MPEP § 1874 — Determination if International Preliminary Examination Is Required and Possible (Annotated Rules)
§1874 Determination if International Preliminary Examination Is Required and Possible
This page consolidates and annotates all enforceable requirements under MPEP § 1874, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Determination if International Preliminary Examination Is Required and Possible
This section addresses Determination if International Preliminary Examination Is Required and Possible. Contains: 1 requirement and 1 guidance statement.
Key Rules
Article 19 Amendment Scope
If it is found that certain claims of an international application relate to subject matter for which no international preliminary examination is required, check the appropriate box on a Form PCT/IPEA/408 or a Form PCT/IPEA/409, as appropriate (see MPEP § 1860). It should be noted that subject matter which is normally examined under U.S. national procedure should also be examined as an International Preliminary Examining Authority.
35 U.S.C. 102 – Novelty / Prior Art
The examiner should check the appropriate box if it is found that the description, claims or drawings are so unclear, or the claims are so inadequately supported by the description that no opinion could be formed as to the novelty, inventive step (nonobviousness) and industrial applicability of the claimed invention.
Citations
| Primary topic | Citation |
|---|---|
| Article 19 Amendment Scope | MPEP § 1860 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1874 — Determination if International Preliminary Examination Is Required and Possible
Source: USPTO1874 Determination if International Preliminary Examination Is Required and Possible [R-07.2015]
PCT Article 34
Procedure Before the International Preliminary Examining Authority
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- (4)
- (a) If the International Preliminary Examining Authority
considers
- (i) that the international application relates to a subject matter on which the International Preliminary Examining Authority is not required, under the Regulations, to carry out an international preliminary examination, and an international preliminary examination, and in the particular case decides not to carry out such examination, or
- (ii) that the description, the claims, or the drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obviousness), or industrial applicability, of the claimed invention, the said authority shall not go into the questions referred to in Article 33(1) and shall inform the applicant of this opinion and the reasons therefor.
- (b) If any of the situations referred to in subparagraph (a) is found to exist in, or in connection with, certain claims only, the provisions of that subparagraph shall apply only to the said claims.
- (a) If the International Preliminary Examining Authority
considers
There are instances where international preliminary examination is not required because of the nature of the subject matter claimed and also because the claims are so indefinite that no examination is possible. Such instances should seldom occur, especially since most problems of this nature would have already been discovered and indicated at the time of the international search.
If it is found that certain claims of an international application relate to subject matter for which no international preliminary examination is required, check the appropriate box on a Form PCT/IPEA/408 or a Form PCT/IPEA/409, as appropriate (see MPEP § 1860). It should be noted that subject matter which is normally examined under U.S. national procedure should also be examined as an International Preliminary Examining Authority.
The examiner should check the appropriate box if it is found that the description, claims or drawings are so unclear, or the claims are so inadequately supported by the description that no opinion could be formed as to the novelty, inventive step (nonobviousness) and industrial applicability of the claimed invention.
Subject matter not searched under Chapter I will not be the subject of a preliminary examination under Chapter II. This is so even if claims which were not searched under Chapter I are modified to be acceptable for examination.