PCT Rule 4 — The Request (Contents) (MPEP Coverage Index) – BlueIron IP
PCT Rule 4 The Request (Contents)
This page consolidates MPEP guidance interpreting PCT Rule 4, including 120 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 Request (Contents) requires all necessary information, such as addresses and dates, to be accurately provided in the PCT Request.
What this section covers
- This section covers the requirement for all necessary information, including addresses and dates, to be included in the PCT Request.
Key obligations
- Primary obligation is to include all required information in the PCT Request as specified by PCT Rule 4.
- Ensure accuracy and completeness of addresses, names, and dates provided in the Request.
- Compliance with administrative instructions for international patent applications is required, though no specific USC or CFR citations are needed.
Practice notes
- Double-check the accuracy of all addresses and dates provided in the Request.
- Ensure that all required information is clearly and concisely stated to avoid any compliance issues.
Official MPEP § 4 — The Request (Contents)
Source: USPTOLast Modified: 10/30/2024 08:50:22
Rule 4 The Request (Contents)
4.1 Mandatory and Optional Contents; Signature
- (a) The request shall contain:
- (i) a petition,
- (ii) the title of the invention,
- (iii) indications concerning the applicant and the agent, if there is an agent,
- (iv) indications concerning the inventor where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application.
- (b) The request shall, where applicable, contain:
- (i) a priority claim,
- (ii) indications relating to an earlier search as provided in Rules 4.12(i) and 12 bis.1(b) and (d) ,
- (iii) a reference to a parent application or parent patent,
- (iv) an indication of the applicant’s choice of competent International Searching Authority.
- (c) The request may contain:
- (i) indications concerning the inventor where the national law of none of the designated States requires that the name of the inventor be furnished at the time of filing a national application,
- (ii) a request to the receiving Office to prepare and transmit the priority document to the International Bureau where the application whose priority is claimed was filed with the national Office or intergovernmental authority which is the receiving Office,
- (iii) declarations as provided in Rule 4.17 ,
- (iv) a statement as provided in Rule 4.18 ,
- (v) a request for restoration of the right of priority,
- (vi) a statement as provided in Rule 4.12(ii) .
- (d) The request shall be signed.
4.2 The Petition
The petition shall be to the following effect and shall preferably be worded as follows: “The undersigned requests that the present international application be processed according to the Patent Cooperation Treaty.”
4.3 Title of the Invention
The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.
4.4 Names and Addresses
- (a) Names of natural persons shall be indicated by the person’s family name and given name(s), the family name being indicated before the given name(s).
- (b) Names of legal entities shall be indicated by their full, official designations.
- (c) Addresses shall be indicated in such a way as to satisfy the customary requirements for prompt postal delivery at the indicated address and, in any case, shall consist of all the relevant administrative units up to, and including, the house number, if any. Where the national law of the designated State does not require the indication of the house number, failure to indicate such number shall have no effect in that State. In order to allow rapid communication with the applicant, it is recommended to indicate any teleprinter address, telephone and facsimile machine numbers, or corresponding data for other like means of communication, of the applicant or, where applicable, the agent or the common representative.
- (d) For each applicant, inventor, or agent, only one address may be indicated, except that, if no agent has been appointed to represent the applicant, or all of them if more than one, the applicant or, if there is more than one applicant, the common representative, may indicate, in addition to any other address given in the request, an address to which notifications shall be sent.
4.5 The Applicant
- (a) The request shall indicate:
- (i) the name,
- (ii) the address, and
- (iii) the nationality and residence
of the applicant or, if there are several applicants, of each of them.
- (b) The applicant’s nationality shall be indicated by the name of the State of which he is a national.
- (c) The applicant’s residence shall be indicated by the name of the State of which he is a resident.
- (d) The request may, for different designated States, indicate different applicants. In such a case, the request shall indicate the applicant or applicants for each designated State or group of designated States.
- (e) Where the applicant is registered with the national Office that is acting as receiving Office, the request may indicate the number or other indication under which the applicant is so registered.
4.6 The Inventor
- (a) Where Rule 4.1(a)(iv) or (c)(i) applies, the request shall indicate the name and address of the inventor or, if there are several inventors, of each of them.
- (b) If the applicant is the inventor, the request, in lieu of the indication under paragraph (a), shall contain a statement to that effect.
- (c) The request may, for different designated States, indicate different persons as inventors where, in this respect, the requirements of the national laws of the designated States are not the same. In such a case, the request shall contain a separate statement for each designated State or group of States in which a particular person, or the same person, is to be considered the inventor, or in which particular persons, or the same persons, are to be considered the inventors.
4.7 The Agent
- (a) If an agent is appointed, the request shall so indicate, and shall state the agent’s name and address.
- (b) Where the agent is registered with the national Office that is acting as receiving Office, the request may indicate the number or other indication under which the agent is so registered.
4.8 Common Representative
If a common representative is appointed, the request shall so indicate.
4.9 Designation of States; Kinds of Protection; National and Regional Patents
- (a) The filing of a request shall constitute:
- (i) the designation of all Contracting States that are bound by the Treaty on the international filing date;
- (ii) an indication that the international application is, in respect of each designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State;
- (iii) an indication that the international application is, in respect of each designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless Article 45(2) applies, a national patent.
