PCT Rule 34 — Minimum Documentation (MPEP Coverage Index) – BlueIron IP
PCT Rule 34 Minimum Documentation
Source: Patent Cooperation Treaty (PCT)BlueIron Update:
This page consolidates MPEP guidance interpreting PCT Rule 34, including 3 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The International Searching Authority (ISA) must conduct a comprehensive prior art search and issue a Written Opinion evaluating the patentability of inventions claimed in international applications.
What this section covers
- This section covers the basic functions of the ISA, including conducting a prior art search and issuing a Written Opinion.
Key obligations
- ISA must conduct a prior art search of inventions claimed in international applications.
- ISA must issue a Written Opinion evaluating the patentability based on the prior art search.
Practice notes
- Practitioners should ensure the search is comprehensive and includes all relevant prior art to avoid a deficient Written Opinion.
- The Written Opinion is not binding and does not affect the outcome of national phase proceedings.
Official MPEP § 34 — Minimum Documentation
Source: USPTOLast Modified: 10/30/2024 08:50:22
Rule 34 Minimum Documentation
34.1 Definition
- (a) The definitions contained in Article 2(i) and (ii) shall not apply for the purposes of this Rule.
- (b) The documentation referred to in
Article
15(4)
(“minimum documentation”) shall consist of:
- (i) the “national patent documents” as specified in paragraph (c),
- (ii) the published international (PCT) applications, the published regional applications for patents and inventors’ certificates, and the published regional patents and inventors’ certificates,
- (iii) such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published in a list by the International Bureau when agreed upon for the first time and whenever changed.
- (c) Subject to paragraphs (d) and (e), the “national patent
documents” shall be the following:
- (i) the patents issued in and after 1920 by France, the former Reichspatentamt of Germany, Japan, the former Soviet Union, Switzerland (in the French and German languages only), the United Kingdom, and the United States of America,
- (ii) the patents issued by the Federal Republic of Germany, the People’s Republic of China, the Republic of Korea and the Russian Federation,
- (iii) the patent applications, if any, published in and after 1920 in the countries referred to in items (i) and (ii),
- (iv) the inventors’ certificates issued by the former Soviet Union,
- (v) the utility certificates issued by, and the published applications for utility certificates of, France,
- (vi) such patents issued by, and such patent applications published in, any other country after 1920 as are in the English, French, German or Spanish language and in which no priority is claimed, provided that the national Office of the interested country sorts out these documents and places them at the disposal of each International Searching Authority.
- (d) Where an application is republished once (for example, an Offenlegungsschrift as an Auslegeschrift) or more than once, no International Searching Authority shall be obliged to keep all versions in its documentation; consequently, each such Authority shall be entitled not to keep more than one version. Furthermore, where an application is granted and is issued in the form of a patent or a utility certificate (France), no International Searching Authority shall be obliged to keep both the application and the patent or utility certificate (France) in its documentation; consequently, each such Authority shall be entitled to keep either the application only or the patent or utility certificate (France) only.
- (e) Any International Searching Authority whose official language, or one of whose official languages, is not Chinese, Japanese, Korean, Russian or Spanish is entitled not to include in its documentation those patent documents of the People’s Republic of China, Japan, the Republic of Korea, the Russian Federation and the former Soviet Union as well as those patent documents in the Spanish language, respectively, for which no abstracts in the English language are generally available. English abstracts becoming generally available after the date of entry into force of these Regulations shall require the inclusion of the patent documents to which the abstracts refer no later than six months after such abstracts become generally available. In case of the interruption of abstracting services in English in technical fields in which English abstracts were formerly generally available, the Assembly shall take appropriate measures to provide for the prompt restoration of such services in the said fields.
- (f) For the purposes of this Rule, applications which have only been laid open for public inspection are not considered published applications.
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- Pct International Preliminary Examination
- Pct International Search