informe sobre el estado Portugal Pedido de patente de de la técnica (Patent invenção application published without search report) Republic of Konggae t’ukho kongbo Korea Sweden Allmant tillganglig pat- entansokan Romania Descrierea inventiei Switzerland Auslegeschrift/Fasci- Romania Cerere de brevet de cule de la demande/Fas- invente cicolo della domanda Russian Federa- Zayavka na izo- (Patent Application tion breteniye (Published published and pertain- application for inven- ing to the technical tion) fields for which search and examination as to Slovakia Prihláška Vynálezu novelty are made) (Published application for invention) Switzerland Patentschrift/Fascicule du brevet/Fascicolo del Slovenia Patent brevetto (Patent pub- Slovenia Patent s skrajšanim lished and pertaining to trajanjem (Short-term the technical fields for patent) which neither search nor examination as to Soviet Union Opisanie izobreteniyak novelty are made) patentu Tunisia Talab Baraat Ekhtiraâ Soviet Union Opisanie izobreteniyak avtorskomu svide- Turkey Patent tarifnamesi telstvu United Kingdom Patent specification Spain Patente de invención (old Law; not printed on documents) United Kingdom Patent application (new Law)</p><p>1800-113 Rev. 7, July 2008 1851 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Patent Documents Patent Documents Identified as Primary or Identified as Primary or CODE: A CODE: B Major Series — First Major Series -Second Publication Level Publication Level</p><p>United States of Patent (published Czech Republic Patentovy spis (patent America before January 2, 2001) specification) United States of Patent application pub- Denmark Fremlaeggelsesskrift America lication (published (old Law) beginning March 15, 2001) Denmark Patentskrift World Intellec- International applica- Denmark Patentskrift (amended) tual Property tion published with or Finland Kuulutusjulkaisu - Organization without the interna- Utläggningsskrift tional search report France Brevet d’invention, Yugoslavia Patenta prijava koja se deuxième publication moze razgledati de l’invention France Certificat d’addition à un brevet d’invention, deuxième publication Patent Documents de l’invention Identified as Primary or CODE: B Major Series -Second France Certificat d’utilité, Publication Level deuxième publication de l’invention EXAMPLES: France Certificat d’addition à Australia Accepted standard or un certificat d’utilité, petty patent deuxième publication Austria Patentschrift de l’invention Belgium Brevet d’invention/ Germany Auslegeschrift Uitvindingsoctrooi Germany Patentschrift (Auss- Brazil Patente (granted patent (document chliessungspatent), of invention) published by the patent granted in accor- Patent Office of dance with paragraph Canada Reissue patent (prior to the former GDR) 18.1 of the Patent Law October 1, 1989, under of the former German previous Patent Act) Democratic Republic of October 27, 1983 Cuba Patente de invención Czechoslovakia Popis vynalezu k pat- entu Czechoslovakia Popis vynalezu k autor- skemu osvedceni</p><p>Rev. 7, July 2008 1800-114 PATENT COOPERATION TREATY 1851</p><p>Patent Documents Patent Documents Identified as Primary or Identified as Primary or CODE: B CODE: B Major Series -Second Major Series -Second Publication Level Publication Level</p><p>Germany (docu- Patentschrift Spain Patente de invención ment pub lished (Wirtschaftspatent), con examen previo by the Patent patent granted in accor- (Patent specification Office of the dance with paragraph published after exami- former GDR) 18.1 of the Patent Law nation) of the former German Democratic Republic of Sweden Utläggningsskrift October 27, 1983 Switzerland Patentschrift/Fascicule Greece Diploma evresitechnias du brevet/Fascicolo del (Patent of invention) brevetto (Patent pub- lished and pertaining to Greece Diploma tropopiisis the technical fields for (Patent of addition) which search and exam- ination as to novelty are Hungary Szabadalmi leiras made) Indonesia Patent granted in accor- United Kingdom Amended patent speci- dance with article 61 of fication (old Law) the Patent Law, Number 6 of 1989 Concerning United Kingdom Patent specification Patents (new Law) Japan Tokkyo kôhô United States of Reexamination certifi- America cate (published prior to Netherlands Openbaar gemaakte January 2, 2001) octrooiaanvrage United States of Patent (published on or Norway Utlegningsskrift America after January 2, 2001) Poland Opis patentowy Portugal Patente de invenção (Granted patent of pub- lished application) Patent Documents Identified as Primary or CODE: C Republic of T’ukho kongbo Major Series - Third Korea Publication Level</p><p>Spain Patente de invención EXAMPLES: con informe sobre el estado de la técnica Argentina Patente de invención (Patent specification (Patent) with search report)</p><p>1800-115 Rev. 7, July 2008 1851 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Patent Documents Patent Documents Identified as Series Identified in Series Other Than the According to Special CODE: M CODE: E Documents Coded A, Requirements of B, C, U, Y, Z, M, P, S, Individual Industrial T, W, L or R - First Property Offices Publication Level EXAMPLES: EXAMPLES: France Brevet spécial de médi- Canada Reissue patent (under cament amended Patent Act, as of October 1, 1989) France Addition à un brevet spécial de médicament France Certificat d’addition à brevet d’invention (old Law) CODE: P Plant Patent Documents Sweden Patentskrift i ändrad lydelse (Amended EXAMPLES: patent specification) United States of Plant patent United States of Reissue patent America America United States of Plant patent application America publication</p><p>Patent Documents Identified in Series According to Special Design Patent CODE: H CODE: S Requirements of Documents Individual Industrial Property Offices EXAMPLES: EXAMPLES: Brazil Pedido de privilégio (unexamined patent United States of Statutory invention reg- application for indus- America istration trial model) Russian Federa- Patent na promishlenniy tion obrazets (Design patent) United States of Design patent America</p><p>Rev. 7, July 2008 1800-116 PATENT COOPERATION TREATY 1851</p><p>Utility Model Documents Having a Utility Model Numbering Series Documents Having a CODE: U Other Than the Numbering Series Documents Coded A, B CODE: U Other Than the or C— First Publication Documents Coded A, B Level or C— First Publication Level Hungary Hasznalati minta leiras (Utility model specifi- EXAMPLES: cation) Austria Gebrauchsmuster- Japan Kôkai jitsuyô shin-an schrift (published with kôhô (Published unex- or without a search amined utility model report) application) Brazil Pedido de privilégio Japan Tôroku jitsuyô shin-an (unexamined patent kôhô (Published regis- application for indus- tered utility model trial model) application) (without Bulgaria Zajavka za polezni substantive examina- modeli predostavena za tion) publichna inspektzija Mexico Utility model (Utility model applica- tion made available to Poland Opis zgloszeniowy the public) wzoru uzytilowego Czech Republic Uzitny vzor (Utility Portugal Pedido de modelo de model) utilidade (Published application for a utility Denmark Almindeligt tilgaenge- model) lig brugsmodelansogn- ing Republic of Konggae shilyong shin- Korea an kongbo Denmark Brugsmodelskrift Russian Svidetelstvo na Finland Hyödyllisyysmalli-Nyt- Federation poleznuyu model (Cer- tighetsmodell (Utility tificate for utility model) model) Germany Gebrauchsmuster Slovakia Úžitkovy vzor (Utility Greece Etisi gia Pistopiitiko model) Ipodigmatos Chrisimo- Spain Solicitud de modelo de titas (Utility model utilidad application)</p><p>1800-117 Rev. 7, July 2008 1851 MANUAL OF PATENT EXAMINING PROCEDURE</p><p> the “WIPO Handbook on Industrial Property Informa- tion and Documentation” and is accessible via the Utility Model internet at the WIPO website (www.wipo.int/scit/en/ Documents Having a standards/standards.htm). WIPO Standard ST.3 pro- Numbering Series vides, in Annex A, Section 1, a listing of two-letter CODE: Y Other Than the country codes and/or organizational codes in alpha- Documents Coded A, B betic sequence of their short names for the states, or C— Second other entities and intergovernmental organizations Publication Level issuing or publishing industrial property documents. Codes for states or organizations that existed on Janu- EXAMPLES: ary 1, 1978, but that no longer exist are provided in Annex B, Section 2. Annex B, Section 1 (not repro- Brazil Patente (granted patent duced below) lists States for which the Codes have of utility model) changed. Bulgaria Opisanie na patent za Annex A, Section 1 polezen model (Description of a patent List of States, Other Entities and Intergovernmen- for utility model) tal Organizations, in Alphabetic Sequence of Their Denmark Brugsmodelskrift Short Names, and Their Corresponding Codes Denmark Brugsmodelskrift (amended) Afghanistan AF Greece Pistopiitiko Ipodigma- African Intellectual Property OA tos Chrisimotitas (Util- Organization (OAPI) ity model) African Regional Intellectual AP Japan Jitsuyô shin-an kôhô Property Organization (Published examined (ARIPO) utility model applica- tion) Albania AL Poland Opis ochronny wzoru Algeria DZ uzytkowego Andorra AD Portugal Modelo de utilidade Angola AO (Granted utility model) Anguilla AI Republic of Korea Shilyong shin-an Antigua and Barbuda AG kongbo (Utility model specification) Argentina AR Spain Modelo de utilidad Armenia AM Aruba AW Australia AU Country Codes Austria AT The two-letter country codes listed below are set forth in WIPO Standard ST.3, which is published in Azerbaijan AZ</p><p>Rev. 7, July 2008 1800-118 PATENT COOPERATION TREATY 1851</p><p>Bahamas BS Colombia CO Bahrain BH >Community Plant Variety QZ< Office (European Commu- Bangladesh BD nity)(CPVO) Barbados BB Comoros KM Belarus BY >Congo (See Congo, below; Belgium BE Democratic Republic of the Congo)< Belize BZ Congo CG Benelux * Office **>for BX Intellectual Property (BOIP)< Cook Islands CK Benin BJ Costa Rica CR Bermuda BM Côte d’Ivoire CI Bhutan BT Croatia HR Bolivia BO Cuba CU Bosnia and Herzegovina BA Cyprus CY Botswana BW Czech Republic CZ Bouvet Island BV Democratic People’s Repub- KP lic of Korea Brazil BR Democratic Republic of CD Brunei Darussalam BN the Congo Bulgaria BG Denmark DK Burkina Faso BF Djibouti DJ Burundi BI Dominica DM Cambodia KH Dominican Republic DO Cameroon CM ** Canada CA Ecuador EC Cape Verde CV Egypt EG Cayman Islands KY El Salvador SV Central African Republic CF Equatorial Guinea GQ Chad TD Eritrea ER Chile CL Estonia EE China CN Ethiopia ET</p><p>1800-119 Rev. 7, July 2008 1851 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Eurasian Patent Organiza- EA Holy See VA tion (EAPO) Honduras HN ** Hong Kong (See The Hong European Community Trade- * Kong Special Administrative mark Office (See Office for Region of The People’s Harmonization in the Internal Republic of China) Market) Hungary HU European Patent Office EP (EPO) Iceland IS Falkland Islands (Malvinas) FK India IN Faroe Islands FO Indonesia ID Fiji FJ International Bureau of the IB, WO World Intellectual Property Finland FI Organization (WIPO) France FR **>Iran, Islamic Republic IR of< Gabon GA Iraq IQ Gambia GM Ireland IE Georgia GE >Isle of Man IM< Germany DE Israel IL Ghana GH Italy IT Gibraltar GI Jamaica JM Greece GR Japan JP Greenland GL >Jersey JE< Grenada GD Jordan JO Guatemala GT Kazakhstan KZ >Guernsey GG< Kenya KE Guinea GN Kiribati KI Guinea-Bissau GW Korea (See Democratic Peo- Gulf Cooperation Council ple’s Republic of Korea; (see Patent Office of the Republic of Korea) Cooperation Council for the Arab States of the Gulf) Kuwait KW Guyana GY Kyrgyzstan KG Haiti HT</p><p>Rev. 7, July 2008 1800-120 PATENT COOPERATION TREATY 1851</p><p>*>Lao People’s Democratic LA Myanmar MM Republic< Namibia NA Latvia LV Nauru NR Lebanon LB Nepal NP Lesotho LS Netherlands NL Liberia LR Netherlands Antilles AN *>Libyan Arab Jamahiriya< LY New Zealand NZ Liechtenstein LI Nicaragua NI Lithuania LT Niger NE Luxembourg LU Nigeria NG Macau MO >Nordic Patent Institute XN< >Macedonia (see The former (NPI) Yugoslav Republic of Mace- donia)< Northern Mariana Islands MP Madagascar MG Norway NO Malawi MW Office for Harmonization in EM the Internal Market (Trade- Malaysia MY marks and Designs) (OHIM) Maldives MV Oman OM Mali ML Pakistan PK Malta MT Palau PW Mauritania MR Panama PA Mauritius MU Papua New Guinea PG Mexico MX Paraguay PY >Moldova (See Republic of Patent Office of the Coopera- GC Moldova)< tion Council for the Arab States of the Gulf (GCC) Monaco MC Peru PE Mongolia MN Philippines PH >Montenegro ME< Poland PL Montserrat MS Portugal PT Morocco MA Qatar QA Mozambique MZ Republic of Korea KR</p><p>1800-121 Rev. 7, July 2008 1851 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Republic of Moldova MD Sweden SE Romania RO Switzerland CH Russian Federation RU *>Syrian Arab Republic< SY Rwanda RW Taiwan, Province of China TW Saint Helena SH Tajikistan TJ Saint Kitts and Nevis KN Tanzania (see United Republic of Tanzania) Saint Lucia LC Thailand TH Saint Vincent and VC the Grenadines The Former Yugoslav MK Republic of Macedonia Samoa WS The Hong Kong Special HK San Marino SM Administrative Region of Sao Tome and Principe ST The People’s Republic of China Saudi Arabia SA Timor-Leste TL Senegal SN Togo TG Serbia** *>RS< Tonga TO Seychelles SC Trinidad and Tobago TT Sierra Leone SL Tunisia TN Singapore SG Turkey TR Slovakia SK Turkmenistan TM Slovenia SI Turks and Caicos Islands TC Solomon Islands SB Tuvalu TV Somalia SO Uganda UG South Africa ZA Ukraine UA South Georgia and the GS South Sandwich Islands United Arab Emirates AE Spain ES United Kingdom GB Sri Lanka LK United Republic of Tanzania TZ Sudan SD United States of America US Suriname SR Uruguay UY Swaziland SZ Uzbekistan UZ Vanuatu VU</p><p>Rev. 7, July 2008 1800-122 PATENT COOPERATION TREATY 1853</p><p>(i) the earlier search was carried out by the same Interna- Vatican City State (See Holy tional Searching Authority, or by the same Office as that which is See) acting as the International Searching Authority, the International Searching Authority shall, to the extent possible, take those results Venezuela VE into account in carrying out the international search; (ii) the earlier search was carried out by another Interna- Viet Nam VN tional Searching Authority, or by an Office other than that which **>Virgin Islands, British< VG is acting as the International Searching Authority, the Interna- tional Searching Authority may take those results into account in Western Sahara EH carrying out the international search.< 37 CFR 1.104. Nature of examination. World Intellectual Property WO, IB (a) Examiner’s action. Organization (WIPO) (International Bureau of) ***** Yemen YE (3) An international-type search will be made in all national applications filed on and after June 1, 1978. ** (4) Any national application may also have an interna- tional-type search report prepared thereon at the time of the Zambia ZM national examination on the merits, upon specific written request therefor and payment of the international-type search report fee Zimbabwe ZW set forth in § 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be pre- pared in order to obtain a search fee refund in a later filed interna- tional application. Annex B, Section 2 ***** List of States or Organizations That Existed on PCT Rule *>4.12< provides that the applicant may January 1, 1978, but That No Longer Exist request **>that the results of an earlier international, Czechoslovakia CS international-type or national search carried out by the same or another International Searching Authority or Democratic Yemen SY/YD by a national Office< be used in establishing an inter- German Democratic Republic DL/DD national search report on such international applica- tion. See MPEP § 1819. An international-type search International Patent Institute IB is conducted on all U.S. national nonprovisional applications filed after June 1, 1978. Upon specific Soviet Union SU request, at the time of the examination of a U.S. >Yugoslavia/Serbia and Mon- YU< national nonprovisional application and provided that tenegro the payment of the appropriate international-type search report fee has been made (37 CFR 1.21(e)) an 1852 **>Taking Into Account Results of international-type search report Form PCT/ISA/201 will also be prepared. Earlier Search(es)< [R-7] 1853 Amendment Under PCT Article 19 **> [R-5]</p><p>PCT Rule 41. PCT Article 19. Taking into Account Results of Earlier Search Amendment of the Claims before the International Bureau</p><p>(1) The applicant shall, after having received the interna- 41.1.Taking into Account Results of Earlier Search tional search report, be entitled to one opportunity to amend the Where the applicant has, under Rule 4.12, requested the Inter- claims of the international application by filing amendments with national Searching Authority to take into account the results of an the International Bureau within the prescribed time limit. He may, earlier search and has complied with Rule 12bis.1 and: at the same time, file a brief statement, as provided in the Regula-</p><p>1800-123 Rev. 7, July 2008 1853 MANUAL OF PATENT EXAMINING PROCEDURE tions, explaining the amendments and indicating any impact that tional intergovernmental organization which acts as the such amendments might have on the description and the drawings. coordinating body under the Treaty and the Regulations (PCT Art. (2) The amendments shall not go beyond the disclosure in 2 (xix) and 35 U.S.C. 351(h)). the international application as filed. (b) The major functions of the International Bureau include: (3) If the national law of any designated State permits (1) Publishing of international applications and the Inter- amendments to go beyond the said disclosure, failure to comply national Gazette; with paragraph (2) shall have no consequence in that State. (2) Transmitting copies of international applications to Designated Offices; PCT Rule 46. (3) Storing and maintaining record copies; and Amendment of Claims Before the International Bureau (4) Transmitting information to authorities pertinent to the processing of specific international applications. 46.1.Time Limit The time limit referred to in Article 19 shall be two months PCT Administrative Instruction Section 205. from the date of transmittal of the international search report to Numbering and Identification of Claims Upon Amendment the International Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, which- (a) Amendments to the claims under Article 19 or Article ever time limit expires later, provided that any amendment made 34(2)(b) may be made either by cancelling one or more entire under Article 19 which is received by the International Bureau claims, by adding one or more new claims or by amending the text after the expiration of the applicable time limit shall be considered of one or more of the claims as filed. All the claims appearing on a to have been received by that Bureau on the last day of that time replacement sheet shall be numbered in Arabic numerals. Where a limit if it reaches it before the technical preparations for interna- claim is cancelled, no renumbering of the other claims shall be tional publication have been completed. required. In all cases where claims are renumbered, they shall be renumbered consecutively. 46.2.Where to File (b) The applicant shall, in the letter referred to in the second Amendments made under Article 19 shall be filed directly with and third sentences of Rule 46.5(a) or in the second and fourth the International Bureau. sentences of Rule 66.8(a), indicate the differences between the claims as filed and the claims as amended. He shall, in particular, 46.3.Language of Amendments indicate in the said letter, in connection with each claim appearing If the international application has been filed in a language in the international application (it being understood that identical other than the language in which it is published, any amendment indications concerning several claims may be grouped), whether: made under Article 19 shall be in the language of publication. (i) the claim is unchanged; (ii) the claim is cancelled; 46.4.Statement (iii)the claim is new; (a) The statement referred to in Article 19(1) shall be in the (iv) the claim replaces one or more claims as filed; language in which the international application is published and (v) the claim is the result of the division of a claim as shall not exceed 500 words if in the English language or if trans- filed. lated into that language. The statement shall be identified as such The applicant has one opportunity to amend the by a heading, preferably by using the words “Statement under Article 19(1)” or their equivalent in the language of the statement. claims only of the international application after issu- (b) The statement shall contain no disparaging comments on ance of the Search Report. The amendments to the the international search report or the relevance of citations con- claims must be filed directly with the International tained in that report. Reference to citations, relevant to a given Bureau, usually within 2 months of the date of mail- claim, contained in the international search report may be made ing of the Search Report. If the amendments to the only in connection with an amendment of that claim. claims are timely received by the International 46.5.Form of Amendments Bureau, such amendments will be published as part of The applicant shall be required to submit a replacement sheet the *>publication of the international application< for every sheet of the claims which, on account of an amendment directly following the claims as filed. Article 19 offers or amendments under Article 19, differs from the sheet originally applicants the opportunity to generally amend the filed. The letter accompanying the replacement sheets shall draw attention to the differences between the replaced sheets and the claims before entering the designated Offices. The replacement sheets. To the extent that any amendment results in national laws of some designated Offices may grant the cancellation of an entire sheet, that amendment shall be com- provisional protection on the invention from the date municated in a letter. of publication of the claims. Therefore, some appli- 37 CFR 1.415. The International Bureau. cants take advantage of the opportunity under Article (a) The International Bureau is the World Intellectual Prop- 19 to polish the claims anticipating provisional pro- erty Organization located at Geneva, Switzerland. It is the interna- tection. See PCT Rule 46.5.</p><p>Rev. 7, July 2008 1800-124 PATENT COOPERATION TREATY 1857</p><p>1857 International Publication [R-5] (3) The national law of any designated State may provide that, where the international publication has been effected, on the PCT Article 21. request of the applicant, before the expiration of 18 months from International Publication the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority (1) The International Bureau shall publish international date. applications. (4) The national law of any designated State may provide (2)(a)Subject to the exceptions provided for in subparagraph that the effects provided for in paragraph (1) shall be applicable (b) and in Article 64(3), the international publication of the inter- only from the date on which a copy of the international applica- national application shall be effected promptly after the expiration tion as published under Article 21 has been received in the of 18 months from the priority date of that application. national Office of or acting for such State. The said Office shall (b) The applicant may ask the International Bureau to publish the date of receipt in its gazette as soon as possible. publish his international application any time before the expira- tion of the time limit referred to in subparagraph (a). The Interna- PCT Administrative Instruction Section 404. tional Bureau shall proceed accordingly, as provided in the International Publication Number of International Regulations. Application (3) The international search report or the declaration referred to in Article 17(2)(a) shall be published as prescribed in the Regu- **>The International Bureau shall assign to each published lations. international application an international publication number (4) The language and form of the international publication which shall be different from the international application number. and other details are governed by the Regulations. The international publication number shall be used on the pub- (5) There shall be no international publication if the interna- lished international application and in the Gazette entry. It shall tional application is withdrawn or is considered withdrawn before consist of the two-letter code “WO” followed by a four-digit indi- the technical preparations for publication have been completed. cation of the year of publication, a slant, and a serial number con- (6) If the international application contains expressions or sisting of six digits (e.g., “WO 2004/123456”).< drawings which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion, the inter- 35 U.S.C. 374. Publication of international application. national application contains disparaging statements as defined in The publication under the treaty defined in section 351(a) of the Regulations, it may omit such expressions drawings, and state- this title, of an international application designating the United ments, from its publications, indicating the place and number of States shall be deemed a publication under section 122(b), except words or drawings omitted, and furnishing, upon request, individ- as provided in sections 102(e) and 154(d) of this title. ual copies of the passages omitted. The publication of international applications cur- PCT Article 29. rently occurs every Thursday. Under PCT Article 20 Effects of the International Publication and PCT Rules 47.1(a) and 93bis.1, the International (1) As far as the protection of any rights of the applicant in a Bureau sends copies of published international appli- designated State is concerned, the effects, in that State, of the cations to each of the designated Offices that have international publication of an international application shall, sub- requested to receive >such documents on the date ject to the provisions of paragraphs (2) to (4), be the same as those specified by that Office. The U.S. Patent and Trade- which the national law of the designated State provides for the mark Office, as a designated Office, has requested the compulsory national publication of unexamined national applica- tions as such. International Bureau to effect communication of< the (2) If the language in which the international publication has published application on the day of publication. Until been effected is different from the language in which publications October 1, 1995, as a PCT member country, the U.S. under the national law are effected in the designated State, the said Patent and Trademark Office received copies of all national law may provide that the effects provided for in para- published international applications in printed form graph (1) shall be applicable only from such time as: for inclusion in the examiner search files. The U.S. (i) a translation into the latter language has been pub- lished as provided by the national law, or Patent and Trademark Office now receives the pub- (ii) a translation into the latter language has been made lished international applications on CD-ROM disks available to the public, by laying open for public inspection as and in other electronic formats. For information on provided by the national law, or obtaining copies of these applications, see (iii)a translation into the latter language has been trans- MPEP § 901.05(c). Published international applica- mitted by the applicant to the actual or prospective unauthorized user of the invention claimed in the international application, or tion information is also available from the PCT (iv) both the acts described in (i) and (iii), or both the acts Gazette, which can be accessed electronically through described in (ii) and (iii), have taken place. The Intellectual Property Digital Library Web site </p><p>1800-125 Rev. 7, July 2008 1857.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(http://ipdl.wipo.int/) of the World Intellectual Prop- Cross-references between the two elements are erty Organization. In addition, published international included for the sake of clarity. The bibliographic applications may be obtained online from the Euro- page of a published international application filed pean Patent Office web site (http://ep.espacenet.com). under Administrative Instructions Section 801 includes the statement: “Published with sequence list- PUBLICATION OF SEQUENCE LISTING AND/ ing part of description published separately in elec- OR TABLES FILED IN ELECTRONIC FORM tronic form and available upon request from the International Bureau.” Conversely, the electronic pub- PCT Administrative Instruction Section 805. lication of the sequence listing part of the interna- Publication and Communication of International Applica- tional application on WIPO’s web site (www.wipo.int/ tions Containing Sequence Listings and/or Tables; Copies; pct/en/sequences/index.htm) contains a link to the Priority Documents remainder of the published international application in (a) Notwithstanding Section 406, an international applica- the electronic PCT Gazette. tion containing sequence listings and/or tables may be published under Article 21, in whole or in part, in electronic form as deter- 1857.01 Prior Art Effect of the Interna- mined by the Director General. tional Publication [R-2] (b) Paragraph (a) shall apply mutatis mutandis in relation to: (i) the communication of an international application 35 U.S.C. 374. Publication of international application. under Article 20; The publication under the treaty defined in section 351(a) of (ii) the furnishing of copies of an international application this title, of an international application designating the United under Rules 87 and 94.1; States shall be deemed a publication under section 122(b), except (iii)the furnishing under Rule 17.1, as a priority docu- as provided in sections 102(e) and 154(d) of this title. ment, of a copy of an international application containing sequence listings and/or tables filed under Section 801(a); 35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent. (iv) the furnishing under Rules 17.2 and 66.7 of copies of a priority document. A person shall be entitled to a patent unless —</p><p>As of August 2, 2001, WIPO began to publish ***** sequence listing parts of the description on the Inter- (e) the invention was described in — (1) an application for net where the sequence listing was filed under PCT patent, published under section 122(b), by another filed in the Administrative Instructions Section 801 as authorized United States before the invention by the applicant for patent or by PCT Administrative Instructions Section 805(a). (2) a patent granted on an application for patent by another filed in On September 6, 2002, the PCT Administrative the United States before the invention by the applicant for patent, except that an international application filed under the treaty Instructions were further amended to include elec- defined in section 351(a) shall have the effects for the purposes of tronic submissions of tables related to sequence list- this subsection of an application filed in the United States only if ings. Sequence listing parts of the description and the international application designated the United States and was tables may be viewed and downloaded at http:// published under Article 21(2) of such treaty in the English lan- www.wipo.int/pct/en/sequences/index.htm. Thus, an guage; or international application containing a sequence listing ***** or table filed under Part 8 of the Administrative Instructions comprises two elements published on the An international >application< ** may be used as same day: prior art as of its international filing date, or an earlier U.S. filing date for which ** benefit is properly (A) a **>first element< including all parts of the claimed, under 35 U.S.C. 102(e) if the international application that were not filed in electronic format application: under Part 8 of the Administrative Instructions; and (B) **>a second element consisting of< an elec- (A) was filed on or after November 29, 2000; tronic publication of the sequence listing and/or tables (B) designated the United States; and that were filed in electronic format under Part 8 of the (C) was published under PCT Article 21(2) in the Administrative Instructions. English language.</p><p>Rev. 7, July 2008 1800-126 PATENT COOPERATION TREATY 1859</p><p>If such an international application properly claims (c) No international publication of the international applica- benefit >under 35 U.S.C. 119(e), 120, or 365(c)< to tion shall be effected if the notice of withdrawal sent by the appli- an earlier-filed U.S. >national< or international appli- cant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International cation >designating the U.S.< **, the international Bureau before the technical preparations for international publica- application can be applied as prior art under 35 U.S.C. tion have been completed. 102(e) as of the earlier filing date, assuming all the conditions of 35 U.S.C. 102(e), 119(e), 120, or 365(c) 90bis.2. Withdrawal of Designations are met. Note, where the earlier application is >also< (a) The applicant may withdraw the designation of any des- an international application, the earlier international ignated State at any time prior to the expiration of 30 months from the priority date. Withdrawal of the designation of a State which application must satisfy the same three conditions has been elected shall entail withdrawal of the corresponding elec- (i.e., filed on or after November 29, 2000, designated tion under Rule 90bis.4. the U.S. and had been published in English under (b) Where a State has been designated for the purpose of PCT Article 21(2)) for the earlier international filing obtaining both a national patent and a regional patent, withdrawal date to be a U.S. filing date for prior art purposes of the designation of that State shall be taken to mean withdrawal under 35 U.S.C. 102(e). of only the designation for the purpose of obtaining a national patent, except where otherwise indicated. If any of the above conditions have not been satis- (c) Withdrawal of the designations of all designated States fied, the publication of the international application shall be treated as withdrawal of the international application and the U.S. application publication of the national under Rule 90bis.1. stage after compliance with 35 U.S.C. 371 may only (d) Withdrawal shall be effective on receipt of a notice be used as prior art as of its publication date under 35 addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to U.S.C. 102(a) or (b). See MPEP § 706.02(a) and § the International Preliminary Examining Authority. 2136.03. A later filed U.S. application that properly (e) No international publication of the designation shall be claimed the benefit under 35 U.S.C. 120 or 365(c) of effected if the notice of withdrawal sent by the applicant or trans- such an international application will have its own mitted by the receiving Office or the International Preliminary U.S. filing date for purposes of 35 U.S.C. 102(e). In Examining Authority reaches the International Bureau before the addition, international applications, which: (1) were technical preparations for international publication have been completed. filed prior to November 29, 2000, (2) did not desig- nate the U.S., or (3) were not published in English 90bis.3. Withdrawal of Priority Claims under PCT Article 21(2) by WIPO, may not be used (a) The applicant may withdraw a priority claim, made in the to reach back (bridge) to an earlier filing date through international application under Article 8(1), at any time prior to a ** benefit claim for prior art purposes under 35 the expiration of 30 months from the priority date. U.S.C. 102(e). (b) Where the international application contains more than one priority claim, the applicant may exercise the right provided For more information, see MPEP § 706.02(a) and § for in paragraph (a) in respect of one or more or all of the priority 706.02(f)(1). claims. (c) Withdrawal shall be effective on receipt of a notice 1859 Withdrawal of International Appli- addressed by the applicant, at his option, to the International cation, Designations, or Priority Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority. Claims [R-6] (d) Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the PCT Rule 90bis. original priority date and which has not already expired shall, sub- Withdrawals ject to paragraph (e), be computed from the priority date resulting from that change. 