MPEP 1800 - PCT

Question 1

International Phase (PHASE I)

Answer 1

5 Steps:

1. Filing of the international application by the applicant, and its processing by the “Receiving Office.”
   - —- Application is typically published 18 months from the priority date.
2. Establishment of international search report by on of the International Search Authorities (ISAs).
   - —- Typically published 16 months from the priority date.
3. A preliminary non-binding written opinion sent to the Applicant by the ISA as to novelty, inventive step, and industrial applicability; and
   - —- Non-binding opinion is typically is made publicly available at the end of 30 months from the priority date, but is sent to the applicant at the same time as the international search report.
4. Publication (electronically) of the international application along with the international search report.
5. Optional – Establishment of international preliminary examination that results in a second written report entitled “International Preliminary Report on Patentability.”
   - —- 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 from the priority date.

Question 2

National Phase (PHASE II)

Answer 2

Additional steps are required before each of the “designated offices.”

In the U.S., applicant must: (i) Pay the required national fees; (ii) furnish a translation of the international application, and (iii) submit the required oath or declaration.

—– Applicant must furnish a copy of the application and fee by the prescribed non-extendable date, 30 months from the priority date.

—– Oath and fee may be submitted one month late if accompanied by the appropriate fee.

Question 3

International Preliminary Examination Request/Procedure

Answer 3

When an international preliminary examination is demanded, no designated (national) office will process or examine the international application prior to the expiration of the 30 months from the priority date, and fees or translation only need to be submitted to the designated Offices by the expiration of that 30-month period.

Question 4

Elements of International Application

Answer 4

i. A request;
- —- Separate form containing a petition for the international application. Must identify the applicant and any representing agent.
- —- Merely filing the request automatically gives the applicant all-inclusive coverage of all designations available under the PCT and all possible protection available in any member state.

ii. Designation of at least on contracting (PCT-participating) state;

iii. Name of applicant;
- —- Applicant for PCT purposes includes both inventors and any owners. Application can only be filed in an office where at least on applicant is a resident or national.
- —- In U.S.: “Applicant” must include inventors unless being done by substitute statement by owners/applicants.

iv. Specification, claim and drawing (if necessary to understand invention);
v. Abstract (may be submitted late); and
vi. Fee (may be submitted late).

Question 5

Designation of States

Answer 5

The filing of the application request shall constitute the designation of all contracting states bound by the PCT. However, the applicant must designate at least on member country at the time of filing.

No fees are required for this all-encompassing designation except when the applicant later decides to enter the respective “national” phases.

Question 6

Amendments to International Application

Answer 6

Two chances to amend under Article 19, and Article 34.

Question 7

Article 19 Amendment

Answer 7

PRIOR TO PUBLICATION, applicant may amend:

1. Be filed with the International Bureau; and
2. Must be in the language of the International Application.
   - —- The opportunity to amend is available only after the applicant has received the international search report and written opinion of the ISA.

Question 8

Article 34 Amendment

Answer 8

A second opportunity to amend under Article 34 arises and remains available until the end of 22 months from the priority date or 3 months after the date of mailing of the search report and written opinion, whichever expires later.
i. Article 34 amendments are made in conjunction with Chapter II Demand and can be to any of the claims, spec, drawings.

Question 9

National Phase

Answer 9

To enter National Phase in the US, applicant must within the 30 month time limit of the filing date or priority date (whichever is first) file:

1. A copy of the international application; and
2. The national filing fee.
   - — These elements cannot be submitted late and cannot be extended.
3. Oath and translation must also be provided to the designated Office but can be filed later with the usual surcharge.

Question 10

Term

Answer 10

Term of any US patent granted from a PCT origin application is 20 years from the filing date of the international application, not the date it enters the national phase.

Question 11

Claiming Priority from a US Application

Answer 11

A PCT application can claim priority from an earlier US application if it is filed within one year of the filing date of that US Application.

Question 12

102(e) and PCTs

Answer 12

If International Application was filed on or after 11/29/2000:
1. If International Application was published in English and designated in the US, then the 102(e) date of such publication is the International Filing Date of the International Application.

2. If International Application was NOT published in English or the US was not designated, then NO 102(e) date ever occurs!!

For applications with filing dates on or after 3/16/13 with no prior domestic or PCT priority, no 102(e) date can accrue.