MPEP 1800 - Patent Cooperation Treaty

Question 1

What is a PCT application?

Answer 1

PCT application is a single world wide provisional application. It holds your place in line for up to 30 months from your original priority filing date for every member country of the WTO (World Trade Organization). It works through WIPO (World International Property Organization).

PCT provides a mechanism where an applicant can file one application (an international application) in a standardized format in one language at one receiving office, and have that filing acknowledged as a regular national filing in all member countries of the PCT.

Question 2

What must an application have to file a PCT in the United State?

Answer 2

MUST have a least 1 applicant that is Resident or National of the United States

Question 3

What is a receiving office?

Answer 3

A receiving office is the local office in each country where you file your patent application.

Question 4

What is the 18 month rule for PCT?

Answer 4

PCT is published 18 months from priority date.

Question 5

What is the 30 month rule for PCT?

Answer 5

You have 30 months from filing the international application to enter the national stage of any countries you designate.

Question 6

What are the four steps that occur automatically and the fifth step that is optional for the PCT international phase of a PCT application?

Answer 6

The international phase consists of several steps of which the first four occur automatically and the last is optional for the applicant:
1. Filing of the international application by the applicant, and its processing by the “Receiving Office”;
2. Establishment of the international search report by one of the “International Search Authorities (ISA)” (16 months from the priority date);
3. A preliminary non-binding written opinion sent to the Applicant by the ISAs to novelty, inventive step, and industrial applicability (30 month rule), and;
4. Publication (electronically) of the international application along with the international search report (18 month rule).
5. (optional) the establishment of an international preliminary examination that results in a second written report entitled “International Preliminary Report on Patentability.” In order to establish the “optional” international preliminary examination, the applicant must make a “demand” for the preliminary examination by the later of three months from issuance of the international search report and the written opinion of the ISA, or 22 months form the priority date.

Question 7

What is the process to get the optional establishment of an international preliminary examination that results in a second written report entitled “International Preliminary Report on Patentability”?

Answer 7

In order to establish the “optional” international preliminary examination, the applicant must:
1. make a “demand” for the preliminary examination by:
(a) the later of three months from issuance of the international search report and the written opinion of the ISA, or
(b) 22 months form the priority date.

Question 8

What does the applicant need to provide and by what time to enter the national phase in the United States?

Answer 8

1. Fee and copy of the international application
2. Oath/declaration
3. Translation of the International application
4. Timing: by a non-extendable date of 30 months from the priority date. Note that the oath and translation m ay be submitted on month late if accompanied by a fee.

Question 9

What are the elements of the International Application

Answer 9

An international application MUST contain the following elements:
1. A “Request” to be an international application;
2. Designation of at least one contract (PCT participating) state/country;
3. the name of the applicant;
4. Specification, Claim, and Drawing;
5. Abstract (can be submitted later, however, the international application is considered withdrawn if no Abstract is provided with the prescribed time limit along with the filing fee)
6. Fee (can be submitted later)

Question 10

What is the “Request” and what does it need to be complete?

Answer 10

The “Request” is a separate form containing a petition for the international application. By the mere filing of a “Request,” the applicant automatically receives all-inclusive coverage of ALL designations available under the PCT and all possible protections available in any member state.

The “Request” must contain at a minimum:
1. the title of the invention;
2. the applicant (inventors/owners);
3. the representing agent (attorney, etc.)

Question 11

Who is the “applicant” for PCT purposes?

Answer 11

The “applicant” for PCT purposes includes both the inventors and any owners.
1. United States: The applicant MUST include the inventors unless the National Stage entry will be done via a Substitute Statement by the owners/applicants.
2. Not in the United States: the owner may file without naming the inventors or even obtain their signatures. See 37 CFR 1.421 (b and c)

Question 12

What does an applicant need for a Priority Claim to prior US or foreign national application?

Answer 12

1. name of applicant; country; date; application #
2. a certified copy of the earlier filed national application together with the international application;
3. must be filed within 16 months from the priority date

Question 13

For restriction practices, the PCT follows the Unity of Invention. What is this?

Answer 13

Restriction required if claims did not come from the same “inventive concept”. No examiner discretion for restriction of a national stage of a PCT.

The concept of unity of invention is based on “one patent for one invention”. The international application should set forth claims that relate to only one invention or to a group of inventions so linked as to form a single general inventive concept. Unity of invention is present only when there is a “technical relationship” among the claimed inventions involving one or more of the same or corresponding “special technical features”. Special technical features are features that defines a contribution over the prior art.

37 CFR 1.475 gives types of combination of inventions which may be considered together.

Question 14

What is the criteria for the Article 19 Amendment?

Answer 14

Article 19 is the first chance to amend the international application:
1. 1st chance to amend
2. ONLY claims can be amended at this point
3. No new matter
4. Filed with International Bureau (IB) and in the language of the published international application
5. Can provide a statement explaining the amendments and their impact
6. Timing: after applicant receives International Search Authority (ISA) search report and written opinion, but before the later of: (a) 2 months from ISA report/opinion and (b) 16 months from the priority date.

Question 15

What is the criteria for the Article 34 Amendment?