90bis.1. Withdrawal of the International Application (e) In the case of the time limit referred to in Article (a) The applicant may withdraw the international application 21(2)(a), the International Bureau may nevertheless proceed with at any time prior to the expiration of 30 months from the priority the international publication on the basis of the said time limit as date. computed from the original priority date if the notice of with- (b) Withdrawal shall be effective on receipt of a notice drawal sent by the applicant or transmitted by the receiving Office addressed by the applicant, at his option, to the International or the International Preliminary Examining Authority reaches the Bureau, to the receiving Office or, where Article 39(1) applies, to International Bureau after the completion of the technical prepara- the International Preliminary Examining Authority. tions for international publication.</p><p>1800-127 Rev. 7, July 2008 1859 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>***** able from WIPO’s web site (*>www.wipo.int/pct/en/ forms/<). 90bis.5. Signature (a) Any notice of withdrawal referred to in Rules 90bis.1 to The applicant may withdraw the international 90bis.4 shall, subject to paragraph (b), be signed by the applicant application, the designation of any state, or a priority or, if there are two or more applicants, by all of them. An appli- claim by a notice addressed to the International cant who is considered to be the common representative under Bureau or to the receiving Office and received before Rule 90.2(b) shall, subject to paragraph (b), not be entitled to sign the expiration of 30 months from the priority date. such a notice on behalf of the other applicants. (b) Where two or more applicants file an international appli- Where Article 39(1) applies, the notice may also be cation which designates a State whose national law requires that addressed to the International Preliminary Examining national applications be filed by the inventor and where an appli- Authority. Any such withdrawal is free of charge. A cant for that designated State who is an inventor could not be notice of withdrawal must be signed by all the appli- found or reached after diligent effort, a notice of withdrawal cants. The provisions for waiver of a power of attor- referred to in Rules 90bis.1 to 90bis.4 need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one ney set forth in PCT Rules 90.4(d) and 90.5(c) do not applicant and apply in the case of withdrawals under PCT Rule (i) a statement is furnished explaining, to the satisfaction 90bis. An appointed agent or appointed common rep- of the receiving Office, the International Bureau, or the Interna- resentative may sign such a notice on behalf of the tional Preliminary Examining Authority, as the case may be, the applicant or applicants who appointed him, but an lack of signature of the applicant concerned, or applicant who is considered to be the common repre- (ii) in the case of a notice of withdrawal referred to in Rule 90bis.1(b), 90bis.2(d), or 90bis.3(c), the applicant concerned sentative may not sign such a notice on behalf of the did not sign the request but the requirements of Rule 4.15(b) were other applicants. As to the case where an applicant complied with, or inventor for the United States of America cannot be (iii)in the case of a notice of withdrawal referred to in found or reached see PCT Rule 90bis.5(b). Rule 90bis.4(b), the applicant concerned did not sign the demand The applicant may prevent international publication but the requirements of Rule 53.8(b) were complied with. by withdrawing the international application, pro- 90bis.6. Effect of Withdrawal vided that the notice of withdrawal reaches the Inter- (a) Withdrawal under Rule 90bis of the international appli- national Bureau before the completion of technical cation, any designation, any priority claim, the demand or any preparations for that publication. The notice of with- election shall have no effect in any designated or elected Office drawal may state that the withdrawal is to be effective where the processing or examination of the international applica- tion has already started under Article 23(2) or Article 40(2). only on the condition that international publication (b) Where the international application is withdrawn under can still be prevented. In such a case the withdrawal is Rule 90bis.1, the international processing of the international not effective if the condition on which it was made application shall be discontinued. cannot be met that is, if the technical preparations for (c) Where the demand or all elections are withdrawn under international publication have already been com- Rule 90bis.4, the processing of the international application by the pleted. International Preliminary Examining Authority shall be discontin- ued. If all designations are withdrawn, the international application will be treated as withdrawn. 90bis.7. Faculty Under Article 37(4)(b) (a) Any Contracting State whose national law provides for Where the withdrawal of a priority claim causes a what is described in the second part of Article 37(4)(b) shall change in the priority date of the international appli- notify the International Bureau in writing. cation, any time limit which is computed from the (b) The notification referred to in paragraph (a) shall be original priority date and which has not yet expired— promptly published by the International Bureau in the Gazette, for example, the time limit before which processing in and shall have effect in respect of international applications filed the national phase cannot start—is computed from the more than one month after the date of such publication. priority date resulting from the change. (It is not pos- For a discussion of the withdrawal of the demand or sible to extend the time limit concerned if it has of elections (PCT Rule 90bis.4 ), see MPEP § 1880. already expired when the priority claim is with- Form PCT/IB/372 may be used by the applicant to drawn.) Thus, international publication may be post- make a withdrawal under any of PCT Rules 90bis.1, poned by withdrawing the priority claim prior to 90bis.2, 90bis.3, and *>90bis.4<. The form is avail- publication. However, if the notice of withdrawal </p><p>Rev. 7, July 2008 1800-128 PATENT COOPERATION TREATY 1860 reaches the International Bureau after the completion tional Searching Authority>, or Korean Intellectual of the technical preparations for international publica- Property Organization as International Searching tion, the International Bureau may proceed with the Authority< as the first written opinion of the Interna- international publication on the basis of the time limit tional Preliminary Examining Authority. for international publication as computed from the Assuming the written opinion of the International original priority date. Searching Authority is treated as the first written opinion of the International Preliminary Examining 1860 International Preliminary Exami- Authority, as noted above, no further written opinion nation Procedure for Applications need be issued before the international preliminary Having an International Filing examination report, even if there are objections out- Date On or After January 1, 2004 standing. The examiner takes into consideration any [R-6] comments or amendments made by the applicant when establishing the international preliminary exam- [Note: The regulations under the PCT were ination report. changed effective January 1, 2004. A correspond- FURTHER WRITTEN OPINION SHOULD BE ing change was made to Title 37 of the Code of ISSUED Federal Regulations. See January 2004 Revision of Patent Cooperation Treaty Application Procedure, A further written opinion should be prepared by the 68 FR 59881 (Oct. 20, 2003), 1276 O.G. 6 (Nov. 11, examiner if applicant files a response which includes 2003). All international applications having an a persuasive argument that the written opinion issued international filing date before January 1, 2004, by the International Searching Authority was will continue to be processed under the procedures improper because of a negative opinion with respect in effect on the international filing date. For the to a lack of novelty, inventive step (non-obviousness) international preliminary examination procedure or industrial applicability as described in PCT Arti- applicable to international applications having an cle 33(2)-(4); and which results in the examiner con- international filing date before January 1 2004, see sidering any of the claims to lack novelty, inventive MPEP § 1860.01 for the information that previ- step (non-obviousness) or industrial applicability as ously appeared in this section]. described in PCT Article 33(2)-(4) based on new art not necessitated by any amendment. EXAMINATION PROCEDURE Any further written opinion established by the The international preliminary examination is to be International Preliminary Examining Authority carried out in accordance with PCT Article 34 and should set forth, as applicable: PCT Rule 66. After the demand is checked for com- pliance with PCT Rules 53-55, 57 and 58, the first (A) Any defects in the international application as step of the examiner is to study the description, the described in PCT Article 34(4) concerning subject drawings (if any), the claims of the international matter which is not required to be examined or which application, the documents describing the prior art as is unclear or inadequately supported; cited in the international search report, and the written (B) Any negative findings with respect to any of opinion established by the International Searching the claims because of a lack of novelty, inventive step Authority. (non-obviousness) or industrial applicability as A further written opinion is usually not mandatory described in PCT Article 33(2)-(4); where the written opinion of the International Search- (C) Any defects in the form or contents of the ing Authority is treated as the first written opinion of international application; the International Preliminary Examining Authority. (D) Any finding by the examiner that an amend- The United States International Preliminary Examin- ment goes beyond the disclosure in the international ing Authority will treat any written opinion estab- application as originally filed; lished by the United States International Searching (E) Any observation which the examiner wishes Authority*>,< the European Patent Office Interna- to make on the clarity of the claims, the description, </p><p>1800-129 Rev. 7, July 2008 1860.01 MANUAL OF PATENT EXAMINING PROCEDURE the drawings or to the question whether the claims are cations having an international filing date on or fully supported by the description (PCT Rule 66.2); after January 1, 2004, see MPEP § 1860.]< (F) Any decision by the examiner not to carry out the international preliminary examination on a claim EXAMINATION PROCEDURE for which no international search report was issued; or The International Preliminary Examination is to be (G) If the examiner considers that no acceptable carried out in accordance with PCT Article 34 and nucleotide and/or amino acid sequence listing is avail- PCT Rule 66. After the Demand is checked for com- able in a form that would allow a meaningful interna- pliance with PCT Rules 53 - 55, 57 and 58, the first tional preliminary examination to be carried out. step of the examiner is to study the description, the The further written opinion is prepared on Form drawings (if any), and the claims of the international PCT/IPEA/408 to notify applicant of the defects application and the documents describing the prior art found in the international application. The examiner is as cited in the international search report. further required to fully state the reasons for his/her A written opinion must be prepared if the examiner: opinion (PCT Rule 66.2(b)) and invite a written reply, with amendments where appropriate (PCT Rule (A) Considers that the international application 66.2(c)), normally setting a 2 month time limit for the has any of the defects described in PCT Article 34(4) reply. concerning subject matter which is not required to be The applicant may reply to the invitation by making examined or which is unclear or inadequately sup- amendments or, if applicant disagrees with the opin- ported; ion of the examiner, by submitting arguments, as the (B) Considers that the report should be negative case may be, or both. with respect to any of the claims because of a lack of The U.S. Rules of Practice pertaining to interna- novelty, inventive step (non-obviousness) or indus- tional preliminary examination of international appli- trial applicability as described in PCT Article 33(2) - cations permit a second written opinion in those cases (4); where sufficient time is available. Normally only one (C) Notices any defects in the form or contents of written opinion will be issued. Any reply received the international application; after the expiration of the set time limit will not nor- (D) Considers that any amendment goes beyond mally be considered in preparing the international pre- the disclosure in the international application as origi- liminary examination report. In situations, however, nally filed; where the examiner has requested an amendment or (E) Wishes to make an observation on the clarity where a later amendment places the application in of the claims, the description, the drawings or to the better condition for examination, the amendment may question whether the claims are fully supported by the be considered by the examiner. description (PCT Rule 66.2); If the applicant does not reply to any further written (F) Decides not to carry out the international pre- opinion established by the International Preliminary liminary examination on a claim for which no interna- Examining Authority within the set time period, the tional search report was issued; or international preliminary examination report will be (G) Considers that no acceptable amino acid prepared after expiration of the time limit plus suffi- cient time to have any reply clear the Mail Center. sequence listing is available in a form that would allow a meaningful international preliminary exami- 1860.01 < International Preliminary Ex- nation to be carried out. amination >Procedure for Appli- The written opinion is prepared on form PCT/ cations Having an International IPEA/408 to notify applicant of the defects found in Filing Date Before January 1, the international application. The examiner is further 2004< [R-2] required to fully state the reasons for his/her opinion (PCT Rule 66.2(b)) and invite a written reply, with >[Note: For the international preliminary exami- amendments where appropriate (PCT Rule 66.2(c)), nation procedure applicable to international appli- normally setting a 2 month time limit for the reply.</p><p>Rev. 7, July 2008 1800-130 PATENT COOPERATION TREATY 1862</p><p>The applicant may reply to the invitation by making PCT Article 34. amendments or, if applicant disagrees with the opin- Procedure before the International Preliminary Examining ion of the examiner, by submitting arguments, as the Authority case may be, or both. (1) Procedure before the International Preliminary Examin- The U.S. Rules of Practice pertaining to interna- ing Authority shall be governed by the provisions of this Treaty, tional preliminary examination of international appli- the Regulations, and the agreement which the International cations permit a second written opinion in those cases Bureau shall conclude, subject to this Treaty and the Regulations, with the said Authority. 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 nor- 37 CFR 1.416. The United States International mally be considered in preparing the international pre- Preliminary Examining Authority. liminary examination report. In situations, however, **> where the examiner has requested an amendment or (a) Pursuant to appointment by the Assembly, the United where a later amendment places the application in States Patent and Trademark Office will act as an International better condition for examination, the amendment may Preliminary Examining Authority for international applications filed in the United States Receiving Office and in other Receiving be considered by the examiner. Offices as may be agreed upon by the Director, in accordance with If the applicant does not reply to the written opinion agreement between the Patent and Trademark Office and the within the set time period, the international prelimi- International Bureau.< (b) The United States Patent and Trademark Office, when nary examination report will be prepared after expira- acting as an International Preliminary Examining Authority, will tion of the time limit plus sufficient time to have any be identified by the full title “United States International Prelimi- reply clear the Mail Center. nary Examining Authority” or by the abbreviation “IPEA/US.” If, after initial examination of the international (c) The major functions of the International Preliminary Examining Authority include: application, there is no negative statement or com- (1) Receiving and checking for defects in the Demand; ment to be made, then only the international prelimi- (2) Forwarding Demands in accordance with PCT Rule nary examination report will issue without a written 59.3; opinion having been issued. (3) Collecting the handling fee for the International Bureau and the preliminary examination fee for the United States ** International Preliminary Examining Authority; (4) Informing applicant of receipt of the Demand; 1862 Agreement With the International (5) Considering the matter of unity of invention; Bureau To Serve as an Internation- (6) Providing an international preliminary examination report which is a nonbinding opinion on the questions whether the al Preliminary *>Examining< Au- claimed invention appears to be novel, to involve inventive step thority [R-2] (to be nonobvious), and to be industrially applicable; and (7) Transmitting the international preliminary examina- tion report to applicant and the International Bureau. PCT Article 32. The International Preliminary Examining Authority An agreement was concluded between the United States Patent and Trademark Office (USPTO) and the (1) International preliminary examination shall be carried International Bureau under which the USPTO agreed out by the International Preliminary Examining Authority to serve as an International Preliminary Examining (2) In the case of demands referred to in Article 31(2)(a), the Authority for those applications filed in the USPTO as receiving Office, and, in the case of demands referred to in Article a Receiving Office and for those international applica- 31(2)(b), the Assembly, shall, in accordance with the applicable tions filed in other receiving Offices for which the agreement between the interested International Preliminary USPTO has served as an International Searching Examining Authority or Authorities and the International Bureau, specify the International Preliminary Examining Authority or Authority. Authorities competent for the preliminary examination. The agreement is provided for in PCT Articles (3) The provisions of Article 16(3) shall apply, mutatis 32(2) & (3) and 34(1), and in PCT Rules 59.1, 63.1, mutandis, in respect of the International Preliminary Examining 72.1, and 77.1(a). Authority is given in 35 U.S.C. Authorities. 361(c), 362(a) & (b) and in 364(a). 37 CFR 1.416(a)</p><p>1800-131 Rev. 7, July 2008 1864 MANUAL OF PATENT EXAMINING PROCEDURE and PCT Administrative Instructions Section 103(c) PCT/ISA/237) established by the International are also relevant. Searching Authority. Thus, examination enables applicant to attempt to obtain a positive international 1864 The Demand and Preparation for preliminary examination report, which in some Filing of Demand [R-2] elected Offices is used as a basis for the issuance of a patent.< 37 CFR 1.480. Demand for international preliminary The demand should be filed on * Form PCT/IPEA/ examination. **> 401 along with the fee *>calculation< sheet. For (a) On the filing of a proper Demand in an application for information on obtaining these forms free of charge, which the United States International Preliminary Examining see MPEP § 1730. Authority is competent and for which the fees have been paid, the international application shall be the subject of an international 1864.01 Amendments Filed >Under PCT preliminary examination. The preliminary examination fee (§ Article 34< ** [R-2] 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 PCT Article 34. the United States Patent and Trademark Office. Letters requesting Procedure Before the International Preliminary Examining printed Demand forms should be marked “Mail Stop PCT.” Authority (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). (2)(b)The applicant shall have a right to amend the claims, (d) The filing of a Demand shall constitute the election of all the description, and the drawings, in the prescribed manner and Contracting States which are designated and are bound by Chapter within the prescribed time limit, before the international prelimi- II of the Treaty on the international filing date (PCT Rule 53.7). nary examination report is established. The amendment shall not go beyond the disclosure in the international application as filed. (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 54bis.1(b)).< < Once applicant has **>filed< an international PCT Rule 66. application under Chapter I **>of the PCT<, appli- Procedure Before the International Preliminary Examining cant has the right to file a demand for preliminary Authority 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 possi- ble to file a demand unless a proper Chapter I 66.8.Form of Amendments “Request” for an international application has been (a) Subject to paragraph (b), the applicant shall be required filed. >Chapter I affords applicant the benefit of an to submit a replacement sheet for every sheet of the international international search, which includes an international application which, on account of an amendment, differs from the search report and for international applications having sheet previously filed. The letter accompanying the replacement sheets shall draw attention to the differences between the replaced an international filing date on or after January 1, sheets and the replacement sheets and shall preferably also 2004, a written opinion established by the Interna- explain the reasons for the amendment. tional Searching Authority. The filing of a demand (b) Where the amendment consists in the deletion of pas- affords applicant examination of the application and sages or in minor alterations or additions, the replacement allows applicant to file amendments to the descrip- sheet referred to in paragraph (a) may be a copy of the relevant tion, claims and drawings to correct any defects, sheet of the international application containing the alterations or additions, provided that the clarity and direct reproducibility of respond to any observations, or address negative find- that sheet are not adversely affected. To the extent that any ings with respect to any of the claims because of a amendment results in the cancellation of an entire sheet, that lack of novelty, inventive step (non-obviousness) or amendment shall be communicated in a letter which shall prefera- industrial applicability as described in PCT Article bly also explain the reasons for the amendment. 33(2)-(4) mentioned in the written opinion (Form *****</p><p>Rev. 7, July 2008 1800-132 PATENT COOPERATION TREATY 1864.02</p><p>37 CFR 1.485. Amendments by applicant during PCT Rule 54. international preliminary examination. The Applicant Entitled to Make a Demand (a) The applicant may make amendments at the time of fil- ing the Demand. The applicant may also make amendments 54.1.Residence and Nationality within the time limit set by the International Preliminary Examin- (a) Subject to the provisions of paragraph (b), the residence ing Authority for reply to any notification under § 1.484(b) or to or nationality of the applicant shall, for the purposes of Article any written opinion. Any such amendments must: 31(2), be determined according to Rule 18.1(a) and (b). (1) Be made by submitting a replacement sheet in com- (b) The International Preliminary Examining Authority pliance with PCT Rules 10 and 11.1 to 11.13 for every sheet of the shall, in the circumstances specified in the Administrative Instruc- application which differs from the sheet it replaces unless an tions, request the receiving Office or, where the international entire sheet is cancelled; and application was filed with the International Bureau as receiving (2) Include a description of how the replacement sheet Office, the national Office of, or acting for, the Contracting State differs from the replaced sheet. Amendments that do not comply concerned to decide the question whether the applicant is a resi- with PCT Rules 10 and 11.1 to 11.13 may not be entered. dent or national of the Contracting State of which he claims to be (b) If an amendment cancels an entire sheet of the interna- a resident or national. The International Preliminary Examining tional application, that amendment shall be communicated in a Authority shall inform the applicant of any such request. The letter. applicant shall have an opportunity to submit arguments directly to the Office concerned. The Office concerned shall decide the **>Under PCT Article 34(2)(b), the applicant has a said question promptly. right to amend the claims, the description, and the drawings in the application before the International 54.2.Right to Make a Demand Preliminary Examining Authority (IPEA) before the 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 international preliminary examination report is estab- applicants, at least one of them is a resident or national of a Con- lished. The amendment may be filed with the demand tracting State bound by Chapter II and the international applica- (PCT Article 34), within the period for reply to the tion has been filed with a receiving Office of or acting for a written opinion of the International Searching Author- Contracting State bound by Chapter II. ity (ISA), or within the period for reply to the written (i) [Deleted] opinion of the IPEA. (ii) [Deleted] See MPEP § 1871 or MPEP § 1871.01, as appro- priate, regarding the processing of amendments filed 54.3 International Applications Filed with the Interna- prior to or at the start of international preliminary tional Bureau as Receiving Office examination. See MPEP 1878.02 regarding amend- Where the international application is filed with the Interna- tional Bureau as receiving Office under Rule 19.1(a)(iii), the ments filed in reply to the written opinion of the ISA International Bureau shall, for the purposes of Article 31(2)(a), be or IPEA. Amendments under PCT Article 34, like considered to be acting for the Contracting State of which the amendments under PCT Article 19 (see MPEP § applicant is a resident or national. 1853), may not include new matter and must be 54.4.Applicant Not Entitled to Make a Demand accompanied by a description of how the replacement If the applicant does not have the right to make a demand or, in sheet differs from the replaced sheet.< 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 1864.02 Applicant’s Right To File a not to have been submitted. Demand If there is a sole applicant, he or she must be a resi- PCT Article 31. dent or national of a Contracting State bound by Demand for International Preliminary Examination Chapter II of the PCT. If there are two or more appli- cants, it is sufficient that one of them be a resident or ***** national of a Contracting State bound by Chapter II, (2)(a)Any applicant who is a resident or national, as defined regardless of the elected State(s) for which each appli- in the Regulations, of a Contracting State bound by Chapter II, cant is indicated. Only applicants for the elected and whose international application has been filed with the receiv- States are required to be indicated in the Demand. The ing Office of or acting for such State, may make a demand for detailed requirements for the various indications international preliminary examination. required in connection with each applicant (name ***** and address, telephone number, facsimile machine </p><p>1800-133 Rev. 7, July 2008 1864.03 MANUAL OF PATENT EXAMINING PROCEDURE number or teleprinter address, nationality and resi- may represent the applicant before the international dence) are the same as those required under PCT Rule authorities (PCT Article 49). 4 in connection with the Request. Note that any inven- If for any reason, the examiner needs to question tor who is not also an applicant is not indicated in the the right of an attorney or agent to practice before the Demand. International Preliminary Examining Authority If the recording of a change in the name or person >(IPEA)<, the USPTO roster of registered attorneys has been requested under PCT Rule 92bis.1 before and agents should be consulted. If the international the Demand was filed, it is the applicant(s) of record application was filed with a receiving Office other at the time when the Demand is filed who must be than the United States, Form PCT/IPEA/410 may be indicated in the Demand. used by the requesting IPEA to ask the receiving Office with which the international application was 1864.03 States Which May Be Elected filed, whether the agent named in the international [R-2] application has the right to practice before that Office. The PCT Article and Regulations governing the PCT Article 31. right to practice are PCT Article 49 and PCT Rule 83. Demand for International Preliminary Examination 1865 Filing of Demand [R-6] ***** (4)(a)The demand shall indicate the Contracting State or PCT Article 31. States in which the applicant intends to use the results of the inter- Demand for International Preliminary Examination national preliminary examination (“elected States”). Additional Contracting States may be elected later. Election may relate only to Contracting States already designated under Article 4. (1) On the demand of the applicant, his international applica- tion shall be the subject of an international preliminary examina- (b) Applicants referred to in paragraph (2)(a) may elect any tion as provided in the following provisions and the Regulations. 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. (3) The demand for international preliminary examination shall be made separately from the international application. The ***** demand shall contain the prescribed particulars and shall be in the prescribed language and form. >The filing of a demand on or after January 1, 2004, 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 (6)(a) The demand shall be submitted to the competent Inter- national Preliminary Examining Authority referred to in Article Rule 53.7). For demands filed before January 1, 32. 2004, only those eligible states pursuant to PCT Arti- cle 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 Applicants should *>submit< the Demand and may be elected under Chapter II. The Assembly has appropriate fees directly to the International Prelimi- taken no action to allow persons who are residents or nary Examining Authority (IPEA) they desire to pre- nationals of a State not party to the PCT or not bound pare the International Preliminary Examination by Chapter II to make a Demand under Article Report. United States applicants who have had the 31(2)(b). international search prepared by the European Patent Office (EPO) may request the EPO to act as the IPEA 1864.04 Agent’s Right To Act [R-2] with some exceptions. See MPEP § 1865.01. Demands filed in the European Patent Office Any agent entitled to practice before the receiving should be delivered to the European Patent Office Office where the international application was filed Headquarters at Munich:</p><p>Rev. 7, July 2008 1800-134 PATENT COOPERATION TREATY 1865</p><p>Location: or Transmission practice under 37 CFR 1.8 CANNOT be used to file a Demand if the date of deposit is Erhardstr. 27 desired. If used, the date of the Demand will be the D-80331 Munchen date of receipt in the USPTO. See MPEP § 513, § Germany 1834, and § 1834.01. Mailing address: All Demands filed in the USPTO must be in the English language. D-80298 Munchen PCT Rule 59.3 was amended July 1, 1998 to pro- Germany vide a safeguard in the case of a Demand filed with an United States applicants may also request the International Preliminary Examining Authority which Korean Intellectual Property Office (KIPO) to act as is not competent for the international preliminary the IPEA. Demands filed in the KIPO should be deliv- examination of a particular international application. ered to the KIPO Headquarters: The USPTO will forward such a Demand to the Inter- national Bureau and the International Bureau will for- Location and mailing address: ward the Demand to a competent International Preliminary Examining Authority pursuant to PCT 920 Dunsan-dong Rule 59.3(c). The competent International Prelimi- Seo-gu, Daejeon Metropolitan City 302-701 nary Examining Authority will process the Demand Republic of Korea based on the date of receipt in the USPTO. See 37 CFR 1.416(c)(2). Demands filed in the United States Patent and Trademark Office (USPTO) should be addressed as CHOICE OF EXAMINING AUTHORITY follows: Mailing address for delivery by the U.S. Postal Ser- For most applications, U.S. residents and nationals vice: may choose to have the international preliminary examination done by the EPO if the EPO served as Mail Stop PCT the International Searching Authority (ISA). How- Commissioner for Patents ever, for certain applications including one or more P.O. Box 1450 claims directed to the field of biotechnology, the field Alexandria, VA 22313-1450. of business methods or the field of telecommunica- tion, the EPO will not act as a competent IPEA. See OR MPEP § 1865.01. If hand-carried directly to the USPTO: U.S. residents and nationals may also choose to have the international preliminary examination done Customer Service Window, Mail Stop PCT by the KIPO. Randolph Building The IPEA/US will serve as International Prelimi- 401 Dulany Street nary Examining Authority for U.S. residents and Alexandria, VA 22314 nationals if the U.S.*>,< EPO>, or KIPO< served as The “Express Mail” provisions of 37 CFR 1.10 ISA and the international application was filed in the may be used to file a Demand under Chapter II in U.S. Receiving Office or the International Bureau as the USPTO. Applicants are advised that failure to receiving Office. comply with the provisions of 37 CFR 1.10 will result The IPEA/US will also serve as International Pre- in the paper or fee being accorded the date of receipt liminary Examining Authority for residents or nation- and not the date of deposit. See MPEP § 513. als of Barbados, Brazil, Egypt, India, Israel, Mexico, Demand for international preliminary examination New Zealand, the Philippines, Saint Lucia, South may >also< be submitted to the USPTO via >internet Africa, and Trinidad and Tobago if the U.S. was the (EFS-Web) or< facsimile. The Certificate of Mailing International Searching Authority.</p><p>1800-135 Rev. 7, July 2008 1865 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Form PCT/IPEA/401</p><p>Rev. 7, July 2008 1800-136 PATENT COOPERATION TREATY 1865</p><p>Form PCT/IPEA/401(second sheet)</p><p>1800-137 Rev. 7, July 2008 1865 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Form PCT/IPEA/401(last sheet)</p><p>Rev. 7, July 2008 1800-138 PATENT COOPERATION TREATY 1865</p><p>Form PCT/IPEA/401 Fee Calculation Sheet</p><p>1800-139 Rev. 7, July 2008 1865.