MPEP 1800 (PCT)

Question 1

For a PCT application, when entering the national phase in the U.S., what deadline is non-extendable, and when is the deadline?

Answer 1

1. Submission of application and fee.
2. “30 months after the filing of any priority application for the invention, or the international filing date if no priority is claimed” MPEP 1801.
   - Oath and translation may be a month late.

Question 2

Can a PCT claim priority to a U.S. application?

Answer 2

Yes, if filed within a year of the U.S. application. But if the U.S application has already published, it might be a useless priority claim.

MPEP 2701 II. Foreign priority does not affect term.

Question 3

When does the term begin for a U.S. patent granted from a PCT origin application?

Answer 3

The term starts at the filing date of the PCT application - even if the PCT application claims priority to a different application.

Question 4

Who can qualify as the “applicant” in a PCT?

Answer 4

Inventor or owner.

Question 5

In a PCT application, you want to claim priority to a prior application, what is the deadline for claiming priority and submitting a certified copy of the priority application?

Answer 5

satisfy both:
(1) 16 months from the PCT app’s earliest priority date being claimed or changed
and
(2) within 4 months from international filing date.
MPEP 1828. Rule 1.451, 1.465

Question 6

When is an foreign filing date the relevant date under 102(a)(2)?

Answer 6

When a a U.S. or PCT application claims priority to a foreign application filed on the foreign filing date.
The priority to the PCT app does not affect term.

Question 7

When can you amend claims to a PCT application?

Answer 7

1. Article 19 amendments: later of (a) 16 months after priority date and (b) 2 months after receiving ISA’s international search report and written opinion.
2. Article 34 amendments: later of 22 months from PCT app’s priority date and 3 months from mailing date of search report and written opinion.

Question 8

When is the deadline for “demanding” an optional international preliminary examination?

Answer 8

The later of 22 months* from PCT app’s priority date and 3 months from mailing date of international search report and written opinion. (Article 34 amendment)
MPEP 1865

• 19 is better “to extend the national stage entry deadline in Luxembourg, the United Republic of Tanzania, and Uganda.” MPEP 1801.

Question 9

All time limits for PCT procedures are calculated from the _________ date.

Answer 9

All time limits for PCT procedures are calculated from the PCT app’s priority date.

But remember - the term for a national stage application begins at the filing date of the PCT application, not earlier!

Question 10

People who are allowed to file a PCT via the USPTO (receiving office) are limited to _______ and ________.

Answer 10

PCT filing at the USPTO are limited to U.S. nationals and U.S. residents. MPEP 1806.

Question 11

What is the 102(a)(2) date of a PCT application, or national phase thereof?

Answer 11

Filing date of PCT, or its earliest priority date.

Question 12

Pre-AIA, and after the AIPA (Nov. 29 2000) what is the 102(e) date of a PCT application?

Answer 12

IA filing date, if the IA designated the U.S. and published in English.

Question 13

What is PCT Article 19 and what is a relevant deadline?

Answer 13

Article 19 is an opportunity to make claim amendments to a filed PCT application after receiving the international search report (ISR) from International Searching Authority.
deadline: later of two months of receiving the ISR or 16 months from the priority date
No new matter.
MPEP 1853

Question 14

Where do you file an Article 19 amendment?

Answer 14

“Any amendment to to the claims under Article 19 must be filed with the International Bureau – not with the receiving Office nor with the International Searching Authority. The amendments must be in the language in which the international application is published.”

MPEP 1853

Question 15

When is the deadline for withdrawing an International Application?

Answer 15

30 months from the priority date. MPEP 1859.

Question 16

When might you need a foreign filing license after filing a PCT application?

Answer 16

If you file in the U.S., it might be needed for copies of the application to be sent outside the U.S.
MPEP 1832

Question 17

At the national stage of a PCT application, when is the deadline for filing an oath?

Answer 17

The filing of the inventor’s oath or declaration maybe postponed until the application is otherwise in condition for allowance if applicant had earlier submitted an application data sheet in accordance with 37 CFR 1.76 identifying each inventor’s” name and mailing address. MPEP 1893.01(e)

Question 18

When is an oath or declaration required when entering national stage under the PCT?