Answer 15

Article 34 is the second chance to amend the international application:
1. can amend description, claims, and/or drawings
2. ONLY claims can be amended at this point
3. No new matter
4. This is available only if applicant has filed Demand for International Preliminary Examination (Chapter II)
6. Timing: when make Demand for International Preliminary Examination to IPEA, before the international preliminary examination report is established, within the period for reply to the written opinion of the International Search Authority (ISA), or within the period for reply to the written opinion of the IPEA.

Question 16

What is the criteria for making amendments during the National Stage?

Answer 16

you can amend national stage application description, claims, and drawings again like in a normal nation examination.

Question 17

Obvious Mistakes can be corrected?

Answer 17

MPEP 1836 Rectification of Obvious Mistakes, PCT Rule 91: allowed for limited reasons if the mistake and correction would be obvious to the competent authority (RO, ISA, etc.). E.g., linguistic errors, spelling errors and grammatical errors so long as the meaning of the disclosure does not change upon entry o the rectification. Changes to chemical or mathematical formulas would not generally be rectifiable unless they would be common knowledge to anyone. A missing chemical formula or missing lone of text would not be considered to be an obvious mistake subject to rectification.

Question 18

Can an international application, a country designation or a priority claim be withdrawn

Answer 18

Withdrawal of application, country designation, or a priority claim can be done any time begore 30 months from priority date:
1. free
2. must be signed by all applicants or a common agent/representative

Question 19

How long is a PCT term?

Answer 19

20 years

Question 20

FOT/DUSE

Answer 20

Fee Oath Translation
/(11/29/2000)
Designate US publish in English

Question 21

What are the advantages of filing a PCT application?

Answer 21

1. It allows applicants to designate multiple countries in a single international application.
2. Applicants have an additional 30 months to decide which countries they want to designate, and to pay the national filing fees.
3. Provides for an international search and an international preliminary examination. This can be valuable for applicants, as they can provide insights into the patentability of the invention and identify any potential problems that may need to be addressed before the application enters the national stage.

Question 22

What is national stage entry?

Answer 22

National stage entry is the process of entering the national patent system of each designated country to enter the national stage, the applicant must file a national stage application with the patent office of each designated country.

Question 23

What happens to the PCT international application once it enters the national stage?

Answer 23

1. Examination begins: Once an international application enters the national stage, it is examined by the patent office of each designated country and the inventor/applicant would need to file a national stage application and pay the national filing fees in each country.
2. Make changes to the application: The national stage examination is similar to the examination of a national patent application, and the applicant may need to make changes to the application in order to comply with the requirements of each designated country.

Question 24

What language must the PCT application be filed in?

Answer 24

International applications may be filed with the International Bureau as receiving Office in any language. However, the request has to be filed in one of the ten publication languages under the PCT, that is, in Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish.

Question 25

Key PCT deadline: What happens at 12 months from the priority date?

Answer 25

The applicant must file the international application.

Question 26

Key PCT deadline: What happens at 30 months from the priority date?

Answer 26

The applicant must designate the countries in which they want to seek patent protection.

Question 27

Key PCT deadline: What happens at 31 months from the priority date?

Answer 27

The applicant must pay the national filing fees in each designated country.

Question 28

Where can you find the basic flow chart of PCT process in the MPEP?

Answer 28

MPEP 1842

Question 29

Where can you find a link to an updated list of PCT member states in the MPEP?

Answer 29

MPEP 1817

Question 30

How far back can an international application claim foreign priority to a foreign national application?

Answer 30

12 months (14 months with PLTIA)

Question 31

What methods can you use to file a PCT application?

Answer 31

File by EFS (electronic filing system) or mail.
Note: Certificate of Mailing or Transmission procedures do NOT apply. Fax is NOT allowed for filing a PCT application, but may be used for a few related documents.

Question 32

What is a Bypass application?

Answer 32

“Bypass application” – you can file 35 USC 111(a) application (continuation, CIP, divisional) during the pendency of international application without filing a U.S. national-stage application under 35 USC 371(c). See MPEP 1895. This must:
1. reference prior international application,
be co-pending with international application (i.e., ~30 months), and
2. have at least 1 common inventor with international application
3. if international application claims priority from a foreign national application: include a claim for foreign priority under 119(a)-(d) and a certified copy

Question 33

When can a PCT application be filed?

Answer 33

Within 1 year of filing a national application.

Question 34

What is the 102(e) date for PCT application?

Answer 34

1. PCTs filed before November 29, 2000 have a 102(e) date based on the day it enters the National Stage.
2. PCTs filed after November 29, 2000 have a 102(e) date based on its PCT Publication date if:
   (a) designates the US; and
   (b) is in English
3. Post AIA: a published PCT gets a 102(a)(2) priority date as of its foreign filing date.

FOT/DUSE

Question 35

A citizen and resident of Japan files a PCT application in the US, designating only Japan as recipient country, and application is written in Japanese. What will the USPTO do?

Answer 35

The USPTO will transmit to the IB (international Bureau) once the transmittal fee is submitted and paid.