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>1865.01 The European Patent Office as an C12Q Measuring or testing processes International Preliminary Exam- involving enzymes or micro- ining Authority [R-5] organisms; compositions or test papers therefor; processes of pre- paring such compositions; condi- The European Patent Office (EPO) has expressed tion-responsive control in the following limitations concerning its competency microbiological or enzymological to act as an International Preliminary Examining processes Authority (IPEA). For updates or possible changes to C07K Peptides these limitations, applicants should consult the PCT Newsletter which is available in electronic form from G01N 33/50 Chemical analysis of biological the web site*> (www.wipo.int/pct/en/newslett/)< of (including material, e.g. blood, urine; testing the World Intellectual Property Organization. subdivisions) involving biospecific ligand bind- ing methods; immunological test- ing I. FIELD OF BIOTECHNOLOGY A61K 39 Medicinal preparations containing antigens or antibodies</p><p>The EPO is not a competent authority within the A61K 48 Medicinal preparations containing meaning of PCT Article 16(3)(b) and PCT Article genetic material which is inserted 32(3), and will not carry out international preliminary into cells of the living body to treat examination in respect of any international applica- genetic diseases; Gene therapy tion filed before January 1, 2004, where the corre- A01H New plants or processes for sponding demand was filed with the EPO on or after obtaining them; plant reproduction March 1, 2002, if the application: (A) was filed with by tissue culture techniques the USPTO as receiving Office by a national or resi- dent of the U.S.; or (B) was filed in the International Bureau (IB) as receiving Office by a national or resi- For information, U.S. classes covering the corre- dent of the U.S. (provided the application did not also sponding subject matter are listed below: identify as an applicant at its time of filing a national or resident of a European Patent Convention (EPC) Contracting State); where the application contains one 424 Drug, bio-affecting and body treating or more claims relating to the field of biotechnology compositions as defined by the following units of the International 435 Chemistry: molecular biology and Patent Classification: microbiology 436 Chemistry: analytical and immuno- C12M Apparatus for enzymology or logical testing microbiology 514 Drug, bio-affecting and body treating C12N Micro-organisms or enzymes; compositions compositions thereof 530 Chemistry: natural resins or deriva- C12P Fermentation or enzyme-using tives; peptides or proteins; lignins or processes to synthesise a desired reaction products thereof chemical compound or composi- 536 Organic compounds–part of the class tion or to separate optical isomers 532-570 series from a racemic mixture</p><p>Rev. 7, July 2008 1800-140 PATENT COOPERATION TREATY 1865.01</p><p>800 Multicellular living organisms and G06Q 50/00 Systems or methods specially unmodified parts thereof adapted for a specific business sec- tor, e.g., health care, utilities, tour- 930 Peptide or protein sequence ism or legal services</p><p>II. FIELD OF BUSINESS METHODS G06Q 90/00 Systems or methods specially adapted for administrative, com- The EPO is not a competent authority within the mercial, financial, managerial, meaning of PCT Article 16(3)(b) and PCT Article supervisory or forecasting pur- 32(3), and will not carry out international preliminary poses, not involving significant data processing examination in respect of any international applica- tion where the corresponding demand was filed with G06Q 99/00 Subject matter not provided for in the EPO on or after March 1, 2002, if the application: other groups of this subclass.< (A) is filed with the USPTO as receiving Office by a national or resident of the U.S.; or (B) is filed in the For information, the U.S. class covering the corre- IB as receiving Office by a national or resident of the sponding subject matter is listed below: U.S. (provided the application does not also identify as an applicant at its time of filing a national or resi- dent of an EPC Contracting State); where the applica- 705 Data processing: financial, business practice, tion contains one or more claims relating to the field management, or cost/price determination of business methods as defined by the following units of the International Patent Classification: III. FIELD OF TELECOMMUNICATION</p><p>The EPO is not a competent authority within the *>G06Q Data processing systems or meth- meaning of PCT Article 16(3)(b) and PCT Article ods, specially adapted for adminis- 32(3), and will not carry out international preliminary trative, commercial, financial, examination in respect of any international applica- managerial, supervisory or fore- tion where the corresponding demand is filed with the casting purposes; systems or meth- EPO on or after March 1, 2002, and before July 1, ods specially adapted for 2004, where the application: (A) is filed with the administrative, commercial, finan- USPTO as receiving Office by a national or resident cial, managerial, supervisory or of the U.S.; or (B) is filed in the IB as receiving Office forecasting purposes, not other- by a national or resident of the U.S. (provided the wise provided for application does not also identify as an applicant at its G06Q 10/00 Administration, e.g., office auto- time of filing a national or resident of an EPC Con- mation or reservations; Manage- tracting State); where the application contains one or ment, e.g., resource or project more claims relating to the field of telecommunica- management tion as defined by the following unit of the Interna- G06Q 30/00 Commerce, e.g., marketing, shop- tional Patent Classification: ping, billing, auctions or e-com- merce G06Q 40/00 Finance, e.g., banking, investment H04 Electric communication technique with the or tax processing; Insurance, e.g., exception of H04N: Pictorial communica- risk analysis or pensions tion, e.g. television</p><p>1800-141 Rev. 7, July 2008 1866 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>For information, the U.S. classes covering the cor- Applicant’s or Agent’s File Reference - this is the responding subject matter are listed below: applicant’s or agent’s application reference (or docket number) which is composed of either letters or num- bers, or both, provided this reference does not exceed twelve characters. This reference may be found in the 370 Multiplex communications upper right hand box on the first sheet of the Demand, 375 Pulse or digital communications Form PCT/IPEA/401. See Administrative Instructions Section 109. 379 Telephonic communication International Application Number - this is the PCT application number as stamped and typed on the inter- 380 Cryptography national application file wrapper and may also be 381 Electrical audio signal processing sys- found on the first page of the Demand, Form PCT/ tems and devices IPEA/401. International Filing Date - this is the filing date 455 Telecommunications printed on the international application file wrapper and may also be found on the first page of the Demands for international preliminary examination Demand, Form PCT/IPEA/401. submitted to a non-competent authority are subject to Applicant (Name) - the first named applicant as set PCT Rule 59.3. Applicants filing demands with the forth on the international application file wrapper and EPO in applications directed to the above subject mat- may also be found in box II of the Demand, Form ter will receive a notice from the EPO indicating that PCT/IPEA/401. the demand is being forwarded to the IPEA/US under PCT Rule 59.3(f). Any fees paid by the applicant to 1867 Preliminary Examination Fees [R-2] the EPO will be refunded to the applicant. Applicants 37 CFR 1.481. Payment of international preliminary have one month from the date of receipt of the examination fees. demand transmitted to the IPEA under PCT Rule 59.3 **> to pay the handling fee (PCT Rule 57 and 37 CFR (a) The handling and preliminary examination fees shall be 1.482(b)) and the preliminary examination fee (PCT paid within the time period set in PCT Rule 57.3. The handling fee Rule 58 and 37 CFR 1.482(a)). See PCT Rules 57.3 or preliminary examination fee payable is the handling fee or pre- and 58.1(b). liminary examination fee in effect on the date of payment.< (1) If the handling and preliminary fees are not paid within the time period set in PCT Rule 57.3, applicant will be 1866 Filling in of Headings on Chapter II notified and given one month within which to pay the deficient Forms [R-5] fees plus a late payment fee equal to the greater of: (i) Fifty percent of the amount of the deficient fees, The examiner will encounter several different but not exceeding an amount equal to double the handling fee; or (ii) An amount equal to the handling fee (PCT Rule forms for use in the Chapter II preliminary examina- 58bis.2). tion phase and most of the forms will have the same (2) The one-month time limit set in this paragraph to pay “header” information to be provided. deficient fees may not be extended. The notes below list the common identifying infor- (b) If the payment needed to cover the handling and prelimi- nary examination fees, pursuant to paragraph (a) of this section, is mation requested on the top of the first page of most not timely made in accordance with PCT Rule 58bis.1(d), the of the forms: United States International Preliminary Examination Authority Applicant’s mailing address - this is usually the will declare the Demand to be considered as if it had not been sub- mitted. attorney’s address taken from the file wrapper. >The examiner should check the Patent Application Locat- The preliminary examination fee is for the benefit ing and Monitoring (PALM) system and Box No. III of the International Preliminary Examining Authority of the demand, Form PCT/IPEA/401, to see if a more and the amount for the *>USPTO< doing the prelimi- recent address should be used.< nary examination is specified in 37 CFR 1.482. The </p><p>Rev. 7, July 2008 1800-142 PATENT COOPERATION TREATY 1868 fee is somewhat higher if the international search was amount equal to double the handling fee; or (2) an performed by an authority other than the USPTO. amount equal to the handling fee. See 37 CFR 1.481(a)(1)(i) and (ii). The 1 month time limit set The handling fee is a fee for the benefit of the Inter- forth in 37 CFR 1.481(a)(1) to pay deficient fees may national Bureau and is collected by the International not be extended. See 37 CFR 1.481(a)(2). Preliminary Examining Authority. The amount of the handling fee is set out in the PCT schedule of fees If the payment needed to cover the preliminary which is annexed to the PCT Regulations. examination fee and handling fee is not timely made in accordance with PCT Rule 58bis.1(d), the United The current amount of both the preliminary exami- States International Preliminary Examining Authority nation fee and the handling fee can be found in each will declare the Demand to be considered as if it had weekly issue of the Official Gazette. Since supple- not been submitted. In this regard, where the Author- ments to the handling fee were deleted, no additional ity sends a notification that the Demand is considered Chapter II fees are required other than any additional not to have been made and applicant’s payment is preliminary examination fee where additional inven- received on the same date the notification is sent, the tions are determined to be present. The amount of this fee is considered to be late and the notification fee is also specified in 37 CFR 1.482 and in the remains effective. The fee must antedate the notice in weekly issues of the Official Gazette. See also PCT order for the notice not to be effective. See 37 CFR Rules 57 and 58. 1.481(b). The time limit for paying the preliminary examina- tion fee and the handling fee is set forth in PCT Rules 1868 Correction of Defects in the Demand 57.3 and 58.1(b). >Effective January 1, 2004, for [R-2] demands filed on or after January 1, 2004, 37 CFR 1.481(a) provides that the preliminary examination PCT Rule 60. fee or handling fee payable is the preliminary exami- Certain Defects in the Demand or Elections nation fee or handling fee in effect on the date of pay- ment. For demands filed before January 1, 2004, 60.1.Defects in the Demand former< 37 CFR 1.481(a) provides that the prelimi- nary examination fee or handling fee payable is the **> preliminary examination fee or handling fee in effect (a) Subject to paragraphs (a-bis) and (a-ter), if the demand on the date of receipt of the Demand in the United does not comply with the requirements specified in Rules 53.1, States International Preliminary Examining Authority. 53.2(a)(i) to (iii), 53.2(b), 53.3 to 53.8 and 55.1, the International Effective July 1, 1998, PCT Rule 58bis.1(c) was Preliminary Examining Authority shall invite the applicant to cor- rect the defects within a time limit which shall be reasonable added to consider the preliminary examination fee and under the circumstances. That time limit shall not be less than one handling fee to have been received before the expira- month from the date of the invitation. It may be extended by the tion of the time limit set in PCT Rule 57.3 if the fees International Preliminary Examining Authority at any time before were submitted prior to the sending of an invitation to a decision is taken. pay the fees. (a-bis) For the purposes of Rule 53.4, if there are two or more applicants, it shall be sufficient that the indications referred to in Effective July 1, 1998, PCT Rule 58bis.1(a) was Rule 4.5(a)(ii) and (iii) be provided in respect of one of them who added to permit the International Preliminary Examin- has the right according to Rule 54.2 to make a demand. ing Authority to collect a late payment fee set forth in (a-ter) For the purposes of Rule 53.8, if there are two or more PCT Rule 58bis.2 if the fees for preliminary examina- applicants, it shall be sufficient that the demand be signed by one tion are not paid prior to the sending of the invitation of them. to pay the fees. If the preliminary examination fee and (b) If the applicant complies with the invitation within the handling fee are not paid within the time set in PCT time limit under paragraph (a), the demand shall be considered as Rule 57.3, applicants will be notified and given 1 if it had been received on the actual filing date, provided that the demand as submitted permitted the international application to be month within which to pay the deficient fees plus a identified; otherwise, the demand shall be considered as if it had late payment fee equal to the greater of: (1) 50% of been received on the date on which the International Preliminary the amount of the deficient fees, but not exceeding an Examining Authority receives the correction.</p><p>1800-143 Rev. 7, July 2008 1869 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(c) If the applicant does not comply with the invitation 1870 Priority Document and Translation within the time limit under paragraph (a), the demand shall be considered as if it had not been submitted and the International Thereof [R-6] Preliminary Examining Authority shall so declare. PCT Rule 66. (d) [Deleted] Procedure before the International Preliminary Examining - (e) If the defect is noticed by the International Bureau, it Authority shall bring the defect to the attention of the International Prelimi- nary Examining Authority, which shall then proceed as provided ***** in paragraphs (a) to (c).< 66.7.**>Copy and Translation of Earlier Application (f) If the demand does not contain a statement concerning Whose Priority Is Claimed< amendments, the International Preliminary Examining Authority (a) If the International Preliminary Examining Authority shall proceed as provided for in Rules 66.1 and 69.1(a) or (b). needs a copy of the earlier application whose priority is claimed in (g) Where the statement concerning amendments contains the international application, the International Bureau shall, on request, promptly furnish such copy. If that copy is not furnished an indication that amendments under Article 34 are submitted to the International Preliminary Examining Authority because the with the demand (Rule 53.9(c)) but no such amendments are, in applicant failed to comply with the requirements of Rule 17.1, and fact, submitted, the International Preliminary Examining Author- if that earlier application was not filed with that Authority in its ity shall invite the applicant to submit the amendments within a capacity as a national Office or the priority document is not avail- time limit fixed in the invitation and shall proceed as provided for able to that Authority from a digital library in accordance with the in Rule 69.1(e). Administrative Instructions, the international preliminary exami- nation report may be established as if the priority had not been ** claimed. (b) If the application whose priority is claimed in the inter- Defects in the Demand may be corrected. The type national application is in a language other than the language or one of the languages of the International Preliminary Examining of correction determines whether the filing date of the Authority, that Authority may, where the validity of the priority Demand must be changed. The most common defects claim is relevant for the formulation of the opinion referred to in which result in the mailing of an invitation to correct Article 33(1), invite the applicant to furnish a translation in the are found in PCT Rules 53 and 55. If the applicant said language or one of the said languages within two months from the date of the invitation. If the translation is not furnished complies with the invitation, the Demand is consid- within that time limit, the international preliminary examination ered as if it had been received on the actual filing date, report may be established as if the priority had not been claimed. i.e., the original date of receipt. See PCT Rule ***** 60.1(b). A copy of the priority document and/or a transla- 1869 Notification to International Bureau tion thereof, if the priority document is not in English of Demand may be required by the examiner if necessary because of an intervening reference. PCT Article 31. 1871 Processing Amendments Filed Un- Demand for International Preliminary Examination der Article 19 and Article 34 Prior to or at the Start of International ***** Preliminary Examination in Inter- (7) Each elected Office shall be notified of its election. national Applications Having an International Filing Date On or Af- The International Preliminary Examining Author- ter January 1, 2004 [R-6] ity, pursuant to PCT Rule 61, promptly notifies the International Bureau and the applicant of the filing of [Note: The regulations under the PCT were any Demand. The International Bureau in turn notifies changed effective January 1, 2004. Corresponding each elected Office of their election and also notifies changes were made to Title 37 of the Code of Fed- the applicant that such notification has been made. eral Regulations. See January 2004 Revision of </p><p>Rev. 7, July 2008 1800-144 PATENT COOPERATION TREATY 1871</p><p>Patent Cooperation Treaty Application Procedure, tions to the International Preliminary Examining Authority and to 68 FR 59881 (Oct. 20, 2003), 1276 O.G. 6 (Nov. 11, the International Bureau. 2003). International applications filed before Janu- The documents making up the international appli- ary 1, 2004, will continue to be processed under the cation may include amendments of the claims filed by procedures in effect on their international filing the applicant under PCT Article 19. Article 19 amend- date. The discussion of the procedures in effect ments are exclusively amendments to the claims and prior to January 1, 2004, has been moved from this these amendments can only be made after the >inter- section to MPEP § 1871.01.] national< search report has been established. Article PCT Rule 62. 19 amendments will be transmitted to the Interna- Copy of the Written Opinion by the International Searching tional Preliminary Examining Authority (IPEA) by Authority and of Amendments Under Article 19 for the the International Bureau. The International Bureau International Preliminary Examining Authority marks, in the upper right-hand corner of each replace- ment sheet submitted under PCT Article 19, the inter- 62.1.Copy of Written Opinion by International Searching national application number, the date on which that Authority and of Amendments Made Before the Demand Is sheet was received under PCT Article 19 and, in the Filed middle of the bottom margin, the words “AMENDED Upon receipt of a demand, or a copy thereof, from the Interna- SHEET (ARTICLE 19).” If a demand for interna- tional Preliminary Examining Authority, the International Bureau shall promptly transmit to that Authority. tional preliminary examination has already been sub- (i) a copy of the written opinion established under Rule mitted, the applicant should preferably, at the time he/ 43bis.1, unless the national Office or intergovernmental organiza- she files the Article 19 amendments, also file a copy tion that acted as International Searching Authority is also acting of the amendments with the IPEA. as International Preliminary Examining Authority; and The IPEA starts the international preliminary (ii) a copy of any amendment under Article 19, and any statement referred to in that Article, unless that Authority has examination when it is in possession of the demand; indicated that it has already received such a copy. the required fees; if the applicant is required to furnish a translation under PCT Rule 55.2, that translation; 62.2.Amendments Made After the Demand Is Filed either the international search report or a notice of the If, at the time of filing any amendments under Article 19, a declaration by the International Searching Authority demand has already been submitted, the applicant shall preferably, at the same time as he files the amendments with the International under PCT Article 17(2)(a) that no international Bureau, also file with the International Preliminary Examining search report will be established; and the written opin- Authority a copy of such amendments and any statement referred ion established under PCT Rule 43bis.1, provided that to in that Article. In any case, the International Bureau shall the IPEA shall not start the international preliminary promptly transmit a copy of such amendments and statement to examination before the expiration of the later of three that Authority. months from the transmittal of the international PCT Rule 62bis. search report and written opinion or of the declaration Translation for the International Preliminary Examining that no international search report will be established; Authority of the Written Opinion of the International or the expiration of 22 months from the priority date Searching Authority unless the applicant expressly requests an earlier start, with the exception of the following situations: 62bis.1. Translation and Observations (a) Upon request of the International Preliminary Examining (A) If the competent IPEA is part of the same Authority, the written opinion established under Rule 43bis.1 national Office or intergovernmental organization as shall, when not in English or in a language accepted by that Authority, be translated into English by or under the responsibility the competent International Searching Authority, the of the International Bureau. international preliminary examination may, if the (b) The International Bureau shall transmit a copy of the IPEA so wishes, start at the same time as the interna- translation to the International Preliminary Examining Authority tional search, provided that the examination is not to within two months from the date of receipt of the request for be postponed according to the statement concerning translation, and shall at the same time transmit a copy to the appli- cant. PCT Article 19 amendments (PCT Rule 53.9(b)); (c) The applicant may make written observations as to the (B) Where the statement concerning amendments correctness of the translation and shall send a copy of the observa- contains an indication that amendments made with the </p><p>1800-145 Rev. 7, July 2008 1871 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>International Bureau under PCT Article 19 are to be as to lack of novelty or lack of inventive step in view taken into account (PCT Rule 53.9(a)(i)), the IPEA of the citations listed in the international search report does not start the international preliminary examina- and the observations on novelty, inventive step, and tion before it has received a copy of the amendments industrial applicability set forth in the written opinion concerned. These will be transmitted to the IPEA by established by the International Searching Authority; the International Bureau. The applicant should prefer- to meet any objections noted by the International ably, at the time he/she files the demand, also file a Searching Authority under PCT Article 17(2)(a)(ii) copy of the amendments with the IPEA; (i.e., that all or at least some claims do not permit a (C) Where the statement concerning amendments meaningful search) or under PCT Rule 13 (i.e., that contains an indication that the start of the interna- there is a lack of unity of invention); or to meet objec- tional preliminary examination is to be postponed tions that may be raised for some other reason, e.g., to (PCT Rule 53.9(b)), the IPEA does not start the inter- remedy some obscurity which the applicant himself/ national preliminary examination before: herself has noted in the original documents. (1) it has received a copy of any amendments The amendments are made by the applicant of his/ made under PCT Article 19; her own volition. This means that the applicant is not (2) it has received a notice from the applicant restricted to amendments necessary to remedy a that he/she does not wish to make amendments under defect in his/her international application. It does not, PCT Article 19; or however, mean that the applicant should be regarded (3) the later of two months from the transmittal as free to amend in any way he/she chooses. Any of the international search report or the expiration of amendment must not add subject matter which goes 16 months from the priority date; beyond the disclosure of the international application as originally filed. Furthermore, it should not itself whichever occurs first; and cause the international application as amended to be objectionable under the PCT, e.g., the amendment (D) Where the statement concerning amendments should not introduce obscurity. contains an indication that amendments under PCT As a matter of policy and to ensure consistency in Article 34 are submitted with the demand (PCT Rule handling amendments filed under PCT Articles 19 53.9(c)) but no such amendments are, in fact, submit- and 34 of the PCT, the following guidelines for pro- ted, the IPEA does not start the international prelimi- cessing these amendments have been established: nary examination before it has received the amendments or before the time limit fixed in the invi- (A) Any argument or amendment which complies tation referred to in PCT Rule 60.1(g) has expired, with 37 CFR 1.485(a) will be considered; whichever occurs first. (B) Amendments filed after the demand: The applicant has the right to amend the claims, (1) will be considered if filed before the later the description, and the drawings, in the prescribed of: three months from the transmittal of either the manner and before the start of international prelimi- international search report or a notice of the declara- nary examination. The amendment must not go tion by the International Searching Authority under beyond the disclosure in the international application PCT Article 17(2)(a) that no international search as filed. These amendments are referred to as PCT report will be established, and the written opinion Article 34(2)(b) amendments. It should be noted that established under PCT Rule 43bis.1; or the expiration PCT Article 19 amendments are strictly amendments of 22 months from the priority date, unless the appli- to the claims made during the Chapter I search phase cant expressly requests an earlier start to international while PCT Article 34(2)(b) amendments to the preliminary examination, description, claims, and drawings are made during the (2) will be considered if filed before the appli- Chapter II examination phase. cation is docketed to the examiner, When amendments to the description, claims, or (3) may be considered if filed after docketing. drawings are made under PCT Rule 66.8, they may be The examiner has discretion to consider such amend- accompanied by an explanation. These amendments ments if the examiner determines that the amendment may have been submitted to avoid possible objections places the application in better condition for examina-</p><p>Rev. 7, July 2008 1800-146 PATENT COOPERATION TREATY 1871.01 tion or the examiner determines that the amendment 1871.01 Processing Amendments Filed should otherwise be entered; Under Article 19 and Article 34 (C) Amendments and/or arguments filed after Prior to or at the Start of Inter- expiration of the period for response to the written opinion: national Preliminary Examina- (1) will be considered if the amendment was tion in International Appli- requested by the examiner, cations Having an International (2) need not be taken into account for the pur- Filing Date Before January 1, poses of a further written opinion or the international preliminary examination report if they are received 2004 [R-6] after the examiner has begun to draw up that opinion [Note: If the international filing date is on or after or report. The applicant may file an amendment to the January 1, 2004, the amendments are processed as description, the claims and the drawings in the pre- indicated in MPEP § 1871 rather than as indicated scribed manner, even if this is outside the time period in this section.] set for reply in PCT Rule 66.2(d). Since the examiner may begin to draw up the final report once the time Former period set for reply in PCT Rule 66.2(d) expires, amendments filed after the expiration of the time PCT Rule 62. period set in for reply in PCT Rule 66.2(d) may or Copy of Amendments Under Article 19 for the International may not be considered. There may be situations where Preliminary Examining Authority it is advisable, to the extent possible, to take such 62.1.Amendments Made Before the Demand Is Filed amendments or arguments into account, for example, Upon receipt of a demand, or a copy thereof, from the Interna- where the international preliminary examination tional Preliminary Examining Authority, the International Bureau report has not yet been completed and it is readily shall promptly transmit a copy of any amendments under Article apparent to the examiner that consideration of the 19, and any statement referred to in that Article, to that Authority, late-filed response would result in the issuance of a unless that Authority has indicated that it has already received favorable report. such a copy. It is expected, due to the relatively short time 62.2.Amendments Made After the Demand Is Filed period for completion of preliminary examination, If, at the time of filing any amendments under Article 19, a demand has already been submitted, the applicant shall preferably, that the Chapter II application will be taken up at the same time as he files the amendments with the International promptly after docketing to the examiner for prepara- Bureau, also file with the International Preliminary Examining tion of either a further written opinion, if necessary, or Authority a copy of such amendments and any statement referred the *>international preliminary examination< report to in that Article. In any case, the International Bureau shall >(Form PCT/IPEA/409)<. promptly transmit a copy of such amendments and statement to that Authority. Amendments timely filed but misdirected or other- wise late reaching the examiner will be considered as The documents making up the international appli- in the case of regular domestic applications and may cation may include amendments of the claims filed by require a supplemental written opinion and/or the applicant under PCT Article 19. PCT Article 19 *>international preliminary examination< report. amendments are exclusively amendments to the Clearly, these guidelines offer the examiner flexi- claims and these amendments can only be made after bility. The examiner should be guided by the overrid- the search report has been established. PCT Article 19 ing principle that the international preliminary amendments will be transmitted to the International examination report * should be established with as Preliminary Examining Authority by the International few written opinions as possible and resolution of as Bureau. If a Demand for international preliminary many issues as possible consistent with the goal of a examination has already been submitted, the applicant timely and quality report. should preferably, at the time he files the PCT Article See also Administrative Instructions Section 602 19 amendments, also file a copy of the amendments regarding processing of amendments by the IPEA. with the International Preliminary Examining Author-</p><p>1800-147 Rev. 7, July 2008 1871.01 MANUAL OF PATENT EXAMINING PROCEDURE ity. In the event that the time limit for filing amend- cause the international application as amended to be ments under PCT Article 19, as provided in PCT Rule objectionable under the PCT, e.g., the amendment 46.1, has not expired and the Demand includes a should not introduce obscurity. statement that the start of the international prelimi- As a matter of policy and to ensure consistency in nary examination is to be postponed under PCT Rule handling amendments filed under PCT Articles 19 53.9(b), the international preliminary examination and 34 of the PCT, the following guidelines for pro- should not start before the examiner receives a copy cessing these amendments have been established: of any amendments made under PCT Article 19 or a notice from the applicant that he does not wish to (A) Any amendment which complies with make amendments under PCT Article 19, or before 37 CFR 1.485(a) will be considered; the expiration of 20 months from the priority date, (B) Amendments filed after the Demand whichever occurs first. (1) will be considered if filed before the appli- cation is docketed to the examiner, The applicant has the right to amend the claims, the description, and the drawings, in the prescribed man- (2) may be considered if filed after docketing. ner and before the start of international preliminary The examiner has discretion to consider such amend- examination. The amendment must not go beyond the ments if the examiner determines that the amendment disclosure in the international application as filed. places the application in better condition for examina- These amendments are referred to as PCT Article tion or the examiner determines that the amendment 34(2)(b) amendments. It should be noted that PCT should otherwise be entered; Article 19 amendments are strictly amendments to the (C) Amendments filed after expiration of the claims made during the Chapter I search phase while period for response to the written opinion PCT Article 34(2)(b) amendments to the description, (1) will be considered if the amendment was claims, and drawings are made during the Chapter II requested by the examiner, examination phase. (2) may be considered if the examiner deter- mines that the amendment places the application in When amendments to the description, claims, or better condition for examination or the examiner drawings are made under PCT Rule 66.8, they may be determines that the amendment should otherwise be accompanied by an explanation. These amendments entered. may have been submitted to avoid possible objections as to lack of novelty or lack of inventive step in view It is expected, due to the relatively short time of the citations listed in the international search period for completion of preliminary examination, report; to meet any objections noted by the Interna- that the Chapter II application will be taken up for tional Searching Authority under PCT Article preparation of the written opinion promptly after 17(2)(a)(ii) (i.e., that all or at least some claims do not docketing to the examiner and taken up for prepara- permit a meaningful search) or under PCT Rule 13 tion of the final report promptly after the time expires (i.e., that there is a lack of unity of invention); or to for response to the written opinion (i.e., after allowing meet objections that may be raised for some other rea- for mail processing). The examiner is not obliged to son, e.g., to remedy some obscurity which the appli- consider amendments or arguments which are filed cant himself/herself has noted in the original after he/she has taken up the case for preparation of documents. the written opinion or the *>international preliminary The amendments are made by the applicant of his/ examination< report. her own volition. This means that the applicant is not Amendments timely filed but misdirected or are restricted to amendments necessary to remedy a otherwise late reaching the examiner will be consid- defect in his/her international application. It does not, ered as in the case of regular domestic applications however, mean that the applicant should be regarded and may require a supplemental written opinion and/ as free to amend in any way he/she chooses. Any or *>international preliminary examination< report. amendment must not add subject matter which goes Clearly, these guidelines offer the examiner flexi- beyond the disclosure of the international application bility. The examiner should be guided by the overrid- as originally filed. Furthermore, it should not itself ing principle that the *>international preliminary </p><p>Rev. 7, July 2008 1800-148 PATENT COOPERATION TREATY 1874 tional preliminary examination, and an international preliminary examination< report (the PCT/IPEA/409) should be examination, and in the particular case decides not to carry out such examination, or established with as few written opinions as possible and resolution of as many issues as possible consis- (ii) that the description, the claims, or the drawings, are tent with the goal of a timely and quality report. so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the nov- See also Administrative Instructions Section 602 elty, inventive step (non-obviousness), or industrial applicability, regarding processing of amendments by the Interna- of the claimed invention, the said authority shall not go into the tional Preliminary Examining Authority. questions referred to in Article 33(1) and shall inform the appli- cant of this opinion and the reasons therefor. 