Answer 18

When applicant hadn’t timely submitted it in international appplication.

“When an applicant of an international application desires to enter the national stage … and a declaration in compliance with § 1.63 has not been previously submitted in the international application … within the time limits … the applicant must file the inventor’s oath and declaration.”
Rule 1.497

Question 19

When is a PCT application published?

Answer 19

“the international publication of the international application shall be effected promptly after the expiration of 18 months from the priority date of that application.” MPEP 1857

Question 20

For a PCT, how do you designate countries that you might want to eventually file a national-stage application additional countries?

Answer 20

Just file the PCT application. “The filing of an international application will automatically constitute the designation of all contracting countries to the PCT on that filing date.” MPEP 1801

Question 21

What is the value of article 19 claim amendments?

Answer 21

You can extend when your provisional rights begin, so long as you give infringers notice. (That is, should your claim as amended in article 19 be granted.)

Question 22

A PCT application was filed on March 1, 2018 and claims priority to a Canadian application filed April 7 2017. When is the deadline for entry into the national phase?

Answer 22

30 months after earliest priority date: December 7, 2020.

Question 23

For an international application (“IA,” PCT) what is its relevant date as prior-art under § 102?

Answer 23

pre-AIA:
before Nov. 29 2000: AIA 102(e) date is when the USPTO receives fee, oath, and translation (FOT rule). Date becomes effective only when U.S. patent based on international application has issued.

after Nov. 29 2000: International filing date if the IA designated U.S. and is published in English.

post-AIA:
102(a)(2) date is the earliest priority date, providing that the IA designated the U.S. at time of filing.

Question 24

Which one of the following is not required to obtain an international filing date for an application filed under the Patent Cooperation Treaty (PCT)?
(A) A part which appears to be a claim..
(B) That the application be in a prescribed language.
(C) The designation of a PCT contracting state.
(D) The name of the inventor.
(E) An indication that the application is intended as an international application.

Answer 24

(D) The name of the inventor is not required.
Just need name of applicant, which could be the owner.

MPEP 1810

Question 25

An international application (IA) is received in the U.S. Receiving Office for filing under the Patent Cooperation Treaty (PCT). Assuming that at the time of filing the application, the applicant is a U.S. citizen, the applicant has the right to file an IA with the U.S. Receiving Office, and the IA filed is in English. Which one of the following is not required for the application to obtain an international filing date?
(A) The payment of fees.
(B) The designation of a PCT contracting state.
(C) An indication that the application is intended as an international application.
(D) A part of the application which appears to be a claim..
(E) The name of the applicant.

Answer 25

(A) The payment of fees is not required until 30th month after earliest priority date.

MPEP 1810

Question 26

What happens if you file an appeal brief and forget to mention the real party in interest?

Answer 26

Board of Appeals will assume that the inventor is the real party in interest.
MPEP 1205, Rule 41.37.

Question 27

(a) In what circumstances can a PCT application can get a filing date from the USPTO in its capacity as an international receiving office?
(b) In what circumstances can a PCT application can get a filing date from the USPTO in its capacity to forward such applications to the International Bureau in Geneva?

Answer 27

(a) When at least on applicant is a resident or national of the U.S. and the application is in English. MPEP 1810.
(b) When at least one applicant is a resident or national of any PCT Contracting State.

Question 28

What is the deadline for Article 19 amendments?
What amendments are allowed?

What is the deadline for Article 34 amendments?
What amendments are allowed?
Why submit?

Answer 28

19: later of 2 months from ISR amd 16 months from priority date
amend just claims.

34: 3 months from ISR and 22 months from priority date.
amend spec, claims, drawings
Why: For pursuing an International Preliminary Examination.

Question 29

Consider a pre-AIA PCT filed after Nov. 29 2000. It enters the national stage in the U.S. In what case it its 102(e) date earlier than its international filing date?

Answer 29

If the international application claims priority to a U.S. provisional application or non-provisional application.
MPEP 706.02(f)(1), example 7, “Additional Benefit Claims.”