The applicant in this question is a resident and citizen of Japan. According to 37 CFR 1.421(a), only U.S. residents or citizens can file international applications at the USPTO as a receiving office. If anyone else files it in the US, it gets forwarded to the International Bureau. See MPEP 1805 and 1806.

Question 36

what happens if the PCT abstract is missing?

Answer 36

The International Searching Authority shall establish an Abstract (if missing), and the applicant may within one month (30 days) from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority.

Question 37

How much time do you have to correct inventorship during the first stage with the International Searching Authority?

Answer 37

You have 30 months to correct.1893 National Stage (U.S. National Application Filed Under 35 U.S.C. 371)

Question 38

Inventor submitted a PCT application, but was notified that the application did not meet the requirements for the national stage in the US in August. Inventor has not responded due to illness, and over 30 months have since passed since the notification was sent. According to the MPEP what are the possible options available to Inventor if he now chooses to pursue his application?

Answer 38

Inventor can petition to revive under 37 CFR 1.137 and/or can petition to revive the application using Form SB/64PCT

Explanation:
See MPEP 1893.02, MPEP 711.03(c), 37 CFR 1.137.
If the requirements for the submission of the basic national fee and a copy of the international application (if necessary) prior to the expiration of 30 months from the priority date are not satisfied, then the international application becomes abandoned as to the United States at thirty months from the priority date. See 37 CFR 1.495(h). If the requirements under 37 CFR 1.495(b) are timely met, but the requirements under 37 CFR 1.495(c) for an English translation of the international application, oath/declaration, search fee, examination fee and application size fee are not met within a time period set in a notice provided by the Office, then the application will become abandoned upon expiration of the time period set in the notice. See 37 CFR 1.495(c)(2) and 1.495(h). Applicant may file a petition to revive an abandoned application in accordance with the provisions of 37 CFR 1.137. See MPEP 711.03(c). For applicants convenience, applicant may use Form PTO/SB/64PCT (unintentionally abandoned application) for this purpose. Note: Form PTO/SB/61PCT (unavoidably abandoned application) was Form SB/64PCT’s predecessor.

Question 39

Mitch and Mac are both US citizens and named inventors on an international application that is filed in the USPTO Receiving Office that designates the United States of America. Mac now indicates that he will not sign the Request for the international application. Mitch wishes to proceed with the application and seeks the advice of their patent agent. Which of the following answers accords with the provisions of the Patent Cooperation Treaty?

Answer 39

Mitch should sign the Request alone and accompany it with a statement providing a satisfactory explanation for the lack of Macs signature.

From MPEP 1820:
Pursuant to PCT Rule 4.15, the international application must be signed in Box No. X of the request by the applicant, or, where there are two or more applicants, by all of them. However, under PCT Rule 26.2bis, it is sufficient for purposes of PCT Article 14(a)(a)(i) that the application is signed by only one of the applicants. The United States Receiving Office will not issue an invitation to applicants to furnish missing signatures where the request is signed by at least one of the applicants. Notwithstanding PCT Rule 26.2bis, any designated/elected office, in accordance with its national law, can still require confirmation of the international application by the signature of any applicant for such designated state who has not signed the request. PCT Rule 51bis.1(a)(vi). … The international application may be signed by an agent.
So, even though the agent represents both Mitch and Mac, he shouldn’t really do anything he knows his client would not want him to (i.e., sign on behalf of Mac). Thus, the best answer is that Mitch should just sign it himself since he is a US citizen. He could also include an explanation about why Mac hasn’t signed.

Notice that they are both US citizens so either one signing/filing alone can use the USPTO as a receiving office. If this wasn’t the case, the answer would be wrong.

Question 40

Can missing drawings or pages missing from the specification be fixed as an obvious mistake?

Answer 40

No.
From MPEP 1836:Under PCT Rule 91, obvious mistakes in PCT applications can be corrected (for free). Obvious mistakes include linguistic errors, spelling errors, and grammatical errors (so long as it doesnt change the meaning when fixed). Chemical or math formulas cannot be fixed unless fixed error would be common knowledge.What is “obvious”? It must be obvious to the competent authority (i.e., the receiving Office, the International Searching Authority, the International Preliminary Examining Authority, or the International Bureau) that something else was intended other than what appears in the document and that nothing else could have been intended than what is offered as rectification. A missing chemical formula or missing line of text would not be considered to be an obvious mistake subject to rectification.

Question 41

What are the elements necessary to obtain an international filing date for an application filed under the Patent Cooperation Treaty?

Answer 41

a description, a claim, names at least one applicant who is a resident or national of a PCT Contracting State, filed in the prescribed language, and designates at least one Contracting State.

See PCT Article 11. The filing date of a PCT international application is the date applicant satisfies Article 11 requirements, i.e., includes a description, a claim, names at least one applicant who is a resident or national of a PCT Contracting State, filed in the prescribed language, and designates at least one Contracting State. See MPEP § 1810. By virtue of 35 U.S.C. 363, the U.S. filing date of an international application that designates the United States is, for most legal purposes, the international filing date. See MPEP § 1893.03(b).

Question 42

26bis.1

Answer 42

Correction or Addition of Priority Claim
The applicants must request for correction within 16 months from the date of priority.