1872 **>Availability of the Interna- (b) If any of the situations referred to in subparagraph (a) is found to exist in, or in connection with, certain claims only, the tional Application File for Interna- provisions of that subparagraph shall apply only to the said tional Preliminary Examination claims. by< the Examining Corps [R-6] There are instances where international preliminary PCT Administrative Instruction Section 605. examination is not required because of the nature of File to be used for International Preliminary Examination the subject matter claimed and also because the claims are so indefinite that no examination is possi- Where the International Preliminary Examining Authority is ble. Such instances should seldom occur, especially part of the same national Office or intergovernmental organization since most problems of this nature would have as the International Searching Authority, the same file shall serve already been discovered and indicated at the time of the purposes of international search and international preliminary the international search. examination. If it is found that certain claims of an international *>After< the PCT International Application Pro- application relate to subject matter for which no inter- cessing Division has finished processing **>the doc- national preliminary examination is required, uments and fees filed with a complete demand, the **>check the appropriate box on a Form PCT/IPEA/ international application is docketed to an examiner in 408 in an application having an international filing the appropriate Technology Center for examination. If date before January 1, 2004, or on a Form PCT/IPEA/ the USPTO was the International Searching Authority 408 or a Form PCT/IPEA/409, as appropriate, in an for the international application, the same file used for application having an international filing date on or purposes of the international search will be used for after January 1, 2004 (see MPEP § 1860)<. It should purposes of international preliminary examination.< be noted that subject matter which is normally exam- ** ined under U.S. national procedure should also be examined as an International Preliminary Examining 1874 Determination if International Pre- Authority. liminary Examination Is Required The examiner should check the appropriate box if it and Possible [R-2] is found that the description, claims or drawings are so unclear, or the claims are so inadequately sup- PCT Article 34. ported by the description that no opinion could be Procedure Before the International Preliminary Examin- formed as to the novelty, inventive step (nonobvious- ing Authority ness) and industrial applicability of the claimed ***** invention. Subject matter not searched under Chapter I will (4)(a) If the International Preliminary Examining Authority considers not be the subject of a preliminary examination under Chapter II. This is so even if claims which were not (i) that the international application relates to a subject matter on which the International Preliminary Examining Author- searched under Chapter I are modified to be accept- ity is not required, under the Regulations, to carry out an interna- able for examination.</p><p>1800-149 Rev. 7, July 2008 1875 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>1875 Unity of Invention Before the Inter- (3) If applicant fails to restrict the claims or pay addi- tional fees within the time limit set for reply, the International Pre- national Preliminary Examining liminary Examining Authority will issue a written opinion and/or Authority [R-2] establish an international preliminary examination report on the main invention and shall indicate the relevant facts in the said PCT Article 34. report. In case of any doubt as to which invention is the main Procedure before the International Preliminary Examining - invention, the invention first mentioned in the claims and previ- ously searched by an International Searching Authority shall be Authority considered the main invention. ***** (c) Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking (3)(a)If the International Preliminary Examining Authority the prior art into consideration, as where a document discovered considers that the international application does not comply with during the search shows the invention claimed in a generic or link- the requirement of unity of invention as set forth in the Regula- ing claim lacks novelty or is clearly obvious, leaving two or more tions, it may invite the applicant, at his option, to restrict the claims joined thereby without a common inventive concept. In claims so as to comply with the requirement or to pay additional such a case the International Preliminary Examining Authority fees. may raise the objection of lack of unity of invention. ***** The examiner will usually begin the preliminary (c) If the applicant does not comply with the invitation examination by checking the international application referred to in subparagraph (a) within the prescribed time limit, for unity of invention. The international preliminary the International Preliminary Examining Authority shall establish examination will only be directed to inventions which an international preliminary examination report on those parts of the international application which relate to what appears to be the have been searched by the International Searching main invention and shall indicate the relevant facts in the said Authority. All claims directed to inventions which report. The national law of any elected State may provide that, have not been searched by the International Searching where its national Office finds the invitation of the International Authority will not be considered by the International Preliminary Examining Authority justified, those parts of the Preliminary Examining Authority. If the examiner in international application which do not relate to the main invention the International Preliminary Examining Authority shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to that finds lack of unity of invention in the claims to be Office. examined, an invitation is normally prepared and sent to the applicant requesting the payment of additional ***** fees or the restriction of the claims on Form PCT/ 37 CFR 1.488. Determination of unity of invention before IPEA/405. Such an invitation will include the identifi- the International Preliminary Examining Authority. cation of what the examiner considers to be the “main (a) Before establishing any written opinion or the interna- invention” which will be examined if no additional tional preliminary examination report, the International Prelimi- fees are paid or restriction is made by the applicant. nary Examining Authority will determine whether the international application complies with the requirement of unity The procedure before the International Preliminary of invention as set forth in § 1.475. Examining Authority regarding lack of unity of (b) If the International Preliminary Examining Authority invention is governed by PCT Article 34(3)(a) considers that the international application does not comply with through (c), PCT Rule 68 (see also PCT Rule 70.13), the requirement of unity of invention, it may: and 37 CFR 1.475 and 1.488. It should be noted that (1) Issue a written opinion and/or an international pre- in most instances lack of unity of invention will have liminary examination report, in respect of the entire international application and indicate that unity of invention is lacking and been noted and reported upon by the International specify the reasons therefor without extending an invitation to Searching Authority which will have drawn up an restrict or pay additional fees. No international preliminary exam- international search report >(and for international ination will be conducted on inventions not previously searched applications having a filing date on or after January 1, by an International Searching Authority. 2004, a written opinion)< based on those parts of the (2) Invite the applicant to restrict the claims or pay addi- international application relating to the invention, or tional fees, pointing out the categories of invention found, within a set time limit which will not be extended. No international pre- unified linked group of inventions, first mentioned in liminary examination will be conducted on inventions not previ- the claims (“main invention”) >, unless the applicant ously searched by an International Searching Authority, or has paid additional fees<. If the applicant has paid </p><p>Rev. 7, July 2008 1800-150 PATENT COOPERATION TREATY 1875.01 additional search fees, additional inventions would to which the claims have been restricted. It should be also have been searched. No international preliminary noted that the national law of any elected State may examination will be conducted on inventions not pre- provide that, where its national Office finds the invita- viously searched by an International Searching tion of the International Preliminary Examining Authority (37 CFR 1.488(b)(2)). Authority justified, those parts of the international ** application which do not relate to the main invention If the examiner determines that unity of invention is shall, as far as effects in that State are concerned, be lacking, there are two options: considered withdrawn unless a special fee is paid by the applicant to that Office (PCT Article 34(3)(c)).< (A) The examiner may conduct an international Whether or not the question of unity of invention has preliminary examination covering all the claimed and been raised by the International Searching Authority, previously searched inventions and indicate that unity it may be considered by the examiner when serving as of invention is lacking and specify the reasons there- an authorized officer of the International Preliminary for without extending an invitation to restrict or pay Examining Authority. In the examiner’s consider- additional fees (PCT Rule 68.1), or ation, all documents cited by the International Search- (B) The examiner may invite the applicant to ing Authority should be taken into account and any restrict the claims, so as to comply with the require- additional relevant documents considered. However, ment, or pay additional fees, pointing out the catego- there are cases of lack of unity of invention, where, ries of invention found >using Form PCT/IPEA/405 compared with the procedure of inviting the applicant or USPTO/499 (telephone practice). See MPEP § to restrict the international application or pay addi- 1875.01<. The invitation to restrict or pay additional tional fees (PCT Rule 68.2), little or no additional fees shall state the reasons for which the international effort is involved in establishing the written opinion>, application is considered as not complying with the if any,< and the international preliminary examination requirement of unity of invention. (PCT Rule 68.2). report for the entire international application. Then Inventions not previously searched will not be consid- reasons of economy may make it advisable for the ered or included in the invitation. examiner to use the option referred to in PCT Rule The written opinion, if any, and the international 68.1 by choosing not to invite the applicant to restrict preliminary examination report must be established the claims or to pay additional fees. on all inventions for which examination fees have Unity of invention is defined by 37 CFR 1.475 been paid. which describes the circumstances in which the If the applicant fails to reply to the invitation to requirement of unity of invention is considered ful- restrict the claims or pay additional examination fees filled. due to lack of unity of invention >(by not paying the additional fees or by not restricting the claims either 1875.01 Preparation of Invitation Con- sufficiently or at all)<, the written opinion>, if any,< and international preliminary examination report must cerning Unity [R-3] be established on the claims directed to what appears to be the main invention (PCT Article 34(3)(c)). The The “Invitation to restrict or pay additional fees” main invention, in case of doubt, is the first claimed Form PCT/IPEA/405 is used to invite the applicant, at invention for which an international search report has his/her option, to restrict the claims to comply with been issued by the International Searching Authority. the requirements of unity of invention or to pay addi- The main invention, as viewed by the examiner, must tional examination fees. In addition, the examiner be set forth on Form PCT/IPEA/405. must explain the reasons why the international appli- >If the applicant timely complies with the invita- cation is not considered to comply with the require- tion to pay additional fees even under protest, or to ment of unity of invention. The examiner must also restrict the claims, the examiner carries out interna- specify, on Form PCT/IPEA/405, at least one group or tional preliminary examination on those claimed groups of claims which, if elected, would comply inventions for which additional fees have been paid or with the requirement for unity of invention.</p><p>1800-151 Rev. 7, July 2008 1875.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>> ></p><p>I. < INVITATION TO RESTRICT OR PAY III. < TELEPHONIC RESTRICTION PRAC- ADDITIONAL FEES TICE</p><p>In the space provided on form PCT/IPEA/405, the Telephone practice may be used to allow applicants examiner should identify the disclosed inventions by to elect an invention to be examined or to pay addi- claim numerals and indicate which disclosed inven- tional fees if: tions are so linked as to form a single general inven- (A) Applicant or applicant’s legal representative tive concept, thereby complying with the requirement has a USPTO deposit account, of unity of invention. For example, claims to different (B) Applicant or the legal representative or agent categories of invention such as a product, claims to a orally agrees to charge the additional fees to the process specifically adapted for the manufacture of account, and the product and a claim for a use of the product would (C) A complete record of the telephone conversa- be considered related inventions which comply with tion is included with the written opinion, if any, or the the unity of invention requirement, whereas a claim to international preliminary examination report, includ- an apparatus for making the product in the same ing: application would be considered a second invention (1) Examiner’s name; for which additional fees would be required. The rea- (2) Authorizing attorney’s name; sons for holding that unity of invention is lacking (3) Date of conversation; must be specified. See 37 CFR 1.475 and Chapter 10 of the International Search and Preliminary Examina- (4) Invention elected and/or inventions for tion Guidelines which can be obtained from WIPO’s which additional fees paid; and web site (www.wipo.int/pct/en/texts/gdlines.htm). (5) Deposit account number and amount to be charged. Also, the examiner should specify the main inven- tion and claims directed thereto which will be exam- When the telephone practice is used in making lack ined if the applicant fails to restrict or pay additional of unity requirements, it is critical that the examiner fees. The main invention, in case of doubt, is the first orally inform applicant that there is no right to protest claimed invention or related invention before the the holding of lack of unity of invention for any group International Preliminary Examining Authority for of invention(s) for which no additional examination which a search fee has been paid and an international fee has been paid. search report has been prepared. The examiner must further orally advise applicant The examiner should indicate the total amount of that any protest to the holding of lack of unity or the additional fees required for examination of all claimed amount of additional fee required must be filed in inventions. writing no later than one month from the mailing date In the box provided at the top of the form, the time of the written opinion or the international preliminary limit >of one month< for response is set according to examination report if the lack of unity holding is first PCT Rule 68.2.** Extensions of time are not permit- mailed with the IPER because there was no written ted. opinion. The examiner should fill in the information Since the space provided on Form PCT/IPEA/405 on Form USPTO/499 “Chapter II PCT Telephone is limited, supplemental attachment sheets, supplied Memorandum for Lack of Unity” as a record of the by the examiner, with reference back to the specific telephonic holding of lack of unity. section, should be incorporated whenever necessary. If applicant refuses to either restrict the claims to one invention or authorize payment of additional fees, > or if applicant does not have a deposit account, Form II. < AUTHORIZED OFFICER PCT/IPEA/405 should be prepared and mailed to applicant. Form PCT/IPEA/405 must be signed by an exam- If a written invitation is required, the examiner iner with at least partial signatory authority. should, if possible, submit that written invitation to </p><p>Rev. 7, July 2008 1800-152 PATENT COOPERATION TREATY 1876 the TC for review and mailing within 7 days from the > date the international application is charged to the examiner. I. < NOTIFICATION OF DECISION ON See MPEP § 1850 for form paragraphs for lack of PROTEST unity in international applications. Form PCT/IPEA/420 is used by the Technology 1875.02 Reply to Invitation Concerning Center (TC) to inform the applicant of the decision regarding applicant’s protest on the payment of addi- Lack of Unity of Invention [R-3] tional fees concerning unity of invention. PCT Administrative Instruction Section 603. > **>Transmittal of Protest Against Payment of Additional II. < NOTIFICATION Fees and Decision Thereon Where International Applica- tion Is Considered to Lack Unity of Invention The TC checks the appropriate box, i.e., 1 or 2. If box 2 is checked, a clear and concise explanation as to The International Preliminary Examining Authority shall trans- mit to the applicant, preferably at the latest together with the inter- why the protest concerning the unity of invention was national preliminary examination report, any decision which it has found to be unjustified must be given. taken under Rule 68.3(c) on the protest of the applicant against Since the space is limited, supplemental attachment payment of additional fees where the international application is sheet(s) should be incorporated whenever necessary. considered to lack unity of invention. At the same time, it shall transmit to the International Bureau a copy of both the protest and > the decision thereon, as well as any request by the applicant to for- ward the texts of both the protest and the decision thereon to the III. < AUTHORIZED OFFICER elected Offices.< Form PCT/IPEA/420 must be signed by a TC 37 CFR 1.489. Protest to lack of unity of invention before Director. See MPEP § 1002.02(c), item (2). the International Preliminary Examining Authority. (a) If the applicant disagrees with the holding of lack of unity of invention by the International Preliminary Examining 1876 Notation of Errors and Informali- Authority, additional fees may be paid under protest, accompanied ties by the Examiner [R-6] by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered PCT Administrative Instruction Section 607. excessive, or both. **>Rectifications of Obvious Mistakes under Rule 91 (b) Protest under paragraph (a) of this section will be exam- ined by the Director or the Director’s designee. In the event that Where the International Preliminary Examining Authority the applicant’s protest is determined to be justified, the additional authorizes a rectification of an obvious mistake under Rule 91, fees or a portion thereof will be refunded. Section 602(a)(i) to (iii) and (b) shall apply mutatis mutandis, pro- (c) An applicant who desires that a copy of the protest and vided that, where a sheet is marked as indicated in Section 602, the decision thereon accompany the international preliminary the words “RECTIFIED SHEET (RULE 91)” shall be used.< examination report when forwarded to the Elected Offices, may notify the International Preliminary Examining Authority to that Although the examiner is not responsible for dis- effect any time prior to the issuance of the international prelimi- covering *>mistakes< in the international application, nary examination report. Thereafter, such notification should be if any *>mistakes< come to the attention of the exam- directed to the International Bureau. iner, they may be noted and called to the applicant’s Applicant may reply by paying some or all attention. The examiner may invite applicant to rec- additional fees or by restricting the claims to one tify obvious *>mistakes< using Form PCT/IPEA/411. invention. If applicant makes no reply within the set *>Mistakes< that are not obvious may be called to time limit, the international preliminary examination applicant’s attention in Box VII of PCT/IPEA/408. will proceed on the basis of the main invention only. AUTHORIZED OFFICER If applicant has paid an additional fee or fees, a pro- test to the holding of lack of unity of invention may be Form PCT/IPEA/408 and Form PCT/IPEA/411 filed with the International Preliminary Examining must be signed by an examiner having at least partial Authority. signatory authority.</p><p>1800-153 Rev. 7, July 2008 1876.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>1876.01 Request for Rectification and 1877 Nucleotide and/or Amino Acid Se- Notification of Action Thereon quence Listings During the Inter- [R-6] national Preliminary Examination [R-3] I. NOTIFICATION OF DECISION CON- CERNING REQUEST FOR RECTIFICA- If the International Preliminary Examining Author- TION ity finds that the international application contains disclosure of one or more nucleotide and/or amino The rectification of obvious *>mistakes< is gov- acid sequences but (A) the international application erned by **>PCT Rule 91. PCT Administrative does not contain a sequence listing complying with Instructions Section 325 provides instructions for the the standard provided for in the Administrative processing of rectifications of obvious mistakes by Instructions, or (B) applicant has not furnished a the receiving Office; PCT Administrative Instructions sequence listing in computer readable form comply- Sections 413 and 413bis provide instructions for the ing with the standard provided for in the Administra- processing of rectifications of obvious mistakes by tive Instructions, the International Preliminary the International Bureau; PCT Administrative Instruc- Examining Authority may request the applicant to tions Section 511 provide s instructions for the pro- furnish such sequence listing or listing in computer cessing of rectifications of obvious mistakes by the readable form in accordance with the Administrative International Searching Authority; and PCT Admin- Instructions. PCT Rule *>13ter.2<. istrative Instructions Section 607 provides instruc- tions for the processing of rectifications of obvious 1878 Preparation of the Written Opinion mistakes by the International Preliminary Examining of the International Preliminary Authority.< Examining Authority in Interna- II. NOTIFICATION tional Applications Having an In- ** ternational Filing Date On or After If the applicant requests **>rectification of any January 1, 2004 [R-6] obvious mistakes in the description, claims, or draw- ings, or in a correction thereon, or in an amendment [Note: The regulations under the PCT were under Article 19 or 34, the International Preliminary changed effective January 1, 2004. Corresponding Examining Authority should notify applicant whether changes were made to Title 37 of the Code of Fed- the rectification is authorized or refused using Form eral Regulations. See January 2004 Revision of PCT/IPEA/412. Any rectification offered to the inter- Patent Cooperation Treaty Application Procedure, national preliminary examining authority must be in 68 FR 59881 (Oct. 20, 2003), 1276 O.G. 6 (Nov. 11, the form of< a replacement sheet embodying the recti- 2003). The discussion of the procedures in effect fication and the letter accompanying the replacement for international applications filed prior to Janu- sheet must draw attention to the differences between ary 1, 2004, has been moved from this section to the replaced sheet and the replacement sheet. MPEP § 1878.01.] **>The examiner, after fully considering appli- PCT Article 34. cant’s request for rectification of an obvious mis- Procedure Before the International Preliminary Examining take,< will notify applicant of the action taken on Authority Form PCT/IPEA/412. Since the space provided is limited, supplemental sheet(s) should be incorporated ***** whenever necessary. (2)(c) The applicant shall receive at least one written opinion from the International Preliminary Examining Authority unless III. AUTHORIZED OFFICER such Authority considers that all of the following conditions are fulfilled: Form PCT/IPEA/412 must be signed by an exam- (i) the invention satisfies the criteria set forth in Article iner having at least partial signatory authority. 33(1),</p><p>Rev. 7, July 2008 1800-154 PATENT COOPERATION TREATY 1878</p><p>(ii) the international application complies with the translation is not furnished within that time limit, the international requirements of this Treaty and the Regulations in so far as preliminary report may be established as if the priority had not checked by that Authority, been claimed. (iii)no observations are intended to be made under Article 35(2), last sentence. PCT Rule 66. Procedure Before the International Preliminary Examining ***** Authority 37 CFR 1.484. Conduct of international preliminary ***** examination. (a) An international preliminary examination will be con- 66.1bis Written Opinion of the International Searching ducted to formulate a non-binding opinion as to whether the Authority claimed invention has novelty, involves an inventive step (is non- obvious) and is industrially applicable. ***** (b) International preliminary examination will begin in (a) Subject to paragraph (b), the written opinion established accordance with PCT Rule 69.1. by the International Searching Authority under Rule 43bis.1 shall (c) No international preliminary examination will be con- be considered to be a written opinion of the International Prelimi- ducted on inventions not previously searched by an International nary Examining Authority for the purposes of Rule 66.2(a). Searching Authority. (d) The International Preliminary Examining Authority will ***** establish a written opinion if any defect exists or if the claimed invention lacks novelty, inventive step or industrial applicability 66.4 Additional Opportunity for Submitting Amendments or and will set a non-extendable time limit in the written opinion for Argument the applicant to reply. (a) If the International Preliminary Examining Authority (e) The written opinion established by the International wishes to issue one or more additional written opinions, it may do Searching Authority under PCT Rule 43bis.1 shall be considered so, and Rules 66.2 and 66.3 shall apply. to be a written opinion of the United States International Prelimi- nary Examining Authority for the purposes of paragraph (d) of ***** this section. (f) The International Preliminary Examining Authority may In applications having an international filing date establish further written opinions under paragraph (d) of this sec- on or after January 1, 2004, a written opinion must be tion. prepared by the International Searching Authority at (g) If no written opinion under paragraph (d) of this section the same time the international search report is pre- is necessary, or if no further written opinion under paragraph (f) of pared. The United States International Preliminary this section is to be established, or after any written opinion and the reply thereto or the expiration of the time limit for reply to Examining Authority (IPEA) will consider the written such written opinion, an international preliminary examination opinion of the International Searching Authority to be report will be established by the International Preliminary Exam- the first written opinion of the IPEA and as such in ining Authority. One copy will be submitted to the International most instances no further written opinion need be Bureau and one copy will be submitted to the applicant. issued by the U.S. examiner handling the international (h) An applicant will be permitted a personal or telephone preliminary examination before establishment of the interview with the examiner, which may be requested after the fil- ing of a Demand, and must be conducted during the period international preliminary examination report, even if between the establishment of the written opinion and the estab- there are objections outstanding. The examiner is to lishment of the international preliminary examination report. take into consideration any comments or amendments Additional interviews may be conducted where the examiner made by the applicant when he/she establishes the determines that such additional interviews may be helpful to international preliminary examination report. How- advancing the international preliminary examination procedure. A ever, a further written opinion must be prepared if summary of any such personal or telephone interview must be filed by the applicant or, if not filed by applicant be made of applicant files a response which includes a persuasive record in the file by the examiner. argument that the written opinion issued by the Inter- (i) If the application whose priority is claimed in the inter- national Searching Authority was improper because national application is in a language other than English, the of a negative opinion with respect to a lack of novelty, United States International Preliminary Examining Authority inventive step (non-obviousness) or industrial appli- may, where the validity of the priority claim is relevant for the for- mulation of the opinion referred to in Article 33(1), invite the cability as described in PCT Article 33(2)-(4); and applicant to furnish an English translation of the priority docu- which results in the examiner considering any of the ment within two months from the date of the invitation. If the claims to lack novelty, inventive step (non-obvious-</p><p>1800-155 Rev. 7, July 2008 1878 MANUAL OF PATENT EXAMINING PROCEDURE ness) or industrial applicability as described in PCT (RULE 26)”, “RECTIFIED SHEET (RULE 91)”, and Article 33(2)-(4) based on new art not necessitated by “INCORPORATED BY REFERENCE (RULE 20.6)” any amendment. Such a further written opinion are also considered to be originally filed/furnished should be established on the Written Opinion of the pages and should be listed as originally filed/fur- International Preliminary Examining Authority (Form nished pages.< PCT/IPEA/408). However, amended sheets of claims filed under > PCT Article 19 in response to the international search When preparing Form PCT/IPEA/408, the classifi- report are to be indicated as pages as amended cation of the subject matter inserted by the examiner (together with any statement) under PCT Article 19. in the header on the cover sheet shall be either: The International Bureau (IB) marks, in the upper right-hand corner of each replacement sheet submitted (A) that given by the International Searching under PCT Article 19, the international application Authority under PCT Rule 43.3, if the examiner number, the date on which that sheet was received agrees with such classification; or under PCT Article 19 and, in the middle of the bottom (B) that which the examiner considers to be cor- margin, the words “AMENDED SHEET (ARTICLE rect, if the examiner does not agree with that classifi- 19).” See Administrative Instructions Section 417. cation. Only those pages of claims filed on the date of Both the International Patent Classification (IPC) demand or after the filing of a demand should be and the U.S. classification should be given. < listed as pages “received by this Authority on____.” > I. BOX NO. I. — BASIS OF OPINION Further, if the opinion has been based on a nucle- **> otide and/or amino acid sequence disclosed and nec- When completing Box No. I, item 1 of Form PCT/ essary to the claimed invention, the examiner must IPEA/408, the examiner must indicate whether or not indicate the type of material (i.e., a sequence listing the opinion has been established on the basis of the and/or tables related thereto), the format of the mate- international application in the language in which it rial (i.e., on paper or in electronic form) and the time was filed. If a translation was furnished for the pur- of filing/furnishing (i.e., contained in the international pose of the international search, publication, or inter- application as filed, filed together with the interna- national preliminary examination, this must be tional application in electronic form, or furnished sub- indicated. The opinion will be established on the basis sequently to the IPEA). If more than one version or of any amendments, rectifications, priority and/or copy of the sequence listing and/or table relating unity of invention holdings, and shall answer the thereto is filed, the examiner must indicate whether questions concerning novelty, inventive step, and the applicant has provided the required statement industrial applicability for each of the claims under indicating that the information in the subsequent or examination. additional copies are identical to that in the applica- For the purpose of completing Box No. I, item 2, tion as filed or does not go beyond the application as sheets of the description and drawings filed during filed, as appropriate. Chapter I proceedings and stamped “SUBSTITUTE < SHEET (RULE 26)”, “RECTIFIED SHEET (RULE The examiner must also indicate, in Box >No.< I, 91)”, and “INCORPORATED BY REFERENCE item 3, if any of the amendments filed resulted in the (RULE 20.6)” are considered to be originally filed/ cancellation of any pages of the description, any of furnished pages and should be listed as originally the **>claims, drawings, sequence listing or< tables filed/furnished pages. Only those amendments or rec- related to the sequence listing. If the examiner consid- tifications to the description and drawings filed on the ers any of the amendments to go beyond the original date of demand or after the filing of a demand should disclosure, the examiner must point this out in Box be listed as pages “received by this Authority >No.< I, item 4 and explain the reasons for this deter- on____.” Sheets of claims filed during the Chapter I mination in the Supplemental Box. New matter which proceedings and stamped “SUBSTITUTE SHEET appears on a replacement sheet will be disregarded for </p><p>Rev. 7, July 2008 1800-156 PATENT COOPERATION TREATY 1878 the purpose of establishing the opinion. However, the application are so unclear or inadequately supported remainder of the replacement sheet, including any by the description that the question of novelty, inven- amendments which do not constitute new matter, will tive step (nonobviousness), and industrial applicabil- be taken into consideration for the purpose of estab- ity cannot be considered, or where the international lishing the opinion. >Further, Box No. I, item 5 needs application or claims thereof relate to subject matter to be marked if the opinion is established taking into which does not require international preliminary account the rectification of an obvious mistake under examination, or where no international search report PCT Rule 91.< has been established for the claims. Box >No.< III of Form PCT/IPEA/408 should be II. BOX NO. II. — PRIORITY filled out in accordance with the instructions for Box Where the priority document is provided by the >No.< III of Form PCT/ISA/237 provided in MPEP § applicant in compliance with PCT Rule 17.1 after the 1845.01. preparation of the search report and the written opin- IV. BOX NO. IV. — LACK OF UNITY OF ion of the ISA, any written opinion of the IPEA and/or INVENTION the international preliminary examination report should reconsider the validity of the priority claim. Box >No.