- (b) Notwithstanding paragraph (a)(i), if, on October 5, 2005, the national law of a Contracting State provides that the filing of an international application which contains the designation of that State and claims the priority of an earlier national application having effect in that State shall have the result that the earlier national application ceases to have effect with the same consequences as the withdrawal of the earlier national application, any request in which the priority of an earlier national application filed in that State is claimed may contain an indication that the designation of that State is not made, provided that the designated Office notifies the International Bureau by January 5, 2006, that this paragraph shall apply in respect of designations of that State and that the notification is still in force on the international filing date. The information received shall be promptly published by the International Bureau in the Gazette.
4.10 Priority Claim
- (a) Any declaration referred to in
Article 8(1)
(“priority claim”) may claim the
priority of one or more earlier applications filed either in or for any
country party to the Paris Convention for the Protection of Industrial
Property or in or for any Member of the World Trade Organization that is not
party to that Convention. Any priority claim shall be made in the request;
it shall consist of a statement to the effect that the priority of an
earlier application is claimed and shall indicate:
- (i) the date on which the earlier application was filed;
- (ii) the number of the earlier application;
- (iii) where the earlier application is a national application, the country party to the Paris Convention for the Protection of Industrial Property or the Member of the World Trade Organization that is not party to that Convention in which it was filed;
- (iv) where the earlier application is a regional application, the authority entrusted with the granting of regional patents under the applicable regional patent treaty;
- (v) where the earlier application is an international application, the receiving Office with which it was filed.
- (b) In addition to any indication required under paragraph
(a)(iv) or (v):
- (i) where the earlier application is a regional application or an international application, the priority claim may indicate one or more countries party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed;
- (ii) where the earlier application is a regional application and at least one of the countries party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim shall indicate at least one country party to that Convention or one Member of that Organization for which that earlier application was filed.
- (c) For the purposes of paragraphs (a) and (b), Article 2(vi) shall not apply.
4.11 Reference to Continuation or Continuation-in-Part, or Parent Application or Grant
- (a) If:
- (i) the applicant intends to make an indication under Rule 49bis.1(a) or (b) of the wish that the international application be treated, in any designated State, as an application for a patent of addition, certificate of addition, inventor’s certificate of addition or utility certificate of addition; or
- (ii) the applicant intends to make an indication under Rule 49bis.1(d) of the wish that the international application be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application;
the request shall so indicate and shall indicate the relevant parent application or parent patent or other parent grant.
- (b) The inclusion in the request of an indication under paragraph (a) shall have no effect on the operation of Rule 4.9 .
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 results of an earlier international, international-type or national search carried out by the same or another International Searching Authority or by a national Office (“earlier search”):
- (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 request may, where applicable, contain a statement to the effect that the international application is the same, or substantially the same, as the application in respect of which the earlier search was carried out, or that the international application is the same, or substantially the same, as that earlier application except that it is filed in a different language.
4.13 – 4.14 [Deleted]
4.14 bis Choice of International Searching Authority
If two or more International Searching Authorities are competent for the searching of the international application, the applicant shall indicate his choice of International Searching Authority in the request.
4.15 Signature
The request shall be signed by the applicant or, if there is more than one applicant, by all of them.
4.16 Transliteration or Translation of Certain Words
- (a) Where any name or address is written in characters other than those of the Latin alphabet, the same shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English. The applicant shall decide which words will be merely transliterated and which words will be so translated.
- (b) The name of any country written in characters other than those of the Latin alphabet shall also be indicated in English.
4.17 Declarations Relating to National Requirements Referred to in Rule 51 bis.1(a)(i) to (v)
The request may, for the purposes of the national law applicable in one or more designated States, contain one or more of the following declarations, worded as prescribed by the Administrative Instructions:
- (i) a declaration as to the identity of the inventor, as referred to in Rule 51bis.1(a)(i) ;
- (ii) a declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent, as referred to in Rule 51bis.1(a)(ii) ;
- (iii) a declaration as to the applicant’s entitlement, as at the international filing date, to claim priority of the earlier application, as referred to in Rule 51bis.1(a)(iii) ;
- (iv) a declaration of inventorship, as referred to in Rule 51bis.1(a)(iv) , which shall be signed as prescribed by the Administrative Instructions;
- (v) a declaration as to non-prejudicial disclosures or exceptions to lack of novelty, as referred to in Rule 51bis.1(a)(v) .
4.18 Statement of Incorporation by Reference
Where the international application, on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office, claims the priority of an earlier application, the request may contain a statement that, where an element of the international application referred to in Article 11(1)(iii)(d) or (e) , or a part of the description, claims or drawings referred to in Rule 20.5(a) , or an element or part of the description, claims or drawings referred to in Rule 20.5bis(a) is not otherwise contained in the international application but is completely contained in the earlier application, that element or part is, subject to confirmation under Rule 20.6 , incorporated by reference in the international application for the purposes of Rule 20.6 . Such a statement, if not contained in the request on that date, may be added to the request if, and only if, it was otherwise contained in, or submitted with, the international application on that date.
4.19 Additional Matter
- (a) The request shall contain no matter other than that specified in Rules 4.1 to 4.18 , provided that the Administrative Instructions may permit, but cannot make mandatory, the inclusion in the request of any additional matter specified in the Administrative Instructions.
- (b) If the request contains matter other than that specified in Rules 4.1 to 4.18 or permitted under paragraph (a) by the Administrative Instructions, the receiving Office shall ex officio delete the additional matter.
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