< IV of Form PCT/IPEA/408 should be Where the priority document is a foreign document used by the examiner to notify applicant that lack of and it is not already in the file, the IPEA may request unity of invention has been found. a copy of the document from the IB and, if necessary, If in reply to an invitation to restrict, applicant a translation from the applicant. In the meantime, if restricted the claims to a particular group, check the the outcome of the examination requires the issuing of first box under subsection 1. If applicant paid addi- an opinion, that opinion should be issued without tional fees for examination of additional inventions, waiting to obtain the priority document and/or the check the second box under subsection 1. If the addi- translation. An appropriate comment should be made tional fees were paid under protest, check the third under the heading “Additional observations, if neces- box under subsection 1. If applicant neither restricted sary” in Box >No.< II of the written opinion. **>If nor paid additional fees in reply to the objection of the IPEA needs a copy of the priority document, and lack of unity of invention, check the fourth box under the priority document was not filed with the IPEA in subsection 1. its capacity as a national office and is not available to Subsection 2 of Box IV is to be completed if the the IPEA from a digital library in accordance with the examiner determines that unity of invention is lacking Administrative Instructions, then the IPEA may but chooses not to invite the applicant to restrict or request the IB to furnish such copy. PCT Rule 66.7(a). pay additional fees. If the priority document is in a foreign language, the Subsection 3 of Box IV is to be completed to indi- IPEA may invite applicant to furnish a translation cate which claims were the subject of international within two months of such invitation. PCT Rule preliminary examination. If all claims are to be exam- 66.7(b). Failure to furnish the copy of the priority ined, check the first box under subsection 3. If only document or translation may result in the IPEA estab- some of the claims were the subject of international lishing the written opinion of the IPEA and/or the preliminary examination, check the second box under IPER as if the priority had not been claimed.< This is subsection 3 and identify the claim numbers. indicated by checking the appropriate boxes in item 1 of Box No. II in the opinion or report. V. BOX NO. V. — REASONED STATEMENT WITH REGARD TO NOVELTY, INVEN- III. BOX NO. III. — NON-ESTABLISHMENT TIVE STEP, AND INDUSTRIAL APPLICA- OF OPINION ON NOVELTY, INVENTIVE BILITY OF CLAIMS STEP AND INDUSTRIAL APPLICABIL- ITY In Box >No.< V, the examiner must list in summary form all claims with regard to the criteria of novelty Box >No.< III of Form PCT/IPEA/408 is intended (N), inventive step (IS), and industrial applicability to cover situations where some or all claims of an (IA), and should be filled out in accordance with the </p><p>1800-157 Rev. 7, July 2008 1878 MANUAL OF PATENT EXAMINING PROCEDURE instructions for Box >No.< V of Form PCT/ISA/237 mat used on the international search report. Two cop- provided in MPEP § 1845.01. ies of each newly cited >foreign patent document and In applications where the examiner has determined non-patent literature< reference should be included in that an additional written opinion is required, the the PCT Chapter II file when it is sent to PCT Opera- application should be searched by the examiner at tions for the mailing of the Form PCT/IPEA/408. One least to the point of bringing the previous search up to of the copies of *>each< newly cited >foreign patent date. Prior art discovered in a search and applied in a document and non-patent literature< reference will be reasoned statement in Box >No.< V must be made of sent to the applicant and one copy will be **>for< the record in Box >No.< V. Prior art already cited on the Chapter II file. >The USPTO no longer mails paper international search report need not again be cited on copies of U.S. patents and U.S. patent application the written opinion or international preliminary exam- publications cited during the international stage of an ination report. The subsequently discovered prior art international application, so paper copies of these is to be cited in compliance with PCT Rule 43.5 and documents need not be included in the file.< Administrative Instructions Section 503 using the same citation format used on the international search VII. BOX VII. — CERTAIN DEFECTS IN THE report. Two copies of each newly cited >foreign INTERNATIONAL APPLICATION patent document and non-patent literature< reference will be sent to the applicant and one copy will be In Box >No.< VII, defects in the form and content **>for< the Chapter II file. >The USPTO no longer of the international application are identified. Box mails paper copies of U.S. patents and U.S. patent >No.< VII should be filled out in accordance with the application publications cited during the international instructions for Box No. VII of Form PCT/ISA/237 stage of an international application, so paper copies provided in MPEP § 1845.01. of these documents need not be included in the file.< VIII. BOX NO. VIII. — CERTAIN OBSERVA- VI. BOX NO. VI. — CERTAIN DOCUMENTS TIONS ON THE INTERNATIONAL AP- CITED PLICATION</p><p>**>Box No. VI provides a convenient manner of In Box >No.< VIII, the examiner notifies the appli- listing two different types of documents that were cant of observations made as to the clarity of the newly discovered and which were not applied in Box claims, the description, the drawings, or on the ques- No. V: tion whether the claims are fully supported by the description. Box >No.< VIII should be filled out in (A) Published applications or patents which accordance with the instructions for Box >No.< VIII would constitute prior art for purposes of PCT Article of Form PCT/ISA/237 provided in MPEP § 1845.01. 33(2) and (3) had they been published prior to the rel- evant date (PCT Rule 64.1) but were filed prior to, or claim the priority of an earlier application which had IX. TIME TO REPLY been filed prior to, the relevant date (PCT Rule 64.3)< - by the application number or patent number as well An invitation by the International Preliminary as the publication date, filing date and priority date; Examining Authority (IPEA) to applicant to reply to and the examiner’s written opinion will normally set a 2- month time limit for reply. (B) Nonwritten disclosure - by the kind of disclo- sure, date of the disclosure and the date of the written However, PCT Rule 69.2 sets forth time limits for disclosure referring to the nonwritten disclosure. the IPEA to establish the international preliminary examination report (IPER). Accordingly, in applica- As with the newly cited art in Box >No.< V, the tions filed on or after January 1, 2004, a 1-month time subsequently discovered prior art is to be cited in limit should be set by the examiner in situations when compliance with PCT Rule 43.5 and Administrative a 2-month time limit would risk delaying the date of Instructions Section 503 using the same citation for- establishment of the IPER beyond:</p><p>Rev. 7, July 2008 1800-158 PATENT COOPERATION TREATY 1878.01</p><p>(A) 28 months from the priority date; or (ii) the international application complies with the (B) 6 months from the time provided under PCT requirements of this Treaty and the Regulations in so far as checked by that Authority, Rule 69.1 for the start of international preliminary (iii)no observations are intended to be made under Article examination; or 35(2), last sentence. (C) 6 months from the date of receipt by the IPEA ***** of the translation furnished under PCT Rule 55.2. Former As a general rule, a 1-month time limit for reply to the written opinion should be set by the examiner if 37 CFR 1.484. Conduct of international preliminary examination. the written opinion (Form PCT/IPEA/408) has not (a) An international preliminary examination will be con- been completed by the examiner within 24 months ducted to formulate a non-binding opinion as to whether the following the application’s “priority date” as defined claimed invention has novelty, involves an inventive step (is non- in PCT Article 2. obvious) and is industrially applicable. The United States rules pertaining to international (b) International preliminary examination will begin promptly upon receipt of a proper Demand in an application for preliminary examination of international applications which the United States International Preliminary Examining do not provide for any extension of time to reply to a Authority is competent, for which the fees for international pre- written opinion. See 37 CFR 1.484(d)-(f) and MPEP liminary examination (§ 1.482) have been paid, and which § 1878.02. requests examination based on the application as filed or as amended by an amendment which has been received by the X. AUTHORIZED OFFICER United States International Preliminary Examining Authority. Where a Demand requests examination based on a PCT Article 19 Every written opinion must be signed by an exam- amendment which has not been received, examination may begin iner having at least partial signatory authority. at 20 months without receipt of the PCT Article 19 amendment. Where a Demand requests examination based on a PCT Article 34 amendment which has not been received, applicant will be noti- 1878.01 Preparation of the Written fied and given a time period within which to submit the amend- Opinion in International Appli- ment. cations Having an International (1) Examination will begin after the earliest of: (i) Receipt of the amendment; Filing Date Before January 1, (ii) Receipt of applicant’s statement that no amendment 2004 [R-7] will be made; or (iii)Expiration of the time period set in the notification. [Note: In international applications filed on or (2) No international preliminary examination report will be established prior to issuance of an international search report. after January 1, 2004, the first written opinion is (c) No international preliminary examination will be con- usually prepared by the International Searching ducted on inventions not previously searched by an International Authority (see MPEP §§ 1845-1845.01), and a fur- Searching Authority. ther written opinion may be prepared by the Inter- (d) The International Preliminary Examining Authority will national Preliminary Examining Authority (see establish a written opinion if any defect exists or if the claimed MPEP § 1878).] invention lacks novelty, inventive step or industrial applicability and will set a non-extendable time limit in the written opinion for the applicant to reply. PCT Article 34. (e) If no written opinion under paragraph (d) of this section Procedure Before the International Preliminary Examining is necessary, or after any written opinion and the reply thereto or Authority the expiration of the time limit for reply to such written opinion, an international preliminary examination report will be estab- ***** lished by the International Preliminary Examining Authority. One copy will be submitted to the International Bureau and one copy (2)(c) The applicant shall receive at least one written opinion will be submitted to the applicant. from the International Preliminary Examining Authority unless (f) An applicant will be permitted a personal or telephone such Authority considers that all of the following conditions are interview with the examiner, which must be conducted during the fulfilled: non-extendable time limit for reply by the applicant to a written (i) the invention satisfies the criteria set forth in Article opinion. Additional interviews may be conducted where the 33(1), examiner determines that such additional interviews may be help-</p><p>1800-159 Rev. 7, July 2008 1878.01 MANUAL OF PATENT EXAMINING PROCEDURE ful to advancing the international preliminary examination proce- The classification of the subject matter provided by dure. A summary of any such personal or telephone interview the examiner in the header of the cover sheet shall be must be filed by the applicant as a part of the reply to the written either: opinion or, if applicant files no reply, be made of record in the file by the examiner. (A) that given by the International Searching (g) If the application whose priority is claimed in the inter- Authority under PCT Rule 43.3, if the examiner national application is in a language other than English, the United States International Preliminary Examining Authority agrees with such classification; or may, where the validity of the priority claim is relevant for the for- (B) that which the examiner considers to be cor- mulation of the opinion referred to in Article 33(1), invite the rect, if the examiner does not agree with that classifi- applicant to furnish an English translation of the priority docu- cation. ment within two months from the date of the invitation. If the translation is not furnished within that time limit, the international Both the International Patent Classification (IPC) preliminary examination report may be established as if the prior- and the U.S. classification should be given. ity had not been claimed. </p><p>A written opinion (Form PCT/IPEA/408) must be I. ITEM I. BASIS OF OPINION prepared if the examiner: Applicant has two opportunities to amend the inter- (A) Considers that the international application national application prior to international preliminary has any of the defects described in PCT Article 34(4); examination. Under PCT Article 19, the applicant is (B) Considers that the report should be negative entitled to one opportunity to amend the claims of the with respect to any of the claims because of a lack of international application by filing amendments with novelty, inventive step (non-obviousness) or indus- the International Bureau within 2 months of the mail- trial applicability; ing of the international search report. See PCT Rule (C) Notices any defects in the form or contents of 46.1. Applicant is also permitted to make amend- the international application under the PCT; ments before the International Preliminary Examining (D) Considers that any amendment goes beyond Authority under PCT Article 34(2)(b) and PCT Rule the disclosure in the international application as origi- 66.1. Any amendment, however, that does not accom- nally filed; pany the filing of the Demand but is filed later may (E) Wishes to make an observation on the clarity not be considered unless it reaches the examiner of the claims, the description, the drawings or to ques- before he/she takes up the application for examina- tion whether the claims are fully supported by the tion. description; When completing Box I, item 1, of Form PCT/ (F) Decides not to carry out the international pre- IPEA/408, the examiner must indicate whether or not liminary examination on a claim for which no interna- the opinion has been established on the basis of the tional search report was issued; or international application in the language in which it (G) Considers that no acceptable amino acid was filed. If a translation was furnished for the pur- sequence listing is available in a form that would pose of the search, this must be indicated. For the pur- allow a meaningful international preliminary exami- pose of completing Box I, Item 1, substitute and/or nation to be carried out. rectified sheets of the description and drawings filed during Chapter I proceedings are considered to be The applicant must be notified on Form PCT/IPEA/ originally filed pages/sheets and should be listed as 408 of the defects found in the application. The exam- originally filed pages/sheets. Only those amendments iner is further required to fully state the reasons for or rectifications to the description and drawings filed his/her opinion (PCT Rule 66.2(b)) and invite a writ- on the date of Demand or after the filing of a Demand ten reply, with amendments where appropriate (PCT should be listed as later filed pages/sheets. Substitute Rule 66.2(c)), setting a time limit for the reply of nor- and/or rectified sheets of claims filed during the mally 2 months. Chapter I proceedings are also considered to be origi- The examiner should insert the words “first” or nally filed pages/sheets and should be listed as origi- “second”, as the case may be, in the space provided nally filed pages/sheets. However, amended sheets of on the cover sheet of the written opinion. claims filed under Article 19 in response to the inter-</p><p>Rev. 7, July 2008 1800-160 PATENT COOPERATION TREATY 1878.01 national search report are to be indicated as pages/ application have/has been filed and the filing date of sheets as amended under Article 19. Only those the earlier application is one year or less from the fil- amendments, or rectifications to the claims filed on ing date of the international application. the date of Demand or after the filing of a Demand should be listed as later filed pages/sheets. The exam- III. ITEM III. NON-ESTABLISHMENT OF iner must also indicate, in Box I, item 3, if any of the OPINION ON NOVELTY, INVENTIVE amendments filed resulted in the cancellation of any STEP AND INDUSTRIAL APPLICABILI- pages of the description, any of the claims or draw- TY ings, or any pages of the sequence listing and/or any tables related to the sequence listing. If the examiner Item III of Form PCT/IPEA/408 is intended to considers any of the amendments to go beyond the cover situations where some or all claims of an appli- original disclosure, the examiner must point this out cation are so unclear or inadequately supported by the in Box I, item 4 and explain the reasons for this deter- description that the question of novelty, inventive step mination in the Supplemental Box. New matter which (nonobviousness), and industrial applicability cannot appears on a replacement sheet will be disregarded for be considered, or where the international application the purpose of establishing the opinion. However, the or claims thereof relate to subject matter which does remainder of the replacement sheet, including any not require international preliminary examination, or amendments which do not constitute new matter, will where no international search report has been estab- be taken into consideration for the purpose of estab- lished for the claims. lishing the opinion. If some or all of the claims of an application relate to subject matter which does not require international II. ITEM II. PRIORITY preliminary examination, check the appropriate box, indicate which claims relate to that subject matter and Item II of Form PCT/IPEA/408 is to inform appli- specify the reasons. cant of non-establishment of a request for priority. If some or all of the claims of an application are so If applicant fails to furnish a copy or translation of unclear that no meaningful opinion could be formed, the earlier application, whose priority has been check the appropriate box, indicate which claims are claimed, within the time limit set by the examiner pur- unclear and specify the reasons. suant to PCT Rule 66.7, check box No. 1 and then If some or all of the claims are so inadequately sup- check the first box of the subsection if applicant failed ported by the description that no meaningful opinion to furnish a copy of the earlier application whose pri- could be formed, check the appropriate box. ority has been claimed, and check the second box in the subsection if applicant failed to furnish a transla- If no international search report has been estab- tion of the earlier application whose priority has been lished for certain claims, check the appropriate box claimed. and indicate the claim numbers. When the claim for priority has been found invalid IV. ITEM IV. LACK OF UNITY OF (e.g., the claimed priority date is more than one year INVENTION prior to the international filing date and the notifica- tion under PCT Rule 4.10(d) has been provided or all Item IV of Form PCT/IPEA/408 should be used by claims are directed to inventions which were not the examiner to notify applicant that lack of unity of described and enabled by the earlier application), invention has been found. check box No. 2 of Item II and indicate why the claim for priority has been found invalid following No. 3 If in reply to an invitation to restrict, applicant “Additional observations”. The examiner is reminded restricted the claims to a particular group, check the that when some claims in an international application first box under subsection 1. are directed to an invention which was disclosed in If applicant paid additional fees for examination of the earlier application, the priority claim is valid pro- additional invention, check the second box under sub- vided that a copy and/or translation of the earlier section 1.</p><p>1800-161 Rev. 7, July 2008 1878.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>If the additional fees were paid under protest, check ¶ 18.04 Meets Novelty and Inventive Step the third box under subsection 1. Claim [1] the criteria set out in PCT Article 33(2)-(3), because If applicant neither restricted nor paid additional the prior art does not teach or fairly suggest [2]. fees in reply to the objection of lack of unity of inven- Examiner Note: tion, check the fourth box under subsection 1. 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), Subsection 2 of Item IV is to be completed if the and insert the verb --meet-- or --meets--, as appropriate. examiner determines that unity of invention is lacking 2. In bracket 2, insert the details of the claimed subject matter but chooses not to invite the applicant to restrict or that render it unobvious over the prior art. 3. If the claims also meet the industrial applicability criteria set pay additional fees. out in PCT Article 33(4), this form paragraph should be followed Subsection 3 of Item IV is to be completed to indi- by form paragraph 18.04.01. cate which claims were the subject of international 4. If the claims do not meet the industrial applicability criteria preliminary examination. set out in PCT Article 33(4), this form paragraph should be fol- If all claims are to be examined, check the first box lowed by form paragraph 18.03. under subsection 3. ¶ 18.04.01 Meets Industrial Applicability If only some of the claims were the subject of inter- Claim [1] the criteria set out in PCT Article 33(4), and thus [2] national preliminary examination, check the second industrial applicability because the subject matter claimed can be box under subsection 3 and identify the claim num- made or used in industry. bers. Examiner Note: 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), V. ITEM V. REASONED STATEMENT WITH and the verb --meet-- or -- meets--, as appropriate. REGARD TO NOVELTY, INVENTIVE 2. In bracket 2, insert --have-- or --has--, as appropriate. STEP, AND INDUSTRIAL APPLICABILI- 3. If the claims meet all of the requirements of PCT Article TY OF CLAIMS 33(2)-(4), use form paragraph 18.04 before this form paragraph to provide positive statements for novelty and inventive step under In Item V, the examiner must list in summary form PCT Article 33(2)-(3). all claims with regard to the criteria of novelty (N), 4. If the claims have industrial applicability but lack novelty inventive step (IS), and industrial applicability (IA). and inventive step, use this form paragraph and additionally use form paragraph 18.01. Item V is the main purpose of the Written Opinion. 5. If the claims have industrial applicability and novelty but All claims without fatal defects are treated on the lack inventive step, use this form paragraph and additionally use merits in Item V as to novelty, inventive step (nonob- one or more of form paragraphs 18.02, 18.02.01 and 18.02.02, as viousness) and industrial applicability. appropriate. The treatment of claims in Item V is similar in for- 6. If the claims do not have industrial applicability, use form mat to an Office action in a U.S. national patent appli- paragraph 18.03 instead of this form paragraph. cation except that the words “rejection” and “patentability” are never used in a written opinion. On If, on the other hand it is the opinion of the exam- the international level, all written opinions are non- iner that some or all claims lack novelty, inventive binding and a patent does not issue; what does issue is step, or industrial applicability, specific reasons must an international preliminary examination report be given similar to those used in U.S. national appli- (IPER), which is nonbinding on the Elected States. cations. ** Form paragraphs 18.01, 18.02, 18.02.01, 18.02.02, Examiner statements in Item V can be positive or and 18.03 may be used, as appropriate, to explain the negative. If the claims define over the prior art and negative statements listed in Item V. meet the test of novelty, inventive step (nonobvious- ness) and industrial applicability, a statement equiva- ¶ 18.01 Lacks Novelty lent to detailed reasons for allowance in a Claim [1] novelty under PCT Article 33(2) as being antici- corresponding U.S. national application should be pated by [2]. provided, indicating how the claims meet the tests of Examiner Note: novelty, inventive step and industrial applicability. 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), Form paragraphs 18.04 and 18.04.01 may be used for and the verb --lack-- or --lacks--, as appropriate. this purpose. 2. In bracket 2, insert name of prior art relied upon.</p><p>Rev. 7, July 2008 1800-162 PATENT COOPERATION TREATY 1878.01</p><p>¶ 18.02 Lacks Inventive Step - One Reference tion report. The subsequently discovered prior art is to Claim [1] an inventive step under PCT Article 33(3) as being be cited in compliance with PCT Rule 43.5 and obvious over [2]. [3] Administrative Instructions Section 503 using the Examiner Note: same citation format used on the international search 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), report. Two copies of each newly cited reference and the verb --lack-- or --lacks--, as appropriate. should be included in the PCT Chapter II file when it 2. In bracket 2, insert name of prior art relied upon. is sent to PCT Operations for the mailing of the form 3. In bracket 3, add reasoning. PCT/IPEA/408. One of the copies of the newly cited ¶ 18.02.01 Lacks Inventive Step - Two References reference will be sent to the applicant and one copy Claim [1] an inventive step under PCT Article 33(3) as being will be retained in the Chapter II file. obvious over [2] in view of [3]. [4] VI. ITEM VI. CERTAIN DOCUMENTS CITED Examiner Note: 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), Item VI provides a convenient manner of listing and the verb --lack-- or --lacks--, as appropriate. two different types of documents: 2. In bracket 2, insert name of PRIMARY prior art relied upon. 3. In bracket 3, insert name of SECONDARY prior art relied (A) Published documents - by the application upon. number or patent number as well as the publication 4. In bracket 4, add reasoning. date, filing date and priority date; and ¶ 18.02.02 Lacks Inventive Step - Additional Reference (B) Nonwritten disclosure - by the kind of disclo- Claim [1] an inventive step under PCT Article 33(3) as being sure, date of the disclosure and the date of the written obvious over the prior art as applied in the immediately preceding disclosure referring to the nonwritten disclosure. paragraph and further in view of [2]. [3] Examiner Note: VII. ITEM VII. CERTAIN DEFECTS IN THE 1. This form paragraph may follow either 18.02 or 18.02.01. INTERNATIONAL APPLICATION 2. In bracket 1, pluralize “claim” if needed, insert claim no.(s), In Item VII, defects in the form and content of the and the verb --lack-- or --lacks--, as appropriate. 3. In bracket 2, insert name of additional prior art relied upon. international application are identified. 4. In bracket 3, add reasoning. Examples of defects that would be listed in Item VII are: ¶ 18.03 Lacks Industrial Applicability Claim [1] industrial applicability as defined by PCT Article (A) Informalities such as misplaced and/or omit- 33(4). [2] ted drawing numerals, misspelled words, grammatical Examiner Note: errors, etc. 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), (B) Improper multiple-dependent claims (PCT and the verb --lack-- or --lacks--, as appropriate. Rule 6.4) if not indicated under Item III. 2. In bracket 2, add reasoning. The following form paragraphs are used in Box VII Examiners are encouraged to indicate any amend- of PCT/IPEA/408 or PCT/IPEA/409 “Certain defects ments which applicant could present which would in the international application” for noting technical avoid a negative statement in the international prelim- defects. inary examination report. **> All international applications where an examination has been demanded should be searched by the exam- ¶ 18.08 Drawing - Defect in Form or Contents Thereof iner at least to the point of bringing the previous The drawings contain the following defect(s) in the form or search up to date. Prior art discovered in a search and content thereof: [1] applied in an Item V statement must be made of Examiner Note: record in Item V. Prior art already cited on the interna- In bracket 1, insert identification of defects in drawings. tional search report need not again be cited on the written opinion or international preliminary examina- <</p><p>1800-163 Rev. 7, July 2008 1878.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>¶ 18.08.01 Drawing Is Required Since the claims of an international application are The subject matter of this application admits of illustration by not subject to a rejection on either art or indefiniteness drawing to facilitate understanding of the invention. Applicant is consistent with U.S. practice, observations by the required under PCT Article 7(1) to furnish a drawing. examiner with regard to clarity of the claims, the **> description and the drawings will be treated in the form of an objection in the written opinion in Item ¶ 18.09 Description - Defect in Form or Contents Thereof VIII. The description contains the following defect(s) in the form or The following form paragraphs are used in Box contents thereof: [1] VIII “Certain observations on the international appli- Examiner Note: cation” of PCT/IPEA/408 and PCT/IPEA/409 for not- In bracket 1, insert the technical problem, e.g., misspelled ing objections which are substantive rather than word. merely technical in nature. ¶ 18.10 Claims - Defect in Form or Contents Thereof **> Claim [1] contain(s) the following defect(s) in the form or con- ¶ 18.11 Drawing Objections - Lack Clarity tents thereof: [2] The drawings are objected to under PCT Article 7 as lacking clarity under PCT Article 7 because: [1] Examiner Note: 1. In bracket 1, pluralize “claim” if needed, and insert claim Examiner Note: no.(s). In bracket 1, insert reasons why the drawings lack clarity, e.g., 2. In bracket 2, identify the technical deficiency. inaccurate showing. < ¶ 18.12.01 Claims Objectionable - Inadequate Written Description VIII. ITEM VIII. CERTAIN OBSERVATIONS Claim [1] objected to under PCT Article 6 because the claim ON THE INTERNATIONAL APPLICA- [2] not fully supported by the description. The application, as TION originally filed, did not describe: [3] Examiner Note: In Item VIII, the examiner notifies the applicant of 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), observations made as to the clarity of the claims, the and the verb --is-- or --are--, as appropriate. description, the drawings, or on the question whether 2. In bracket 2, pluralize “claim” if needed, and insert the verb - the claims are fully supported by the description. -is-- or --are--. If the claims, the description, or the drawings are so 3. In bracket 3, identify subject matter not described in the unclear, or the claims are so inadequately supported application as filed. by the description, that no meaningful opinion can be ¶ 18.13.01 Claims Objectionable - Non-Enabling formed on the question of novelty, inventive step Disclosure (nonobviousness) or industrial applicability, the appli- Claim [1] objected to under PCT Article 6 because the claim cant is so informed in Item III (PCT Article [2] not fully supported by the description. The description does 34(4)(a)(ii)). Reasons for the examiner’s opinion that not disclose the claimed invention in a manner sufficiently clear the claims, description and drawings, etc., lack clarity and complete for the claimed invention to be carried out by a per- son skilled in the art as required by PCT Article 5 because: [3] must also be provided. If the above situation is found to exist in certain Examiner Note: claims only, the provisions of PCT Article 34(4)(ii) 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) shall apply to those claims only. and the appropriate verb --is-- or --are--. 2. In bracket 2, pluralize “claim” if needed, insert the verb --is-- If the lack of clarity of the claims, the description, or --are--. or the drawings is of such a nature that it is possible to 3. In bracket 3, identify the claimed subject matter that is not form a meaningful opinion on the claimed subject enabled and explain why it is not enabled. matter, then it is required that the examiner consider ¶ 18.14.01 Claims Objectionable - Lack of Best Mode the claims and render a written opinion on novelty, Claim [1] objected to under PCT Article 6 because the claim inventive step, and industrial applicability in Item V [2] not fully supported by the description. The description fails to of Form PCT/IPEA/408. set forth the best mode contemplated by the applicant for carrying </p><p>Rev. 7, July 2008 1800-164 PATENT COOPERATION TREATY 1878.01(a) out the claimed invention as required by PCT Rule 5.1(a)(v) X. AUTHORIZED OFFICER because: [3]. Every written opinion must be signed by an exam- Examiner Note: iner having at least partial signatory authority. 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--. The first document prepared by the examiner in 2. In bracket 2, pluralize “claim” if needed, and insert the most international applications during the interna- appropriate verb --is-- or --are--. tional preliminary examination proceedings will be 3. In bracket 3, insert the objection and reasons. the written opinion. Normally only in those interna- ¶ 18.15 Claims Objectionable - Indefiniteness tional applications where all the formal matters are Claim [1] objected to under PCT Article 6 as lacking clarity proper and the claims are directed to inventions which because claim [2] indefinite for the following reason(s): [3] have novelty, inventive step and industrial applicabil- ity will an international preliminary examination Examiner Note: report be established without a written opinion having 1. In brackets 1 and 2, pluralize “claim” if needed, insert claim been issued first. no.(s) and the appropriate verb --is-- or --are--. 2. In bracket 3, insert reasons. 1878.01(a) Prior Art for Purposes of the < Written Opinion and the Inter- IX. TIME TO REPLY national Preliminary Examina- tion Report [R-6] An invitation by the International Preliminary Examining Authority (IPEA) to applicant to reply to PCT Article 33. the examiner’s written opinion will normally set a 2- The International Preliminary Examination month time limit for reply. However, PCT Rule 69.2 sets forth time limits for ***** the IPEA to establish the international preliminary (6) The international preliminary examination shall take into examination report (IPER). Accordingly, a 1-month consideration all the documents cited in the international search time limit should be set by the examiner in situations report. It may take into consideration any additional documents when a 2-month time limit would risk delaying the considered to be relevant in the particular case. date of establishment of the IPER beyond: PCT Rule 64. (A) 28 months from the priority date; or Prior Art for International Preliminary Examination (B) 8 months from the date of payment of the handling fee referred to in PCT Rule 57.1 and the pre- 64.1.Prior Art liminary examination fee referred to in PCT Rule (a) For the purposes of Article 33(2) and (3), everything 58.1(a); or made available to the public anywhere in the world by means of (C) 8 months from the date of receipt by the IPEA written disclosure (including drawings and other illustrations) of the translation furnished under PCT Rule 55.2. shall be considered prior art provided that such making available occurred prior to the relevant date. As a general rule, a 1-month time limit for reply to **> the written opinion should be set by the examiner if (b) For the purposes of paragraph (a), the relevant date shall the written opinion (Form PCT/IPEA/408) has not be: been completed by the examiner within 24 months (i) subject to items (ii) and (iii), the international filing following the application’s “priority date” as defined date of the international application under international prelimi- in PCT Article 2. nary examination; The United States rules pertaining to international (ii) where the international application under international preliminary examination of international applications preliminary examination claims the priority of an earlier applica- tion and has an international filing date which is within the prior- do not provide for any extension of time to reply to a ity period, the filing date of such earlier application, unless the first written opinion. See 37 CFR 1.484(d) and MPEP International Preliminary Examining Authority considers that the § 1878.02. priority claim is not valid;</p><p>1800-165 Rev. 7, July 2008 1878.01(a) MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(iii)where the international application under international two months from that date, the filing date of such ear- preliminary examination claims the priority of an earlier applica- lier application, unless the Authority considers that tion and has an international filing date which is later than the date the priority claim is not valid for reasons other than on which the priority period expired but within the period of two months from that date, the filing date of such earlier application, the fact that the international application has an inter- unless the International Preliminary Examining Authority consid- national filing date which is later than the date on ers that the priority claim is not valid for reasons other than the which the priority period expired.< fact that the international application has an international filing date which is later than the date on which the priority period When a potentially relevant document has been expired.< published between a claimed priority date of the application and its international filing date, the exam- 64.2.Non-Written Disclosures In cases where the making available to the public occurred by iner is required to consider whether the claimed prior- means of an oral disclosure, use, exhibition or other non-written ity date is valid for the purposes of determining the means (“non-written disclosure”) before the relevant date as “relevant date” of the claims in the international defined in Rule 64.1(b) and the date of such non-written disclo- application. >For international applications filed on or sure is indicated in a written disclosure which has been made after April 1, 2007, a priority date should not be con- available to the public on a date which is the same as, or later than, sidered invalid merely because the international appli- the relevant date, the non-written disclosure shall not be consid- ered part of the prior art for the purposes of Article 33(2) and (3). cation was not filed prior to the date of expiration of Nevertheless, the international preliminary examination report the priority period, provided that the international shall call attention to such non-written disclosure in the manner application is filed within the period of two months provided for in Rule 70.9. from the date of expiration of the priority period.< Note that if there is time left for the applicant to per- 64.3.Certain Published Documents fect, correct or add a priority claim but there is insuffi- In cases where any application or any patent which would con- stitute prior art for the purposes of Article 33(2) and (3) had it cient time for the examiner to make a proper been published prior to the relevant date referred to in Rule 64.1 determination as to whether the priority claim is valid, was published on a date which is the same as, or later than, the rel- due to the need to issue a timely written opinion by evant date but was filed earlier than the relevant date or claimed the International Searching Authority, the “relevant the priority of an earlier application which had been filed prior to date” for the purposes of the written opinion will be the relevant date, such published application or patent shall not be considered part of the prior art for the purposes of Article 33(2) based on the claimed priority date. See Chapter 11 of and (3). Nevertheless, the international preliminary examination the International Search and Preliminary Examination report shall call attention to such application or patent in the man- Guidelines, which may be obtained from WIPO’s ner provided for in Rule 70.10. website (www.wipo.int/pct/en/texts/gdlines.htm). In The above provisions apply mutatis mutandis to the cases where any application or any patent which written opinion of the International Searching Author- would constitute prior art for the purpose of interna- ity. See PCT Rule 43bis.1(b). tional preliminary examination as to novelty and inventive step (nonobviousness) was published on The relevant date for the purpose of considering or after the relevant date of the international applica- prior art is defined in PCT Rule 64.1(b) as**>: tion under consideration but was filed earlier than the (A) the international filing date (subject to (B) relevant date or claimed the priority of an earlier and (C)); application which was filed prior to the relevant date, (B) where the international application claims the the published application or patent is not to be consid- priority of an earlier application and has an interna- ered part of the prior art for the purpose of interna- tional filing date which is within the priority period, tional preliminary examination as to novelty and the filing date of such earlier application, unless the inventive step. Nevertheless, these documents are to Authority considers that the priority claim is not be listed on **>Form PCT/ISA/237, PCT/IPEA/408, valid; or PCT/IPEA/409, as appropriate< under the heading (C) where the international application claims the “CERTAIN PUBLISHED DOCUMENTS”. priority of an earlier application and has an interna- In determining whether there is inventive step, tional filing date which is later than the date on which account should be taken of what the applicant the priority period expired but within the period of acknowledges in his/her description as known. Such </p><p>Rev. 7, July 2008 1800-166 PATENT COOPERATION TREATY 1878.01(a)(3) acknowledged prior art should be regarded as correct PCT Rule 65. and used during preliminary examination where Inventive Step or Non-Obviousness appropriate. For oral or nonwritten disclosure, see PCT Rules 65.1.Approach to Prior Art 64.2 and 70.9. For the purposes of Article 33(3), the international preliminary examination shall take into consideration the relation of any par- 1878.01(a)(1)Novelty **>for Purposes of ticular claim to the prior art as a whole. It shall take into consider- the Written Opinion and the ation the claim’s relation not only to individual documents or parts thereof taken separately but also its relation to combinations of International Preliminary Ex- such documents or parts of documents, where such combinations amination Report< [R-2] are obvious to a person skilled in the art.</p><p>Novelty is defined in PCT Article 33(2). 65.2.Relevant Date For the purposes of Article 33(3), the relevant date for the con- PCT Article 33. sideration of inventive step (non-obviousness) is the date pre- The International Preliminary Examination scribed in Rule 64.1.</p><p>***** >The above provisions apply mutatis mutandis to the written opinion of the International Searching (2) For the purposes of the international preliminary exami- Authority. See PCT Rule 43bis.1(b).< nation, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations. 1878.01(a)(3)Industrial Applicability ***** **>for Purposes of the Written >The above provisions apply mutatis mutandis to Opinion and the International the written opinion of the International Searching Preliminary Examination Re- Authority. See PCT Rule 43bis.1(b).< port< [R-2]</p><p>1878.01(a)(2)Inventive Step **>for Pur- Industrial applicability is defined in PCT Article poses of the Written Opinion 33(4). and the International Prelimi- nary Examination Report< PCT Article 33. [R-2] The International Preliminary Examination</p><p>Inventive step is defined in PCT Article 33(3). *****</p><p>PCT Article 33. (4) For the purposes of the international preliminary exami- nation, a claimed invention shall be considered industrially appli- The International Preliminary Examination cable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be ***** understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property. (3) For purposes of the international preliminary examina- tion, a claimed invention shall be considered to involve an inven- ***** tive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a >The above provisions apply mutatis mutandis to person skilled in the art. the written opinion of the International Searching ***** Authority. See PCT Rule 43bis.1(b).<</p><p>1800-167 Rev. 7, July 2008 1878.02 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>1878.02 Reply to the Written Opinion of ***** the ISA or IPEA [R-6] 66.8.Form of Amendments</p><p>PCT Article 34. (a) Subject to paragraph (b), the applicant shall be required Procedure Before the International Preliminary Examining to submit a replacement sheet for every sheet of the international Authority application which, on account of an amendment, differs from the sheet previously filed. The letter accompanying the replacement ***** sheets shall draw attention to the differences between the replaced sheets and the replacement sheets and shall preferably also (2)(d) The applicant may respond to the written opinion. explain the reasons for the amendment. ***** (b) Where the amendment consists in the deletion of pas- sages or in minor alterations or additions, the replacement sheet PCT Rule 66. referred to in paragraph (a) may be a copy of the relevant sheet of Procedure before the International Preliminary Examining - the international application containing the alterations or addi- tions, provided that the clarity and direct reproducibility of that Authority 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. 66.3.Formal Response to the International Preliminary Examining Authority 66.9.Language of Amendments (a) The applicant may respond to the invitation referred to in (a) Subject to paragraphs (b) and (c), if the international Rule 66.2(c) of the International Preliminary Examining Author- application has been filed in a language other than the language in ity by making amendments or - if he disagrees with the opinion of which it is published, any amendment, as well as any letter that Authority - by submitting arguments, as the case may be, or referred to in Rule 66.8, shall be submitted in the language of pub- do both. lication. (b) Any response shall be submitted directly to the Interna- (b) If the international preliminary examination is carried tional Preliminary Examining Authority. out, pursuant to rule 55.2, on the basis of a translation of the inter- ***** national application, any amendment, as well as any letter referred to in paragraph (a), shall be submitted in the language of that > translation. (c) Subject to Rule 55.3, if an amendment or letter is not 66.4.bis Consideration of Amendments, Arguments and submitted in a language as required under paragraph (a) or (b), the Rectifications of Obvious Mistakes International Preliminary Examining Authority shall, if practica- Amendments, arguments and rectifications of obvious mis- ble, having regard to the time limit for establishing the interna- takes need not be taken into account by the International Prelimi- tional preliminary examination report, invite the applicant to nary Examining Authority for the purposes of a written opinion or furnish the amendment or letter in the required language within a the international preliminary examination report if they are time limit which shall be reasonable under the circumstances. received by, authorized by or notified to that Authority, as applica- (d) If the applicant fails to comply, within the time limit ble, after it has begun to draw up that opinion or report. < under paragraph (c), with the invitation to furnish an amendment in the required language, the amendment shall not be taken into 66.5.Amendment account for the purposes of the international preliminary examina- Any change, other than the rectification of **>an obvious mis- tion. If the applicant fails to comply, within the time limit under take<, in the claims, the description, or the drawings, including paragraph (c), with the invitation to furnish a letter referred to in cancellation of claims, omission of passages in the description, or paragraph (a) in the required language, the amendment concerned omission of certain drawings, shall be considered an amendment. need not be taken into account for the purposes of the interna- tional preliminary examination. 66.6.Informal Communications with the Applicant The International Preliminary Examining Authority may, at 37 CFR 1.485. Amendments by applicant during any time, communicate informally, over the telephone, in writing, international preliminary examination. or through personal interviews, with the applicant. The said (a) The applicant may make amendments at the time of fil- Authority shall, at its discretion, decide whether it wishes to grant ing the Demand. The applicant may also make amendments more than one personal interview if so requested by the applicant, within the time limit set by the International Preliminary Examin- or whether it wishes to reply to any informal written communica- ing Authority for reply to any notification under § 1.484(b) or to tion from the applicant. any written opinion. Any such amendments must:</p><p>Rev. 7, July 2008 1800-168 PATENT COOPERATION TREATY 1878.02</p><p>(1) Be made by submitting a replacement sheet in com- include a description of how the replacement sheet pliance with PCT Rules 10 and 11.1 to 11.13 for every sheet of the differs from the replaced sheet in accordance with application which differs from the sheet it replaces unless an PCT Rule 66.8. entire sheet is cancelled; and (2) Include a description of how the replacement sheet In the particular case where the amendment cancels differs from the replaced sheet. Amendments that do not comply claims, passages in the description or certain drawings with PCT Rules 10 and 11.1 to 11.13 may not be entered resulting in the cancellation of an entire sheet, the (b) If an amendment cancels an entire sheet of the interna- amendment must be submitted in the form of a letter tional application, that amendment shall be communicated in a cancelling the sheet (PCT Rule 66.8(a)). letter. Replacement sheets must be in typed form. All amendments in reply to a written opinion must Any paper submitted by the applicant, if not in the be received within the time limit set for reply in order form of a letter, must be accompanied by a letter to be assured of consideration in the international pre- signed by the applicant or agent (PCT Rule 92.1). The liminary examination report. Amendments filed at or letter must draw attention to the differences between before expiration of the period for reply will be con- the replaced sheet and the replacement sheet. sidered. Since the examiner will begin to draw up the The examiner should make sure that amendments *>international preliminary examination< report filed in accordance with the PCT, which are necessary rather promptly after the time period expires, amend- to correct any deficiencies notified to the applicant, do ments filed after expiration of the reply period may not go beyond the disclosure of the international not be considered. However, as indicated in MPEP § application as filed, thus violating PCT Article 1871, there may be situations where it is advisable, to 34(2)(b). In other words, no amendment should con- the extent possible, to take such amendments or argu- tain matter that cannot be substantiated by the appli- ments into account, for example, where the interna- cation as originally filed. In a situation where new tional preliminary examination report has not yet been matter is introduced by amendment in reply to a writ- completed and it is readily apparent to the examiner ten opinion, the international preliminary examination that consideration of the late-filed response would report will be established as if the amendment had not result in the issuance of a favorable report. In view of been made, and the report should so indicate. It shall the short time period for completion of preliminary also indicate the reasons why the amendment goes examination, applicants are strongly encouraged to beyond the disclosure (PCT Rule 70.2(c)). Although file any amendments promptly. 37 CFR 1.484(d) does new matter which appears on a replacement sheet will not allow for extensions of time to reply to a written be disregarded for the purpose of establishing the opinion. The policy of not allowing extensions of time report, the remainder of the replacement sheet, includ- is to ensure that the USPTO can meet its treaty dead- ing any amendments which do not constitute new line for transmission of the *>international prelimi- matter, will be taken into consideration for the pur- nary examination< report. pose of establishing the report. Any change, other than the rectification of obvious INTERVIEWS *>mistakes< in the claims, the description, or the drawings, including the cancellation of claims, omis- The examiner or applicant may, after the filing of a sion of passages in the description or omission of cer- demand and during the time limit for reply to the writ- tain drawings will be considered an amendment (PCT ten opinion, request a telephone or personal interview. Rule 66.5). The Patent and Trademark Office when Only one interview is a matter of right, whether by acting as the International Preliminary Examining telephone or in person. Additional interviews may be Authority will not accept any non-English applica- authorized by the examiner in a particular interna- tions or amendments. tional application where such additional interview Any amendments to the claims, the description, and may be helpful to advance the international prelimi- the drawings in reply to a written opinion must (1) be nary examination procedure. made by submitting a replacement sheet for every All interviews of substance must be made of record sheet of the application which differs from the sheet it by using PCT/IPEA/428 Notice on Informal Commu- replaces unless an entire sheet is cancelled and (2) nication with the Applicant.</p><p>1800-169 Rev. 7, July 2008 1879 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>When an interview is arranged, whether by tele- international preliminary examination in Article 33(1) to (4). The phone or in writing, and whether by the examiner or statement shall be accompanied by the citation of the documents by the applicant, the matters for discussion should be believed to support the stated conclusion with such explanations as the circumstances of the case may require. The statement shall stated. also be accompanied by such other observation as the Regulations The records of interviews or telephone conversa- provide for. tions should indicate, where appropriate, whether a (3)(a)If, at the time of establishing the international prelimi- reply is due from the applicant or agent or whether the nary examination report, the International Preliminary Examining examiner wishes to issue an additional written opin- Authority considers that any of the situations referred to in Article ion or establish the international preliminary examina- 34(4)(a) exists, that report shall state this opinion and the reasons therefor. It shall not contain any statement as provided in para- tion report. graph (2). If the applicant desires to reply to the written opin- (b) If a situation under Article 34(4)(b) is found to exist, ion, such reply must be filed within the time limit set the international preliminary examination report shall, in relation for reply in order to assure consideration. No exten- to the claims in question, contain the statement as provided in sub- sions to the time limit will be considered or granted. If paragraph (a), whereas, in relation to the other claims, it shall con- tain the statement as provided in paragraph (2). no timely reply is received from the applicant, the international preliminary examination report will be PCT Administrative Instruction Section 604. established by the examiner, treating each claim sub- Guidelines for Explanations Contained in the International stantially as it was treated in the written opinion. Preliminary Examination Report Replies to the written opinion which are not filed (a) Explanations under Rule 70.8 shall clearly point out to within the time limit set but which reach the examiner which of the three criteria of novelty, inventive step (non-obvious- before the examiner takes up the application for prep- ness) and industrial applicability referred to in Article 35(2), taken aration of the final report may be considered. Thus, separately, any cited document is applicable and shall clearly only timely replies can be assured of consideration. describe, with reference to the cited documents, the reasons sup- The applicant may reply to the invitation referred to porting the conclusion that any of the said criteria is or is not satis- in Rule 66.2(c) by making amendments or, if the fied. (b) Explanations under Article 35(2) shall be concise and applicant disagrees with the opinion of the authority, preferably in the form of short sentences. by submitting arguments, as the case may be, or both (PCT Rule 66.3). The international preliminary examination report is If applicant does not reply to the written opinion, established on Form PCT/IPEA/409. the international preliminary examination report will The international preliminary examination report be prepared in time for forwarding to the International must be established within: Division in finished form by 27 months from the pri- For applications having an international filing date ority date. on or after January 1, 2004: 1879 Preparation of the International (A) 28 months from the priority date; or Preliminary Examination Report (B) 6 months from the time provided under PCT Rule 69.1 for the start of international preliminary [R-7] examination; or PCT Article 35. (C) 6 months from the date of receipt by the IPEA The International Preliminary Examination Report of the translation furnished under PCT Rule 55.2 whichever expires last, as provided in PCT Rule 69.2. (1) The international preliminary examination report shall be established within the prescribed time limit and in the prescribed For applications having an international filing date form. before January 1, 2004: (2) The international preliminary examination report shall not contain any statement on the question whether the claimed (A) 28 months from the priority date; or invention is or seems to be patentable or unpatentable according (B) 8 months from the date of payment of the fees to any national law. It shall state, subject to the provisions of para- referred to in PCT Rules 57.1 and 58.1(a); or graph (3), in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), (C) 8 months from the date of receipt by the Inter- and industrial applicability, as defined for the purposes of the national Preliminary Examining Authority of the </p><p>Rev. 7, July 2008 1800-170 PATENT COOPERATION TREATY 1879 translation furnished under PCT Rule 55.2, whichever replacement sheets are to be marked as provided in expires last, as provided in PCT Rule 69.2. Administrative Instructions Section 602. The interna- tional preliminary examination report may not express To meet the 28-month date for establishing the a view on the patentability of the invention. PCT Arti- report, Office practice is to complete internal process- cle 35(2) expressly states that “the international pre- ing by 27 months from the priority date in order to liminary examination report shall not contain any provide adequate time for reviewing, final processing statement on the question whether the claimed inven- and mailing. Thus, under normal circumstances, the tion is or seems to be patentable or unpatentable applicant receives the report, at the latest, 2 months according to any national law.” before national processing at the elected Offices may start. This ensures that he/she has time to consider I. CLASSIFICATION OF SUBJECT MAT- whether, and in which elected Offices, he/she wants to TER enter the national stage and to take the necessary action. The classification of the subject matter shall be The international preliminary examination report either (1) that given by the International Searching contains, among other things, a statement (in the form Authority under PCT Rule 43.3, if the examiner of simple “yes” or “no”), in relation to each claim agrees with such classification, or (2) shall be that which has been examined, on whether the claim which the examiner considers to be correct, if the appears to satisfy the criteria of novelty, inventive examiner does not agree with that classification. Both step (non-obviousness) and industrial applicability. the International Patent Classification (IPC) and the The statement is, where appropriate, accompanied by U.S. classification should be given. This classification the citation of relevant documents together with con- is placed on the cover sheet of the report. cise explanations pointing out the criteria to which the II. BOX NO. I. BASIS OF REPORT cited documents are applicable and giving reasons for the International Preliminary Examining Author- When completing Box No. I, item 1, of Form PCT/ ity’s conclusions. Where applicable, the report also IPEA/409, the examiner must indicate whether or not includes remarks relating to the question of unity of the report has been established on the basis of the invention. international application in the language in which it The international preliminary examination report was filed. If a translation was furnished for the pur- identifies the basis on which it is established, that is, pose of the search, the publication or the examination, whether, and if so, which amendments have been this must be indicated. The international preliminary taken into account. Replacement sheets containing examination report will be established on the basis of amendments under PCT Article 19 and/or Article 34 any amendments, rectifications, priority and/or unity which have been taken into account are attached as of invention holdings and shall answer the questions “annexes” to the international preliminary examina- concerning novelty, inventive step, and industrial tion report. Amendments under PCT Article 19 which applicability for each of the claims under examina- have been considered as reversed by an amendment tion. under PCT Article 34 are not annexed to the report; In completing Form PCT/IPEA/409, the examiner neither are the letters which accompany replacement should first indicate any amendments and/or rectifica- sheets. tions of obvious mistakes taken into account in estab- Superseded amendments are not normally included. lishing the international preliminary examination However, if a first replacement sheet is acceptable and report. The amendments and/or rectifications should a second replacement sheet for the same numbered be indicated by references to the dates on which the sheet contains subject matter that goes beyond the amendments and/or rectifications were filed. original disclosure of the application as filed, the sec- For the purpose of completing Box No. I, item 2, ond replacement sheet supersedes the first replace- sheets of the description and drawings filed during ment sheet, but both the first and second replacement Chapter I proceedings and stamped “SUBSTITUTE sheets shall be attached to the international prelimi- SHEET (RULE 26)”, “RECTIFIED SHEET (RULE nary examination report. In this case, the superseded 91)”, and “INCORPORATED BY REFERENCE </p><p>1800-171 Rev. 7, July 2008 1879 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(RULE 20.6)” are considered to be originally filed seded by later replacement sheets) or letters cancel- pages/sheets and should be listed as originally filed ling sheets under PCT Rule 66.8(a) are included as an pages/sheets. Only those amendments or rectifications annex to the report. to the description and drawings filed on the date of With respect to Box No. I, item 3, the examiner Demand or after the filing of a Demand should be must indicate whether any amendments have resulted listed as later filed pages/sheets. in the cancellation of pages of the description, claims, Sheets of claims filed during the Chapter I proceed- drawings, sequence listings or any tables related to ings and stamped “SUBSTITUTE SHEET (RULE sequence listings. 26)”, “RECTIFIED SHEET (RULE 91)”, and With respect to Box No. I, item 4, the examiner “INCORPORATED BY REFERENCE (RULE 20.6)” must indicate whether any amendments to the are also considered to be originally filed claims and description, claims, drawings, sequence listings or should be listed as originally filed claims. However, any tables related to sequence listing that are annexed amended sheets of claims filed under Article 19 in to the report, have been treated as if they had not been response to the international search report are to be made because they go beyond the disclosure as filed. indicated as claims as amended under Article 19. With respect to Box No. I, item 5, the examiner Applicant’s submission of a timely amendment to the must indicate whether the report is established taking claims alleged to be under Article 19 is accepted into account the rectification of an obvious mistake under Article 34 (not Article 19) unless the Interna- under PCT Rule 91. tional Bureau has indicated the amendments were The final report package when sent to the Interna- accepted under Article 19. Only those amendments, or tional Application Processing Division for mailing rectifications to the claims filed on the date of must include copies of all amendments and rectifica- Demand or after the filing of a Demand should be tions entered and any cover letters to those amend- listed as later filed claims. ments. Further, if the report has been based on a nucleotide III. BOX NO. II. PRIORITY and/or amino acid sequence disclosed and necessary to the claimed invention, the examiner must indicate Box No. II of Form PCT/IPEA/409 is to inform the type of material (i.e., a sequence listing and/or applicant of the establishment of the report as if the tables related thereto), the format of the material (i.e., priority claim made in the international application on paper or in electronic form) and the time of filing/ had not been made. This may occur where: furnishing (i.e., contained in the international applica- tion as filed, filed together with the international (A) the IPEA requested, but was not furnished, a application in electronic form, or furnished subse- copy of the earlier application whose priority is quently to the IPEA). If more than one version or claimed (PCT Rule 66.7(a)), or copy of the sequence listing and/or tables relating (B) applicant failed to timely comply with an thereto is filed, the examiner must indicate whether invitation to furnish a translation of the earlier app the applicant has provided the required statement lication (PCT Rule 66.7(b)), or indicating that the information in the subsequent or (C) the priority claim is found invalid or all additional copies are identical to that in the applica- claims are directed to inventions which were not tion as filed or does not go beyond the application as described and enabled by the earlier application (PCT filed. Rule 64.1), or Amendments and/or rectifications filed but not (D) the priority claim has been withdrawn. taken into account in the establishment of the report IV. BOX NO. III. NON-ESTABLISHMENT OF (e.g., an amendment not taken into account because OPINION WITH REGARD TO NOVELTY, the amendment went beyond the disclosure of the INVENTIVE STEP OR INDUSTRIAL AP- international application as filed or a rectification that PLICABILITY is not considered to be merely a correction of an obvi- ous mistake) are then indicated separately. The Indications that a report has not been established on replacement sheets (but not replacement sheets super- the questions of novelty, inventive step or industrial </p><p>Rev. 7, July 2008 1800-172 PATENT COOPERATION TREATY 1879 applicability, either as to some claims or as to all were not, the subject of international preliminary claims, are given in Box No. III on the Report. The examination. examiner must specify that the report has not been In the case where additional fees were paid under established because: protest, the text of the protest, together with the deci- (A) the application relates to subject matter which sion thereon, must be annexed to the report by Inter- does not require international preliminary examina- national Application Processing Division IPEA tion; personnel if the applicant has so requested. (B) the description, claims or drawings are so Where an indication has been given under item (E) unclear that no meaningful opinion could be formed; above, the examiner must also specify the reasons for (C) the claims are so inadequately supported by which the international application was not consid- the description that no meaningful opinion could be ered as complying with the requirement of unity of formed. invention.</p><p>Where the report has not been established in rela- VI. BOX NO. V. REASONED STATEMENT tion to certain claims only, the claims affected must be UNDER ARTICLE 35(2) WITH REGARD specified. TO NOVELTY, INVENTIVE STEP, AND If the nucleotide and/or amino acid sequence list- INDUSTRIAL APPLICABILITY; AND CI- ing, and/or tables related thereto, do not comply with TATIONS AND EXPLANATIONS SUP- the standard in Annex C of the Administrative PORTING SUCH STATEMENT Instructions, the examiner must indicate the reason for non-compliance. The examiner must indicate whether each claim appears to satisfy the criteria of novelty, inventive V. BOX NO. IV. LACK OF UNITY OF step (nonobviousness), and industrial applicability. INVENTION The determination or statement should be made on each of the three criteria taken separately. The deter- If the applicant has paid additional fees or has mination as to any criteria should be negative if the restricted the claims in response to an invitation to do criteria as to the particular claim is not satisfied. The so or if the applicant has failed to respond to the invi- examiner should always cite documents believed to tation to pay additional fees or restrict the claims, the support any negative determination as to novelty and international preliminary examination report shall so inventive step. Any negative holding as to lack of indicate. The examiner should indicate whether: industrial applicability must be fully explained. See (A) the claims have been restricted; the *>further< discussion in MPEP § 1845.01 relating to Box No. V of Form PCT/ISA/237. The citation of (B) additional fees have been paid without pro- documents should be in accordance with Administra- test; tive Instructions Sections 503 and 611. The procedure (C) additional fees have been paid by the appli- is the same as the procedure for search report cita- cant under protest; tions. Explanations should clearly indicate, with refer- (D) the applicant has neither restricted the claims ence to the cited documents, the reasons supporting nor paid additional fees; the conclusions that any of the said criteria is or is not (E) the examiner was of the opinion that the inter- satisfied, unless the statement is positive and the rea- national application did not comply with the require- son for citing any document is easy to understand ment of unity of invention but decided not to issue an when consulting the document. If only certain pas- invitation to restrict the claims or pay additional fees. sages of the cited documents are relevant, the exam- iner should identify them, for example, by indicating In addition, if the examiner is examining less than the page, column, or the lines where such passages all the claims, the examiner must indicate which parts appear. Preferably, a reasoned statement should be of the international application were, and which parts provided in all instances.</p><p>1800-173 Rev. 7, July 2008 1879 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>VII. BOX NO. VI. CERTAIN DOCUMENTS examination report, the examiner may include CITED this opinion in the report, and if included, must also indicate the reasons therefor. See the further discus- If the examiner has discovered, or the international sion in MPEP § 1845.01 relating to Box No. VII of search report has cited, a relevant document which Form PCT/ISA/237. refers to a nonwritten disclosure, and the document was only published on or after the relevant date of the IX. BOX NO. VIII. CERTAIN OBSERVATIONS international application, the examiner must indicate on the international preliminary examination report: ON THE INTERNATIONAL APPLICA- TION (A) the date on which the document was made available to the public; If, in the opinion of the examiner, the clarity of claims, the description, and the drawings, or the ques- (B) the date on which the non-written public dis- tion as to whether the claims are fully supported by closure occurred. the description have not been suitably solved at the >The examiner should also identify any published prescribed time limit for establishing the international application or patent< which would constitute prior preliminary examination report, the examiner may art for purposes of PCT Article 33(2) and (3) had it include this opinion in the report, and if included, been published prior to the relevant date (PCT Rule must also indicate the reasons therefor. See the further 64.1) but was filed prior to, or claims the priority of discussion in MPEP § 1845.01 relating to Box No. an earlier application which had been filed prior to, VIII of Form PCT/ISA/237. the relevant date (PCT Rule 64.3). For each such pub- lished application or patent the following indications X. FINALIZATION OF THE INTERNATION- should be provided: AL PRELIMINARY EXAMINATION RE- PORT (A) its date of publication; (B) its filing date, and its claimed priority date (if The date on which the report was completed and any). the name and mailing address of the International Pre- liminary Examining Authority are indicated on the The Report may also indicate that, in the opinion of cover sheet (Form PCT/IPEA/416) of the interna- the International Preliminary Examining Authority, tional preliminary examination report. This informa- the priority date of the document cited has not been tion is generated automatically by the OACS software validly claimed (PCT Rule 70.10). when preparing the report. In addition, the date on Guidelines explaining to the examiner the manner which the demand for international preliminary exam- of indicating certain special categories of documents ination was submitted and the name of the authorized as well as the manner of indicating the claims to officer responsible for the report must be indicated. which the documents cited in such report are relevant Pursuant to Administrative Instructions Section 612, are set forth in Administrative Instructions Sections an “authorized officer” is the person who actually per- 507(c), (d), and (e) and 508. formed the examination work and prepared the inter- national preliminary examination report or another VIII. BOX NO. VII. CERTAIN DEFECTS IN person who was responsible for supervising the exam- THE INTERNATIONAL APPLICATION ination. Thus, an examiner need not have signatory If, in the opinion of the examiner, defects existing authority in order to be named as an authorized officer in the form or contents of the international application on the examination report. However, the “file copy” have not been suitably solved at the prescribed time of the international preliminary examination report limit for establishing the international preliminary must be signed by a primary examiner.</p><p>Rev. 7, July 2008 1800-174 PATENT COOPERATION TREATY 1879</p><p>Form PCT/IPEA/409. International Preliminary Examination Report</p><p>1800-175 Rev. 7, July 2008 1879 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Form PCT/IPEA/409 (Box I)</p><p>Rev. 7, July 2008 1800-176 PATENT COOPERATION TREATY 1879</p><p>Form PCT/IPEA/409 (Box II)</p><p>1800-177 Rev. 7, July 2008 1879 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Form PCT/IPEA/409 (Box III)</p><p>Rev. 7, July 2008 1800-178 PATENT COOPERATION TREATY 1879</p><p>Form PCT/IPEA/409 (Box IV)</p><p>1800-179 Rev. 7, July 2008 1879 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>Form PCT/IPEA/409 (Box V)</p><p>Rev. 7, July 2008 1800-180 PATENT COOPERATION TREATY 1879</p><p>Form PCT/IPEA/409 (Supplemental Box)</p><p>1800-181 Rev. 7, July 2008 1879.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>1879.01 Time Limit for Preparing Re- zation need not, in its capacity as International Searching Author- ity, establish a written opinion under Rule 43bis.1 port in International Applica- (c) Where the statement concerning amendments contains tions Having an International an indication that amendments under Article 19 are to be taken into account (Rule 53.9(a)(i)), the International Preliminary Filing Date On or After January Examining Authority shall not start the international preliminary 1, 2004 [R-5] examination before it has received a copy of the amendments con- cerned. [Note: The regulations under the PCT were (d) Where the statement concerning amendments contains changed effective January 1, 2004 and correspond- an indication that the start of the international preliminary exami- ing changes were made to Title 37 of the Code of nation is to be postponed (Rule 53.9(b)), the International Prelim- inary Examining Authority shall not start the international Federal Regulations. See January 2004 Revision of preliminary examination before whichever of the following Patent Cooperation Treaty Application Procedure, occurs first: 68 FR 59881 (Oct. 20, 2003), 1276 O.G. 6 (Nov. 11, (i) it has received a copy of any amendments made under 2003). The discussion of the procedures in effect Article 19; for applications filed prior to January 1, 2004 has (ii) it has received a notice from the applicant that he does been moved from this section to ** MPEP § not wish to make amendments under Article 19; or 1879.01(a).] (iii)the expiration of the applicable time limit under Rule 46.1. (e) Where the statement concerning amendments contains PCT Rule 69. an indication that amendments under Article 34 are submitted Start of and Time Limit for International Preliminary with the demand (Rule 53.9(c)) but no such amendments are, in Examination fact, submitted, the International Preliminary Examining Author- ity shall not start the international preliminary examination before 69.1.Start of International Preliminary Examination it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1(g) has expired, whichever (a) Subject to paragraphs (b) to (e), the International Prelim- occurs first. inary Examining Authority shall start the international prelimi- nary examination when it is in possession of all of the following: 69.2.Time Limit for International Preliminary Examination (i) the demand; The time limit for establishing the international preliminary (ii) the amount due (in full) for the handling fee and the examination report shall be whichever of the following periods preliminary examination fee, including where applicable, the late expires last: payment fee under Rule 58bis.2; and (i) 28 months from the priority date; or (iii)either the international search report or the declaration (ii) six months from the time provided under Rule 69.1 for by the International Searching Authority under Article 17(2)(a) the start of the international preliminary examination; or that no international search report will be established, and the (iii)six months from the date of receipt by the International written opinion established under Rule 43bis.1; Preliminary Examining Authority of the translation furnished provided that the International Preliminary Examining under Rule 55.2. Authority shall not start the international preliminary examination before the expiration of the applicable time limit under Rule PCT Rule 69.2 was amended as reproduced above 54bis.1(a) unless the applicant expressly requests an earlier start. for applications having an international filing date on (b) If the national Office or intergovernmental organization or after January 1, 2004. The time limit for preparing that acts as International Searching Authority also acts as Interna- the international preliminary examination report is 28 tional Preliminary Examining Authority, the international prelimi- months from the priority date, or 6 months from the nary examination may, if that national Office or intergovernmental organization so wishes and subject to para- time provided under PCT Rule 69.1 for the start of the graphs (d) and (e), start at the same time as the international international preliminary examination, or 6 months search. from the date of receipt by the International Prelimi- (b-bis) Where, in accordance with paragraph (b), the national nary Examining Authority of the translation furnished Office or intergovernmental organization that acts as both Interna- under PCT Rule 55.2, whichever expires first. This tional Searching Authority and International Preliminary Examin- time limit is 27 months internally to ensure sufficient ing Authority wishes to start the international preliminary examination at the same time as the international search and con- time to process, review and mail the report in suffi- siders that all of the conditions referred to in Article 34(2)(c)(i) to cient time to reach the International Bureau by 28 (iii) are fulfilled, that national Office or intergovernmental organi- months from the earliest priority date.</p><p>Rev. 7, July 2008 1800-182 PATENT COOPERATION TREATY 1879.02</p><p>1879.01(a) Time Limit for Preparing Re- 69.2.Time Limit for International Preliminary Examination The time limit for establishing the international preliminary port >in International Applica- examination report shall be: tion Having an International (i) 28 months from the priority date, or Filing Date Before January 1, (ii) eight months from the date of payment of the fees 2004< [R-2] referred to in Rules 57.1 and 58.1(a), or (iii) eight months from the date of receipt by the Interna- >[Note: For international applications filed on or tional Preliminary Examining Authority of the translation fur- after January 1, 2004, see MPEP § 1879.01.] nished under Rule 55.2, whichever expires last. **>For international applications having an inter- Former< national filing date before January 1, 2004, the period PCT Rule 69. for preparing the IPER is set forth in former PCT Rule Start of and Time Limit for International Preliminary 69.2 (as amended July 1, 1998)<. The time limit for Examination preparing the international preliminary examination >(as amended July 1, 1998)< report is 28 months from the priority date, or 8 months from the date of payment of the fees referred to in 69.1.Start of International Preliminary Examination PCT Rules 57.1 and 58.1(a), or 8 months from the (a) Subject to paragraphs (b) to (e), the International Prelim- date of receipt by the International Preliminary Exam- inary Examining Authority shall start the international prelimi- ining Authority of the translation furnished under nary examination when it is in possession both of the demand and PCT Rule 55.2, whichever expires first. This time of either the international search report or a notice of the declara- limit is 27 months internally to ensure sufficient time tion by the International Searching Authority under Article to process, review and mail the report in sufficient 17(2)(a) that no international search report will be established. (b) If the competent International Preliminary Examining time to reach the International Bureau by 28 months Authority is part of the same national Office or intergovernmental from the earliest priority date. organization as the competent International Searching Authority, the international preliminary examination may, if the International 1879.02 Transmittal of the International Preliminary Examining Authority so wishes and subject to para- Preliminary Examination Re- graph (d), start at the same time as the international search. (c) Where the statement concerning amendments contains port an indication that amendments under Article 19 are to be taken PCT Article 36. into account (Rule 53.9(a)(i)), the International Preliminary Transmittal, Translation, and Communication of the Inter- Examining Authority shall not start the international preliminary examination before it has received a copy of the amendments con- national Preliminary Examination Report cerned (1) The international preliminary examination report, (d) Where the statement concerning amendments contains together with the prescribed annexes, shall be transmitted to the an indication that the start of the international preliminary exami- applicant and to the International Bureau. nation is to be postponed (Rule 53.9(b)), the International Prelim- inary Examining Authority shall not start the international ***** preliminary examination before PCT Rule 71. (i) it has received a copy of any amendments made under Article 19, Transmittal of the International Preliminary Examination (ii) it has received a notice from the applicant that he does Report not wish to make amendments under Article 19, or 71.1.Recipients (iii)the expiration of 20 months from the priority date, The International Preliminary Examining Authority shall, on whichever occurs first. the same day, transmit one copy of the international preliminary (e) Where the statement concerning amendments contains examination report and its annexes, if any, to the International an indication that amendments under Article 34 are submitted Bureau, and one copy to the applicant. with the demand (Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Author- 71.2.Copies of Cited Documents ity shall not start the international preliminary examination before it has received the amendments or before the time limit fixed in (a) The request under Article 36(4) may be presented any the invitation referred to in Rule 60.1(g) has expired, whichever time during seven years from the international filing date of the occurs first. international application to which the report relates.</p><p>1800-183 Rev. 7, July 2008 1879.03 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(b) The International Preliminary Examining Authority may PCT Rule 72. require that the party (applicant or elected Office) presenting the **>Translation of the International Preliminary Examina- request pay to it the cost of preparing and mailing the copies. The tion Report and of the Written Opinion of the International level of the cost of preparing copies shall be provided for in the Searching Authority< agreements referred to in Article 32(2) between the International Preliminary Examining Authorities and the International Bureau. 72.1.Languages (c) [Deleted] (d) Any International Preliminary Examining Authority may (a) Any elected State may require that the international pre- perform the obligations referred to in paragraphs (a) and (b) liminary examination report, established in any language other through another agency responsible to it. than the official language, or one of the official languages, of its national Office, be translated into English. The international preliminary examination report is (b) Any such requirement shall be notified to the Interna- transmitted to the International Bureau using a trans- tional Bureau, which shall promptly publish it in the Gazette. mittal Form PCT/IPEA/416. Every effort is made to ensure that the transmittal is effected in sufficient time 72.2.Copy of Translation for the Applicant The International Bureau shall transmit a copy of the transla- to reach the International Bureau before the expiration tion referred to in Rule 72.1(a) of the international preliminary of the time limit set in PCT Rule 69.2. examination report to the applicant at the same time as it commu- nicates such translation to the interested elected Office or Offices. AUTHORIZED OFFICER **></p><p>Form PCT/IPEA/416 must be signed by a primary 72.2bis. Translation of the Written Opinion of the Interna- examiner. tional Searching Authority Established Under Rule 43bis.1 In the case referred to in Rule 73.2(b)(ii), the written opinion 1879.03 Translations [R-2] established by the International Searching Authority under Rule 43bis.1 shall, upon request of the elected Office concerned, be ** translated into English by or under the responsibility of the Inter- national Bureau. The International Bureau shall transmit a copy of PCT Article 36. the translation to the elected Office concerned within two months Transmittal, Translation, and Communication of the Inter- from the date of receipt of the request for translation, and shall at national Preliminary Examination Report the same time transmit a copy to the applicant.</p><p>***** 72.3.Observations on the Translation The applicant may make written observations as to the correct- (2)(a)The international preliminary examination report and ness of the translation of the international preliminary examina- its annexes shall be translated into the prescribed languages. tion report or of the written opinion established by the (b) Any translation of the said report shall be prepared by International Searching Authority under Rule 43bis.1 and shall or under the responsibility of the International Bureau, whereas send a copy of the observations to each of the interested elected any translation of the said annexes shall be prepared by the appli- Offices and to the International Bureau.< cant. The >written opinion established by the Interna- ***** tional Searching Authority and the< international pre- > liminary examination report and any annexes are established in Chinese, English, French, German, Jap- PCT Rule 70. anese, Russian or Spanish, if the international applica- International Preliminary Report on Patentability by the tion was filed in one of those languages or translated International Preliminary Examining Authority (Interna- into one of those languages. See PCT Rules 48.3(b), tional Preliminary Examination Report) 55.2 and 70.17. Each elected State may require that ***** >the written opinion and/or< the report, if it is not in (one of) the official language(s) of its national Office, 70.17 Languages of the Report and the Annexes be translated into English. See PCT Rule 72.1(a). In The report and any annex shall be in the language in which the that case, the translation of the body of the >written international application to which they relate is published, or, if the international preliminary examination is carried out, pursuant opinion and/or< report is prepared by >the< Interna- to Rule 55.2, on the basis of a translation of the international tional Bureau, which transmits copies to the applicant application, in the language of that translation.< and to each interested elected Office. If any elected </p><p>Rev. 7, July 2008 1800-184 PATENT COOPERATION TREATY 1879.04</p><p>Office requires a translation of annexes to the report, copy of the application was used for the patent application publi- the preparation and furnishing of that translation is the cation, a patent, or a statutory invention registration are open to responsibility of the applicant. See PCT Article inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2). See § 2.27 for trade- 36(2)(b). mark files. The U.S. requires the final report and the annexes thereto to be in English. Translation of the annexes for ***** national stage purposes is required pursuant to 37 CFR 1.14. Patent applications preserved in confidence. 35 U.S.C. 371(c)(5) and 37 CFR 1.495(e). Failure to timely provide such translation results in cancellation ***** of the annexes. (g) International applications. (1) Copies of international application files for international applications which designate the 1879.04 Confidential Nature of the Re- U.S. and which have been published in accordance with PCT Arti- port [R-6] cle 21(2), or copies of a document in such application files, will be furnished in accordance with PCT Articles 30 and 38 and PCT PCT Article 38. Rules 94.2 and 94.3, upon written request including a showing Confidential Nature of the International Preliminary that the publication of the application has occurred and that the Examination U.S. was designated, and upon payment of the appropriate fee (see § 1.19(b)), if: (1) Neither the International Bureau nor the International (i) With respect to the Home Copy (the copy of the Preliminary Examining Authority shall, unless requested or autho- international application kept by the Office in its capacity as the rized by the applicant, allow access within the meaning, and with Receiving Office, see PCT Article 12(1)), the international appli- the proviso, of Article 30(4) to the file of the international prelim- cation was filed with the U.S. Receiving Office; inary examination by any person or authority at any time, except by the elected Offices once the international preliminary examina- (ii) With respect to the Search Copy (the copy of an tion report has been established. international application kept by the Office in its capacity as the (2) Subject to the provisions of paragraph (1) and Articles International Searching Authority, see PCT Article 12(1)), the 36(1) and (3) and 37(3)(b), neither the International Bureau nor U.S. acted as the International Searching Authority, except for the the International Preliminary Examining Authority shall, unless written opinion of the International Searching Authority which requested or authorized by the applicant, give information on the shall not be available until the expiration of thirty months from the issuance or non-issuance of an international preliminary examina- priority date; or tion report and on the withdrawal or non-withdrawal of the (iii) With respect to the Examination Copy (the copy of demand or of any election. an international application kept by the Office in its capacity as the International Preliminary Examining Authority), the United PCT Rule 44ter. States acted as the International Preliminary Examining Authority, Confidential Nature of Written Opinion, Report, Transla- an International Preliminary Examination Report has issued, and tion and Observations the United States was elected. (2) A copy of an English language translation of a publi- (a) The International Bureau and the International Searching cation of an international application which has been filed in the Authority shall not, unless requested or authorized by the appli- United States Patent and Trademark Office pursuant to 35 U.S.C. cant, allow access by any person or authority before the expiration 154(d)(4) will be furnished upon written request including a of 30 months from the priority date: showing that the publication of the application in accordance with (i) to the written opinion established under Rule 43bis.1, PCT Article 21(2) has occurred and that the U.S. was designated, to any translation thereof prepared under Rule 44bis.3(d) or to any and upon payment of the appropriate fee (§ 1.19(b)(4)). written observations on such translation sent by the applicant under Rule 44bis.4; (3) Access to international application files for interna- (ii) if a report is issued under Rule 44bis.1, to that report, tional applications which designate the U.S. and which have been to any translation of it prepared under Rule 44bis.3(b) or to any published in accordance with PCT Article 21(2), or copies of a written observations on that translation sent by the applicant under document in such application files, will be permitted in accor- Rule 44bis.4. dance with PCT Articles 30 and 38 and PCT Rules 44ter.1, 94.2 and 94.3, upon written request including a showing that the publi- (b) For the purposes of paragraph (a), the term “access” cov- cation of the application has occurred and that the U.S. was desig- ers any means by which third parties may acquire cognizance, nated. including individual communication and general publication. (4) In accordance with PCT Article 30, copies of an inter- 37 CFR 1.11. Files open to the public. national application-as-filed under paragraph (a) of this section (a) The specification, drawings, and all papers relating to the will not be provided prior to the international publication of the file of an abandoned published application, except if a redacted application pursuant to PCT Article 21(2).</p><p>1800-185 Rev. 7, July 2008 1880 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(5) Access to international application files under para- PCT Rule 90bis. graphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will Withdrawals not be permitted with respect to the Examination Copy in accor- dance with PCT Article 38. ***** *></p><p>***** 90bis.4.Withdrawal of the Demand, or of Elections</p><p>(i) < Access or copies in other circumstances. The Office, (a) The applicant may withdraw the demand or any or all either sua sponte or on petition, may also provide access or copies elections at any time prior to the expiration of 30 months from the of all or part of an application if necessary to carry out an Act of priority date. Congress or if warranted by other special circumstances. Any (b) Withdrawal shall be effective upon receipt of a notice petition by a member of the public seeking access to, or copies of, addressed by the applicant to the International Bureau. all or part of any pending or abandoned application preserved in (c) If the notice of withdrawal is submitted by the applicant confidence pursuant to paragraph (a) of this section, or any related to the International Preliminary Examining Authority, that papers, must include: Authority shall mark the date of receipt on the notice and transmit (1) The fee set forth in § 1.17(g); and it promptly to the International Bureau. The notice shall be con- (2) A showing that access to the application is necessary sidered to have been submitted to the International Bureau on the to carry out an Act of Congress or that special circumstances exist date marked. which warrant petitioner being granted access to all or part of the ***** application. PCT Administrative Instruction Section 606. For a discussion of the availability of copies of doc- Cancellation of Elections uments from international application files and/or access to international application files, see MPEP **> § 110. (a) The International Preliminary Examining Authority shall cancel ex officio: 1880 Withdrawal of Demand or Election (i) the election of any State which is not a designated [R-2] State; (ii) the election of any State not bound by Chapter II of PCT Article 37. the Treaty. Withdrawal of Demand or Election (b) The International Preliminary Examining Authority shall enclose that election within square brackets, shall draw a line (1) The applicant may withdraw any or all elections. between the square brackets while still leaving the election legible and shall enter, in the margin, the words “CANCELLED EX (2) If the election of all elected States is withdrawn, the OFFICIO BY IPEA” or their equivalent in the language of the demand shall be considered withdrawn. demand, and shall notify the applicant accordingly. (3)(a) Any withdrawal shall be notified to the International Bureau. Any withdrawal of the demand or any election (b) The elected Office concerned and the International must be sent to the International Bureau or to the Preliminary Examining Authority concerned shall be notified International Preliminary Examining Authority<. accordingly by the International Bureau. Withdrawal, if timely, is effective upon receipt by the (4)(a) Subject to the provisions of subparagraph (b), with- International Bureau >or the International Preliminary drawal of the demand or of the election of a Contracting State shall, unless the national law of that State provides otherwise, be Examining Authority. Pursuant to PCT Rule 90bis.5, considered to be withdrawal of the international application as far the withdrawal must be signed by all of the applicants, as that State is concerned. except as provided in PCT Rule 90bis.5(b) in the case (b) Withdrawal of the demand or of the election shall not where an applicant/inventor for the United States be considered to be withdrawal of the international application if could not be found or reached after diligent effort and such withdrawal is effected prior to the expiration of the applica- the withdrawal is signed by at least one applicant. ble time limit under Article 22; however, any Contracting State Pursuant to PCT Rules 90.4(e) and 90.5(d), the may provide in its national law that the aforesaid shall apply only if its national Office has received, within the said time limit, a requirement for a separate power of attorney or a copy copy of the international application, together with a translation of the general power of attorney shall not be waived (as prescribed), and the national fee. in cases of withdrawal.<</p><p>Rev. 7, July 2008 1800-186 PATENT COOPERATION TREATY 1893</p><p>1881 Receipt of Notice of Election >and 1893 National Stage (U.S. National Ap- Preliminary Examination Report< plication Filed Under 35 U.S.C. by the> United States< Patent and 371) [R-5] Trademark Office [R-2] 37 CFR 1.9. Definitions. (a)(1)A national application as used in this chapter means a PCT Rule 61. U.S. application for patent which was either filed in the Office Notification of the Demand and Elections under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371. ***** (2) A provisional application as used in this chapter means a 61.2.Notification to the Elected Offices U.S. national application for patent filed in the Office under 35 U.S.C. 111(b). (a) The notification provided for in Article 31(7) shall be (3) A nonprovisional application as used in this chapter effected by the International Bureau. means a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111(a), or which entered the national **> stage from an international application after compliance with (b) The notification shall indicate the number and filing date 35 U.S.C. 371. of the international application, the name of the applicant, the fil- ***** ing date of the application whose priority is claimed (where prior- ity is claimed) and the date of receipt by the International Thus, there are three types of U.S. national applica- Preliminary Examining Authority of the demand.< tions: a national stage application under the PCT (an (c) The notification shall be sent to the elected Office application which entered the national stage in the together with the communication provided for in Article 20. Elec- U.S. from an international application after compli- tions effected after such communication shall be notified promptly after they have been made. ance with 35 U.S.C. 371), a regular domestic national **> application filed under 35 U.S.C. 111(a), and a provi- sional application filed under 35 U.S.C. 111(b). (d) Where the applicant makes an express request to an elected Office under Article 40(2) prior to the international publi- An applicant who uses the Patent Cooperation cation of the international application, the International Bureau Treaty gains the benefit of: shall, upon request of the applicant or the elected Office, promptly effect the communication provided for in Article 20 to that (A) a delay in the time when papers must be sub- Office.< mitted to the national offices; (B) an international search (to judge the level of 61.3.Information for the Applicant the relevant prior art) and, for international applica- The International Bureau shall inform the applicant in writing tions filed on or after January 1, 2004, a written opin- of the notification referred to in Rule 61.2 and of the elected ion on the question of whether the claimed invention Offices notified under Article 31(7). appears to be novel, to involve an inventive step (to be ***** non-obvious), and to be industrially applicable before having to expend resources for filing fees, translations All notices of election are received by the >Office and other costs; of< PCT **>Operations< from the International (C) a delay in the expenditure of fees; Bureau. The >Office of< PCT **>Operations< pre- (D) additional time for research; pares the appropriate records of the election and (E) additional time to evaluate financial, market- places the paper in storage with the communicated ing, commercial and other considerations; and copy of the international application until the national (F) the option of obtaining international prelimi- stage is entered. >The international preliminary exam- nary examination. ination report received by the USPTO will also be included in the national stage file. The international The time delay is, however, the benefit most often preliminary examination report is communicated to recognized as primary. Ultimately, applicant might the elected Offices by the International Bureau.< choose to submit the national stage application. The national stage is unique compared to a domestic ** national application in that</p><p>1800-187 Rev. 7, July 2008 1893.01 MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(A) it is submitted later (i.e., normally 30 months (c) The applicant shall file in the Patent and Trademark ** from a claimed priority date as compared to 12 Office — months for a domestic application claiming priority). (1) the national fee provided in section 41(a) of this title; (2) a copy of the international application, unless not (B) the status of the prior art is generally known required under subsection (a) of this section or already communi- before the national stage begins and this is not neces- cated by the International Bureau, and a translation into the sarily so in a domestic national application. English language of the international application, if it was filed in another language; (C) if the filing of an international application is (3) amendments, if any, to the claims in the international to be taken into account in determining the patentabil- application, made under article 19 of the treaty, unless such ity or validity of any application for patent or granted amendments have been communicated to the Patent and Trade- patent, then special provisions apply. See MPEP mark Office by the International Bureau, and a translation into the § 1895.01, subsection (E) and MPEP § 1896. English language if such amendments were made in another lan- guage; IDENTIFICATION OF THE NATIONAL STAGE (4) an oath or declaration of the inventor (or other person authorized under chapter 11 of this title) complying with the APPLICATION requirements of section 115 of this title and with regulations pre- scribed for oaths or declarations of applicants; Once an international application entering the U.S. (5) a translation into the English language of any annexes national phase (“national stage application”) has been to the international preliminary examination report, if such accorded a U.S. application number (the two digit annexes were made in another language. series code followed by a six digit serial number), that (d) The requirement with respect to the national fee referred number should be used whenever papers or other to in subsection (c)(1), the translation referred to in subsection communications are directed to the USPTO regarding (c)(2), and the oath or declaration referred to in subsection (c)(4) the national stage application. See 37 CFR 1.5(a). The of this section shall be complied with by the date of the com- mencement of the national stage or by such later time as may be national stage application is tracked through the fixed by the Director. The copy of the international application Patent Application Locating and Monitoring (PALM) referred to in subsection (c)(2) shall be submitted by the date of system by the eight digit U.S. application number. the commencement of the national stage. Failure to comply with Therefore, processing is expedited if the U.S. applica- these requirements shall be regarded as abandonment of the appli- tion number is indicated. The international application cation by the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable. The number, international filing date, and the national payment of a surcharge may be required as a condition of accept- stage entry date under 35 U.S.C. 371 (if such has been ing the national fee referred to in subsection (c)(1) or the oath or accorded) should also be included, as such would also declaration referred to in subsection (c)(4) of this section if these be helpful for identification purposes and can be used requirements are not met by the date of the commencement of the to cross-check a possibly erroneous U.S. application national stage. The requirements of subsection (c)(3) of this sec- number. tion shall be complied with by the date of the commencement of the national stage, and failure to do so shall be regarded as a can- cellation of the amendments to the claims in the international 1893.01 Commencement and Entry [R-3] application made under article 19 of the treaty. The requirement of subsection (c)(5) shall be complied with at such time as may be ** fixed by the Director and failure to do so shall be regarded as can- cellation of the amendments made under article 34 (2)(b) of the treaty. 35 U.S.C. 371. National stage: Commencement. (e) After an international application has entered the (a) Receipt from the International Bureau of copies of inter- national stage, no patent may be granted or refused thereon before national applications with any amendments to the claims, interna- the expiration of the applicable time limit under article 28 or arti- tional search reports, and international preliminary examination cle 41 of the treaty, except with the express consent of the appli- reports including any annexes thereto may be required in the case cant. The applicant may present amendments to the specification, of international applications designating or electing the United claims, and drawings of the application after the national stage has States. commenced. (b) Subject to subsection (f) of this section, the national (f) At the express request of the applicant, the national stage stage shall commence with the expiration of the applicable time of processing may be commenced at any time at which the appli- limit under article 22 (1) or (2), or under article 39 (1)(a) of the cation is in order for such purpose and the applicable requirements treaty. of subsection (c) of this section have been complied with.</p><p>Rev. 7, July 2008 1800-188 PATENT COOPERATION TREATY 1893.01(a)</p><p>37 CFR 1.491. National stage commencement and entry. tional processing will be identified by the full title “United States (a) Subject to 35 U.S.C. 371(f), the national stage shall com- Designated Office” or by the abbreviation “DO/US” or by the full mence with the expiration of the applicable time limit under PCT title “United States Elected Office” or by the abbreviation “EO/ Article 22(1) or (2), or under PCT Article 39(1)(a). US.” (b) An international application enters the national stage (c) The major functions of the United States Designated when the applicant has filed the documents and fees required by Office or Elected Office in respect to international applications in 35 U.S.C. 371(c) within the period set in ** § 1.495. which the United States of America has been designated or elected, include: Subject to 35 U.S.C. 371(f), commencement of the (1) Receiving various notifications throughout the inter- national stage occurs upon expiration of the applica- national stage and ble time limit**>under PCT Article 22(1) or (2), or (2) Accepting for national stage examination interna- under PCT Article 39(1)(a). See< 35 U.S.C. 371(b) tional applications which satisfy the requirements of 35 U.S.C. and 37 CFR 1.491(a). >PCT Articles 22(1), 22(2), and 371. 39(1)(a) provide for a time limit of not later than the An international application designating the U.S. expiration of 30 months from the priority date. Thus, will enter the national stage via the U.S. Designated in the absence of an express request for early process- Office unless a Demand electing the U.S. is filed ing of an international application under 35 U.S.C. under PCT Article 31 whereupon entry will be via the 371(f) and compliance with the conditions provided U.S. Elected Office. The procedure for entry is as pre- therein, the U.S. national stage will commence upon scribed in 37 CFR 1.495. expiration of 30 months from the priority date of the international application. Pursuant to 35 U.S.C. 37 CFR 1.495. Entering the national stage in the United 371(f), the national stage may commence earlier than States of America. 30 months from the priority date, provided applicant (a) The applicant in an international application must fulfill the requirements of 35 U.S.C. 371 within the time periods set makes an express request for early processing and has forth in paragraphs (b) and (c) of this section in order to prevent complied with the applicable requirements under the abandonment of the international application as to the United 35 U.S.C. 371(c).< States of America. The thirty-month time period set forth in para- Entry into the national stage occurs upon comple- graphs (b), (c), (d), (e) and (h) of this section may not be extended. tion of certain acts, as stated in 37 CFR 1.491(b). International applications for which those requirements are timely fulfilled will enter the national stage and obtain an examination as to the patentability of the invention in the United States of Amer- 1893.01(a) Entry via the U.S. Designated ica. or Elected Office [R-3] (b) To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not PCT Article 2. later than the expiration of thirty months from the priority date: Definitions (1) A copy of the international application, unless it has been previously communicated by the International Bureau or ***** unless it was originally filed in the United States Patent and Trademark Office; and (xiii)“designated Office” means the national Office of or act- (2) The basic national fee (see § 1.492(a)). ing for the State designated by the applicant under Chapter I of **> this Treaty; (c)(1) If applicant complies with paragraph (b) of this section (xiv)“elected Office” means the national Office of or acting before expiration of thirty months from the priority date, the for the State elected by the applicant under Chapter II of this Office will notify the applicant if he or she has omitted any of: Treaty; (i) A translation of the international application, as filed, ***** into the English language, if it was originally filed in another lan- guage and if any English language translation of the publication of 37 CFR 1.414. The United States Patent and Trademark the international application previously submitted under 35 U.S.C. Office as a Designated Office or Elected Office. 154(d) (§ 1.417) is not also a translation of the international appli- (a) The United States Patent and Trademark Office will act cation as filed (35 U.S.C. 371(c)(2)); as a Designated Office or Elected Office for international applica- (ii) The oath or declaration of the inventor (35 U.S.C. tions in which the United States of America has been designated 371(c)(4) and § 1.497), if a declaration of inventorship in compli- or elected as a State in which patent protection is desired. ance with § 1.497 has not been previously submitted in the inter- (b) The United States Patent and Trademark Office, when national application under PCT Rule 4.17(iv) within the time acting as a Designated Office or Elected Office during interna- limits provided for in PCT Rule 26ter.1;</p><p>1800-189 Rev. 7, July 2008 1893.01(a)(1) MANUAL OF PATENT EXAMINING PROCEDURE</p><p>(iii) The search fee set forth in § 1.492(b); 1893.01(a)(1)Submissions Required by 30 (iv) The examination fee set forth in § 1.492(c); and Months from the Priority Date (v) Any application size fee required by § 1.492(j); (2) A notice under paragraph (c)(1) of this section will set [R-5] a time period within which applicant must provide any omitted translation, oath or declaration of the inventor, search fee set forth To begin entry into the national stage, applicant is in § 1.492(b), examination fee set forth in § 1.492(c), and any required to comply with 37 CFR 1.495(b) within 30 application size fee required by § 1.492(j) in order to avoid aban- months from the priority date. Thus, applicant must donment of the application. pay the basic national fee on or before 30 months (3) The payment of the processing fee set forth in § 1.492(i) is required for acceptance of an English translation later from the priority date and be sure that a copy of the than the expiration of thirty months after the priority date. The international application has been received by the payment of the surcharge set forth in § 1.492(h) is required for U.S. Designated or Elected Office prior to expiration acceptance of any of the search fee, the examination fee, or the of 30 months from the priority date. Where the inter- oath or declaration of the inventor after the date of the commence- national application was filed with the United States ment of the national stage (§ 1.491(a)). Receiving Office as the competent receiving Office, (4) A “Sequence Listing” need not be translated if the the copy of the international application referred to in “Sequence Listing” complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b).< 37 CFR 1.495(b) is not required. ** (d) A copy of any amendments to the claims made under Facsimile transmission is not acceptable for sub- PCT Article 19, and a translation of those amendments into mission of the basic national fee and/or the copy of English, if they were made in another language, must be furnished not later than the expiration of thirty months from the priority the international application. See 37 CFR 1.6(d). date. Amendments under PCT Article 19 which are not received Likewise, the certificate of mailing procedures of by the expiration of thirty months from the priority date will be 37 CFR 1.8 do not apply to the filing of the copy of considered to be canceled. the international application and payment of the basic (e) A translation into English of any annexes to an interna- national fee. See 37 CFR 1.8(a)(2)(i)(F). >Applicants tional preliminary examination report (if applicable), if the may file these items using the Express Mail mailing annexes were made in another language, must be furnished not procedures set forth in 37 CFR 1.10. In addition, later than the expiration of thirty months from the priority date. Translations of the annexes which are not received by the expira- applicants may now file national stage submissions tion of thirty months from the priority date may be submitted online using the EFS-Web system. Further informa- within any period set pursuant to paragraph (c) of this section tion regarding EFS-Web is available at http:// accompanied by the processing fee set forth in § 1.492(f). www.uspto.gov/ebc/efs_help.html.< Annexes for which translations are not timely received will be considered canceled. Applicants cannot pay the basic national fee with a (f) Verification of the translation of the international appli- surcharge after the 30 month deadline. Failure to pay cation or any other document pertaining to an international appli- the basic national fee within 30 months from the pri- cation may be required where it is considered necessary, if the ority date will result in abandonment of the applica- international application or other document was filed in a lan- tion. The time for payment of the basic fee is not guage other than English. extendable. (g) The documents and fees submitted under paragraphs (b) and (c) of this section must be clearly identified as a submission to Similarly, the copy of the international application enter the national stage under 35 U.S.C. 371. Otherwise, the sub- required under 37 CFR 1.495(b) must be provided mission will be considered as being made under 35 U.S.C. 111(a). within 30 months from the priority date to avoid aban- (h) An international application becomes abandoned as to donment. A copy of the international application is the United States thirty months from the priority date if the requirements of paragraph (b) of this section have not been com- provided to the U.S. Designated or Elected Office by plied with within thirty months from the priority date. If the the International Bureau (the copy is ordinarily **> requirements of paragraph (b) of this section are complied with communicated to the Office on the day of publication within thirty months from the priority date but either of any of the international application< at about 18 months required translation of the international application as filed or the from the priority date). The International Bureau also oath or declaration are not timely filed, an international applica- tion will become abandoned as to the United States upon expira- mails a confirmation (Form PCT/IB/308) to applicant tion of the time period set pursuant to paragraph (c) of this upon which applicant can rely that the copy has been section. provided. This confirmation constitutes conclusive </p><p>Rev. 7, July 2008 1800-190 PATENT COOPERATION TREATY 1893.01(a)(2) evidence of transmission of the international applica- page of amendment for the corresponding English tion. See PCT Rule 47.1(c). ** language page of claims of the international applica- tion. If the Article 19 amendments were made in a If the basic national fee has been paid and the copy language other than English, applicant must provide of the international application (if required) has been an English translation for the U.S. national stage received by expiration of 30 months from the priority application. The Article 19 amendment(s) and the date, but the required oath or declaration, translation, English translation of the amendment(s) must be search fee (37 CFR 1.492(b)), examination fee (37 received by the Office by **>the date of commence- CFR 1.492(c)), or application size fee (37 CFR ment of the national stage (see MPEP § 1893.01)<. 1.492(j)) has not been filed prior to commencement of Otherwise, the amendment(s) will be considered to be the national stage (see MPEP § 1893.01), the Office canceled, 35 U.S.C. 371(d). If such canceled amend- will send applicant a notice identifying any deficiency ments are desired, they must be offered under 37 CFR and provide a period of time to correct the deficiency 1.121 as a preliminary amendment or a responsive as set forth in 37 CFR 1.495(c). The time period usu- amendment under 37 CFR 1.111. ally set is 2 months from the date of the notification by the Office or 32 months from the priority date, Applicants entering the national stage in the U.S. whichever is later. This period may be extended for up are encouraged to submit an amendment in accor- to 5 additional months pursuant to the provisions of dance with 37 CFR 1.121 rather than an English trans- 37 CFR 1.136(a). Failure to timely file the proper lation of an Article 19 amendment. Sometimes when reply to the notification will result in abandonment of an Article 19 amendment is translated into English, it the national stage application. The processing fee set cannot be entered. That is, each page of an Article 19 forth in 37 CFR 1.492(i) will be required for accep- amendment must be entered by substituting a page of tance of an English translation of the international amendment for the corresponding page of claims of application later than the expiration of thirty months the international application. After translation of a after the priority date, and the surcharge fee set forth page, the translated page may no longer correspond to in 37 CFR 1.492(h) will be required for acceptance of a page of the claims of the international application any of the search fee, examination fee, or oath or dec- such that the amendment is capable of entry by substi- laration of the inventor after the date of commence- tuting the page of English translation (of the amend- ment. 37 CFR 1.495(c)(3). ment) for the corresponding page of claims of the For further information regarding the oath or decla- international application without leaving an inconsis- ration required under 35 U.S.C. 371(c)(4) and 37 CFR tency. Where applicant chooses to submit an English 1.497 for entry into the U.S. national phase, see translation of the Article 19 amendment, applicant MPEP § 1893.01(e). should check to be sure that the English translation For further information regarding the translation can be entered by substituting the pages of translation required under 35 U.S.C. 371(c)(2) and 37 CFR for corresponding pages of the claims of the interna- 1.495(c), see MPEP § 1893.01(d). tional application without leaving an inconsistency. If entry of the page of translation causes inconsistencies 1893.01(a)(2)Article 19 Amendment (Filed in the claims of the international application the trans- With the International Bu- lation will not be entered. For example, if the transla- reau) [R-3] tion of the originally filed application has a page which begins with claim 1 and ends with a first part of The claims of an international application may be claim 2 with the remainder of claim 2 on the next amended under PCT Article 19 after issuance of the page then translation of the Article 19 amendment to search report. The description and drawings may not only claim 1 must include a substitute page or pages be amended under PCT Article 19. The amendment is beginning with the changes to claim 1 and ending forwarded to the U.S. Designated Office by the Inter- with the last of the exact same first part of claim 2. national Bureau for inclusion in the U.S. national This enables the original translated first page of stage application. Article 19 amendments which were claims to be replaced by the translation of the amend- made in English will be entered by substituting each ment without changing the subsequent unamended </p><p>1800-191 Rev. 7, July 2008 1893.01(a)(3) MANUAL OF PATENT EXAMINING PROCEDURE page(s). Alternatively, applicant may submit a prelim- Where an English translation of the annexes is pro- inary amendment in accordance with 37 CFR 1.121. vided, the translation must be such that the translation of the originally filed application can be changed by 1893.01(a)(3)Article 34 Amendments (Filed replacing the originally filed application page(s) (of with the International Prelim- translation) with substitute page(s) of translation of the annex. Thus, applicant should check to be sure inary Examining Authority) that the English translation can be entered by substi- [R-3] tuting the pages of translation for corresponding pages of the claims of the international application Amendments to the international application that without leaving an inconsistency. If entry of the page were properly made under PCT Article 34 during the of translation causes inconsistencies in the specifica- international preliminary examination phase (i.e., tion or claims of the international application the translation will not be entered. Non-entry of the Chapter II) will be annexed by the International Pre- annexes will be indicated on the “NOTICE OF liminary Examining Authority to the international ACCEPTANCE OF APPLICATION UNDER preliminary examination report (IPER) and communi- 35 U.S.C. 371 AND 37 CFR 1.495” (Form PCT/DO/ cated to the elected Offices. See PCT Article 36, PCT EO/903). For example, if the translation of the origi- Rule 70.16, and MPEP § 1893.03(e). If these annexes nally filed application has a page which begins with are in English, they will normally be entered into the claim 1 and ends with a first part of claim 2 with the U.S. national stage application by the Office absent a remainder of claim 2 on the next page then translation clear instruction by the applicant that the annexes are of the annex to only claim 1 must include a substitute not to be entered. However, if entry of the replace- page or pages beginning with the changes to claim 1 ment sheets will result in an obvious inconsistency in and ending with the last of the exact same first part of the description, claims or drawings of the interna- claim 2. This enables the original translated first page tional application, then the annexes will not be of claims to be replaced by the translation of the entered. If the annexes are in a foreign language, a annex without changing the subsequent unamended proper translation of the annexes must be furnished to page(s). Alternatively applicant may submit a prelimi- nary amendment in accordance with 37 CFR 1.121. the Office not later than the expiration of 30 months The fact that an amendment made to the international from the priority date, unless a period has been set application during the international phase was entered pursuant to 37 CFR 1.495(c) to furnish an oath or dec- in the national stage application does not necessarily laration>,< * English translation of the international mean that the amendment is proper. Specifically, application, >search fee (37 CFR 1.492(b)), examina- amendments are not permitted to introduce “new mat- tion fee (37 CFR 1.492(c)), or application size fee ter” into the application. See PCT Article 34(2)(b). (37 CFR 1.492(j)),< in which case the translations of Where it is determined that such amendments intro- the annexes, accompanied by the processing fee set duce new matter into the application, then the exam- forth in 37 CFR 1.492(f), may be submitted within the iner should proceed as in the case of regular U.S. period set pursuant to 37 CFR 1.495(c). See 37 CFR national applications filed under 35 U.S.C. 111(a) by 1.495(e). Annexes for which translations are not requiring removal of the new matter and making any timely received will be considered canceled. Amend- necessary rejections to the claims. See MPEP § ments made under PCT Article 34 to the international 608.04 and § 2163.06. application after commencement and entry into the 1893.01(c) Fees [R-6] U.S. national phase (see MPEP § 1893.01) will not be considered in a U.S. national stage application. How- Because the national stage fees are subject to ever, applicants may still amend the U.S. national change, applicants and examiners should always con- stage application by way of a preliminary amendment sult the Official Gazette for the current fee listing. submitted in accordance with 37 CFR 1.115 and >The basic national fee must be paid prior to the 37 CFR 1.121. expiration of 30 months from the priority date to </p><p>Rev. 7, July 2008 1800-192 PATENT COOPERATION TREATY 1893.01(d) avoid abandonment of the international application as Article 34 amendments or preliminary amendments to the United States. This time period is not extend- taken into account in determining the application size able. 37 CFR 1.495(a)-(b). The search fee required fee. For tables related to sequence listings that were under 37 CFR 1.492(b) and examination fee required submitted under PCT Administrative Instructions under 37 CFR 1.492(c) are due on commencement of Section 801 in the international stage and furnished the national stage (37 CFR 1.491(a)), but may be in the U.S. national stage: accepted later with the payment of a surcharge. 37 CFR 1.495(c)(3).< (A) as a text file via EFS-Web or in an electronic medium in accordance with 37 CFR 1.52(f)(1), each Fees under 37 CFR 1.16 relate to national applica- three kilobytes of content submitted shall be counted tions under 35 U.S.C. 111(a), and not to international as a sheet of paper; applications entering the national stage under (B) on paper, the number of sheets actually 35 U.S.C. 371. National stage fees are specifically received are counted; provided for in 37 CFR 1.492. However, an authoriza- (C) as a PDF file submitted through EFS-Web, tion to charge fees under 37 CFR 1.16 in an interna- the number of pages as rendered by the Office elec- tional application entering the national stage under tronic filing system are counted. The paper size equiv- 35 U.S.C. 371 will be treated as an authorization to alency provisions of 37 CFR 1.52(f)(2) for EFS-Web charge fees under 37 CFR 1.492. See 37 CFR 1.25(b). filings do not apply to national stage submissions.< Accordingly, applications will not be held abandoned if an authorization to charge fees under 37 CFR 1.16 The processing fee set forth in 37 CFR 1.492(i) will has been provided instead of an authorization to be required for acceptance of an English translation of charge fees under 37 CFR 1.492. the international application later than the expiration A preliminary amendment accompanying the initial of thirty months after the priority date, and the sur- national stage submission under 35 U.S.C. 371 that charge fee set forth in 37 CFR 1.492(h) will be *>is effective to cancel< claims and/or *>eliminate< required for acceptance of any of the search fee, multiple dependent claims will be effective to reduce examination fee, or oath or declaration of the inventor the number of claims to be considered in calculating after the date of commencement. 37 CFR 1.495(c)(3). extra claim fees required under 37 CFR 1.492(d)-(e) and/or eliminate the multiple dependent claim fee 1893.01(d) Translation [R-5] required under 37 CFR 1.492(f). A subsequently filed Applicants entering the national stage in the U.S. amendment canceling claims and/or eliminating mul- are required to file an English translation of the inter- tiple dependent claims will not entitle applicant to a national application if the international application refund of fees previously paid. See MPEP § 607 and § was filed in another language and was not published 608. under PCT Article 21(2) in English. 35 U.S.C. > 371(c)(2) and 37 CFR 1.495(c). A “Sequence Listing” The application size fee for a national stage appli- need not be translated if the “Sequence Listing” com- cation (37 CFR 1.492 (j)) is determined on the basis plies with PCT Rule 12.1(d) and the description com- of the international application as published by WIPO plies with PCT Rule 5.2(b). See 37 CFR 1.495(c). The pursuant to PCT Article 21. Specifically, the applica- translation must be a translation of the international tion size fee is calculated on the basis of the number application as filed or with any changes which have of sheets of description, claims, drawings, and been properly accepted under PCT Rule 26 or any abstract present in the published international applica- rectifications which have been properly accepted tion. This calculation is made without regard to the under PCT Rule 91. A translation of less than all of language of publication. Certain other sheets typically the international application (e.g., a translation that present in the international publication are not taken fails to include a translation of text contained in the into account in determining the application size fee, drawings or a translation that includes a translation of i.e., Article 19 amendments, the international search claims amended under PCT Article 19 or 34 but does report, and any additional bibliographic sheets (other not include a translation of the original claims) is than the cover sheet containing the abstract). Nor are unacceptable. In addition, a translation that includes </p><p>1800-193 Rev. 7, July 2008 1893.01(e) MANUAL OF PATENT EXAMINING PROCEDURE modifications other than changes that have been prop- 1893.01(e) Oath/Declaration [R-6] erly accepted under PCT Rule 26 or 91 (e.g., a transla- tion that includes headings that were not present in the 37 CFR 1.497. Oath or declaration under 35 U.S.C. international application as originally filed) is unac- 371(c)(4). ceptable. A translation of words contained in the (a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to drawings must be furnished either in the form of new §1.495, and a declaration in compliance with this section has not drawings or in the form of a copy of the original been previously submitted in the international application under drawings with the translation pasted on the original PCT Rule 4.17(iv) within the time limits provided for in PCT text matter. See PCT Rule 49.5(d). Rule 26ter.1, he or she must file an oath or declaration that: (1) Is executed in accordance with either §§ 1.66 or 1.68; Amendments, even those considered to be minor or (2) Identifies the specification to which it is directed; to not include new matter, may not be incorporated (3) Identifies each inventor and the country of citizenship into the translation. If an amendment to the interna- of each inventor; and tional application as filed is desired for the national (4) States that the person making the oath or declaration believes the named inventor or inventors to be the original and stage, it may be submitted in accordance with 37 CFR first inventor or inventors of the subject matter which is claimed 1.121. An amendment filed under 37 CFR 1.121 and for which a patent is sought. should be submitted within **>3 months< after com- (b)(1) The oath or declaration must be made by all of the pletion of the 35 U.S.C. 371(c) requirements *>for< actual inventors except as provided for in §§ 1.42, 1.43 or 1.47. entry into the national stage. See 37 CFR (2) If the person making the oath or declaration or any *>1.115(b)(3)(iii)<. If applicant has timely paid the supplemental oath or declaration is not the inventor (§§ 1.42, 1.43, or §1.47), the oath or declaration shall state the relationship of the basic national fee and submitted the copy of the inter- person to the inventor, and, upon information and belief, the facts national application but the translation is missing or is which the inventor would have been required to state. If the per- defective, a Notification of Missing Requirements son signing the oath or declaration is the legal representative of a (PCT/DO/EO/905) will be sent to applicant setting a deceased inventor, the oath or declaration shall also state that the person is a legal representative and the citizenship, residence and period to correct any missing or defective require- mailing address of the legal representative. ments. The time period is 32 months from the priority (c) Subject to paragraph (f) of this section, if the oath or dec- date or 2 months from the date of the notice, which- laration meets the requirements of paragraphs (a) and (b) of this ever expires later. The time period may be extended section, the oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) and § 1.495(c). However, if the oath or for up to five additional months as provided in 37 declaration does not also meet the requirements of § 1.63, a sup- CFR 1.136(a). A processing fee is required for accept- plemental oath or declaration in compliance with § 1.63 or an ing a translation after 30 months from the priority application data sheet will be required in accordance with § 1.67. date. See 37 CFR 1.492(i). (d) If the oath or declaration filed pursuant to 35 U.S.C. 371(c)(4) and this section names an inventive entity different from Pursuant to PCT Rule 48.3(c), if the international the inventive entity set forth in the international application, or if a application is published in a language other than change to the inventive entity has been effected under PCT Rule English, the publication shall include an English 92bis subsequent to the execution of any oath or declaration which was filed in the application under PCT Rule 4.17(iv) or this translation of the title of the invention, the abstract, section and the inventive entity thus changed is different from the and any text matter pertaining to the figure or figures inventive entity identified in any such oath or declaration, appli- accompanying the abstract. The translations shall be cant must submit: prepared under the responsibility of the International (1) A statement from each person being added as an Bureau. inventor and from each person being deleted as an inventor that any error in inventorship in the international application occurred A translation of the international application as without deceptive intention on his or her part; filed and identified as provided in 37 CFR 1.417 sub- (2) The processing fee set forth in § 1.17(i); and mitted for the purpose of obtaining provisional rights (3) If an assignment has been executed by any of the orig- inal named inventors, the written consent of the assignee (see pursuant to 35 U.S.C. 154(d)(4) can be relied on to §3.73(b) of this chapter); and fulfill the translation requirement under 35 U.S.C. (4) Any new oath or declaration required by paragraph (f) 371(c)(2) in a national stage application. of this section.</p><p>Rev. 7, July 2008 1800-194 PATENT COOPERATION TREATY 1893.01(e)</p><p>(e) The Office may require such other information as may be pliance with PCT Rule 4.17(iv) and executed by all deemed appropriate under the particular circumstances surround- the inventors was submitted within the time limits ing the correction of inventorship. provided in PCT Rule 26ter.1 in the international (f) A new oath or declaration in accordance with this section must be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was phase. However, if the inventorship was changed in filed under PCT Rule 4.17(iv), and: the international application under PCT Rule 92bis **> such that the inventorship identified in the PCT Rule (1) There was a change in the international filing date 4.17(iv) declaration no longer corresponds to that of pursuant to PCT Rule 20.5(c) after the declaration was executed; the international application (see 37 CFR 1.41(a)(4)), or< then a new oath or declaration in accordance with (2) A change in the inventive entity was effected under 37 CFR 1.497(a)-(b) will be required to enter the PCT Rule 92bis after the declaration was executed and no declara- tion which sets forth and is executed by the inventive entity as so national stage. See 37 CFR 1.497(f)(2). Similarly, a changed has been filed in the application. new oath or declaration in compliance with 37 CFR (g) If a priority claim has been corrected or added pursuant 1.497(a)-(b) is required where the PCT Rule 4.17(iv) to PCT Rule 26bis during the international stage after the declara- declaration was executed prior to a change in the tion of inventorship was executed in the international application international filing date pursuant to PCT Rule under PCT Rule 4.17(iv), applicant will be required to submit *>20.5(c)<. See 37 CFR 1.497(f)(1). In addition, either a new oath or declaration or an application data sheet as set forth in § 1.76 correctly identifying the application upon which where a priority claim has been corrected or added priority is claimed. pursuant to PCT Rule 26bis after execution of the PCT Rule 4.17(iv) declaration, then a supplemental Applicants entering the national stage in the U.S. oath or declaration, or an application data sheet, iden- are required to file an oath or declaration of the inven- tifying the correct priority claim will be required. See tor in accordance with 37 CFR 1.497(a) and (b). If the 37 CFR 1.497(g). basic national fee and copy of the international appli- cation has been received by the expiration of 30 CORRECTION OF INVENTORSHIP months from the priority date, but the required oath or declaration has not been filed, the Office will send The inventorship of an international application applicant a Notification of Missing Requirements entering the national stage under 35 U.S.C. 371 is that (Form PCT/DO/EO/905) setting a time period to cor- inventorship set forth in the international application, rect any missing or defective requirements and to sub- which includes any changes effected under PCT Rule mit the surcharge fee required under 37 CFR 1.492(h) 92bis. See 37 CFR 1.41(a)(4). Accordingly, an oath or unless previously paid. The time period is 32 months declaration that names an inventive entity different from the priority date or 2 months from the date of the than that set forth in the international application will notice, whichever expires later. The time period may not be accepted for purposes of entering the U.S. be extended for up to five additional months as pro- national phase unless the requirements under 37 CFR vided in 37 CFR 1.136(a). Failure to timely file the 1.497(d) are satisfied. These requirements include: required oath or declaration will result in abandon- (A) a statement from each person being added as an ment of the application. inventor and from each person being deleted as an An oath or declaration satisfying the requirements inventor that any error in inventorship in the interna- of 37 CFR 1.497(a)-(b) will be sufficient for the pur- tional application occurred without deceptive inten- poses of entering the U.S. national phase. However, if tion on his or her part; (B) the processing fee set forth the oath or declaration fails to also comply with the in 37 CFR 1.17(i); and (C) the written consent of the additional requirements for oaths and declarations set assignee if an assignment has been executed by any of forth in 37 CFR 1.63, applicants will need to submit a the original named inventors (see 37 CFR 3.73(b)). supplemental oath or declaration, or an application If an inventor refuses to execute the oath or declara- data sheet where permitted under 37 CFR 1.63(c), to tion or cannot be found or reached after diligent correct the deficiency. See 37 CFR 1.497(c). effort, applicant must file an oath or declaration and a In general, the requirement for an oath or declara- petition in accordance with 37 CFR 1.47. See 37 CFR tion in compliance with 37 CFR 1.497(a)-(b) will 1.497(b) and MPEP § 409.03. Similarly, where an have been previously satisfied if a declaration in com- inventor is deceased or legally incapacitated, an oath </p><p>1800-195 Rev. 7, July 2008</p> </div> </article> </div> </div> </div> <script type="text/javascript" async crossorigin="anonymous" src="https://pagead2.googlesyndication.com/pagead/js/adsbygoogle.js?client=ca-pub-8519364510543070"></script> <script src="https://cdnjs.cloudflare.com/ajax/libs/jquery/3.6.1/jquery.min.js" crossorigin="anonymous" referrerpolicy="no-referrer"></script> <script> var docId = '1712496f53c17727afc520ac8d0ca9a4'; var endPage = 1; var totalPage = 247; var pfLoading = false; window.addEventListener('scroll', function () { if (pfLoading) return; var $now = $('.article-imgview .pf').eq(endPage - 1); if (document.documentElement.scrollTop + $(window).height() > $now.offset().top) { pfLoading = true; endPage++; if (endPage > totalPage) return; var imgEle = new Image(); var imgsrc = "//data.docslib.org/img/1712496f53c17727afc520ac8d0ca9a4-" + endPage + (endPage > 3 ? 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