Question 1

What is an "earlier search" in the context of PCT applications?

Accepted Answer

An "earlier search" in the context of PCT applications refers to a previous international, international-type, or national search carried out by the same or another International Searching Authority (ISA) or by a national Office. Applicants can request the ISA to consider the results of these earlier searches when conducting the international search for their current PCT application.

According to MPEP 1819, PCT Rule 4.12 states:

"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")..."

This provision allows applicants to potentially streamline the search process and improve the quality of the international search by leveraging previous search results.

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Question 2

What are Article 34 Amendments in the context of international patent applications?

Accepted Answer

Article 34 Amendments are changes made to an international patent application during the international preliminary examination phase (Chapter II) under the Patent Cooperation Treaty (PCT). These amendments are filed with the International Preliminary Examining Authority (IPEA).

According to MPEP 1893.01(a)(3), "Amendments to the international application that were properly made under PCT Article 34 during the international preliminary examination phase (i.e., Chapter II) will be annexed by the International Preliminary Examining Authority to the international preliminary examination report (IPER) and communicated to the elected Offices."

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Question 3

What is the '371(c) date' in a national stage application?

Accepted Answer

The '371(c) date' in a national stage application refers to the date of entry into the national phase in the United States. This date is determined by the receipt of certain items required under 35 U.S.C. 371(c). The MPEP explains:

"Because the date of entry is dependent upon receipt of certain items required under 35 U.S.C. 371(c), this date is also referred to as the "371(c) date." The 371(c) date, not the international filing date, is the date that appears in the "Filing or 371(c) Date" box on the filing receipt and the application data sections of the Patent Data Portal and private PAIR."

It's important to note that the 371(c) date is different from the international filing date and is used for various administrative purposes within the USPTO.

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Question 4

How can an applicant ensure they've deposited biological material with an acceptable institution for PCT applications?

Accepted Answer

To ensure that biological material is deposited with an acceptable institution for PCT applications, applicants should:

Consult the PCT Gazette or Annex L of the PCT Applicant's Guide, which list notified depositary institutions.
Choose a depositary institution that has been notified by the designated Offices of interest.

The MPEP states: "A reference to a deposit cannot be disregarded by a designated Office for reasons pertaining to the institution with which the biological material was deposited if the deposit referred to is one made with a depositary institution notified by that Office."

Information on notified institutions is published by the International Bureau in the PCT Gazette.

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Question 5

What are Designated Offices (DO) and Elected Offices (EO) in the PCT system?

Accepted Answer

Designated Offices (DO) and Elected Offices (EO) are national or regional patent offices that process international applications in the national phase of the PCT procedure. According to the MPEP, The designated Office is the national Office (for example, the USPTO) acting for the state or region designated under Chapter I. Similarly, the elected Office is the national Office acting for the state or region elected under Chapter II.

Key points about Designated and Elected Offices:

Designated Offices handle applications under PCT Chapter I
Elected Offices handle applications under PCT Chapter II (if international preliminary examination is requested)
Applicants must complete national stage entry requirements within specified time limits
Most offices now allow 30 months from the priority date for national stage entry

The MPEP states, PCT Article 22(1) was amended, effective April 1, 2002, to specify that a copy of the international application, a translation thereof (as prescribed), and the national fee are due to the designated Office not later than at the expiration of 30 months from the priority date.

It's important to note that some offices may have different time limits, and applicants should check the specific requirements for each country or region where they seek protection.

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Question 6

What is a general power of attorney in PCT applications?

Accepted Answer

A general power of attorney in PCT applications is a document that authorizes an agent or common representative to act on behalf of the applicant(s) in multiple international applications. MPEP 1807 provides guidance on this topic:

"A general power of attorney enables a practitioner to represent the applicant in all international applications filed by the applicant, provided that the practitioner is indicated in the request as the agent. The original general power of attorney must be filed with the receiving Office if the power is applicable to an agent or common representative who signs the request (Rule 90.5)."

Key points about general powers of attorney in PCT applications:

They apply to multiple applications filed by the same applicant
The original document must be filed with the receiving Office
It must be indicated in the request if the agent or common representative signing the request is acting under the general power of attorney
Copies may be submitted with subsequent applications instead of the original

This tool simplifies the process for applicants who regularly file international applications, as it eliminates the need to submit separate powers of attorney for each application.

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Question 7

Which International Searching Authorities can perform a Supplementary International Search?

Accepted Answer

Not all International Searching Authorities (ISAs) can perform a Supplementary International Search (SIS). According to PCT Rule 45bis.9(a):

An International Searching Authority shall be competent to carry out supplementary international searches if its preparedness to do so is stated in the applicable agreement under Article 16(3)(b), subject to any limitations and conditions set out in that agreement.

However, there is an important restriction outlined in PCT Rule 45bis.9(b):

The International Searching Authority carrying out the international search under Article 16(1) in respect of an international application shall not be competent to carry out a supplementary international search in respect of that application.

This means that the ISA that performed the main international search cannot be chosen to perform the SIS for the same application.

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Question 8

What happens if an abstract is missing from a PCT application?

Accepted Answer

If an abstract is missing from a PCT application, the following process occurs:

The absence of an abstract does not affect the granting of a filing date.
The Receiving Office will notify the applicant and set a time limit to furnish the abstract.
If the applicant fails to provide the abstract within the set time limit, the International Searching Authority will establish one.
Failure to furnish an abstract within one month of notification may result in the application being declared withdrawn.

MPEP 1826 states: "Lack of an abstract upon filing of an international application will not affect the granting of a filing date. However, failure to furnish an abstract within one month from the date of the notification by the Receiving Office will result in the international application being declared withdrawn."

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Question 9

How can I restore the right of priority in an international patent application?

Accepted Answer

To restore the right of priority in an international patent application, you need to submit a request under PCT Rule 26bis.3, 37 CFR 1.55, or 37 CFR 1.78. These requests are decided by the Director of International Patent Legal Administration. According to MPEP 1002.02(p):

"Requests under PCT Rule 26bis.3, 37 CFR 1.55, or 37 CFR 1.78 to restore the right of priority or domestic benefit in an international application filed under the PCT, a national stage application under 35 U.S.C. 371, or in an application which claims the benefit of or priority to an international application filed under the PCT."

When submitting your request, you should:

Explain why the priority claim was not filed within the required time period
Provide evidence that the delay was unintentional or that you acted with due care, depending on the applicable standard
Pay any required fees
Submit the request within the specified time limits

The USPTO will review your request and determine whether to restore the right of priority based on the evidence provided and the specific circumstances of your application.

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Question 10

What is a Demand in the context of the Patent Cooperation Treaty (PCT)?

Accepted Answer

A Demand is a request for international preliminary examination under Chapter II of the Patent Cooperation Treaty (PCT). As stated in MPEP 1864: "The use of the term 'Demand' distinguishes Chapter II from the 'Request' under Chapter I." The Demand allows applicants to have their international application examined and potentially obtain a positive international preliminary examination report.

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Question 11

Can the certificate of mailing by first class mail procedure be used for PCT applications?

Accepted Answer

The certificate of mailing by first class mail procedure (37 CFR 1.8) cannot be used for filing papers during the international stage of PCT applications if the date of deposit is to be considered as the filing date. MPEP 1834 clearly states:

"It is important to understand that the 37 CFR 1.8 certificate of mailing procedure CANNOT be used for filing any papers during the international stage if the date of deposit is desired."

If the 37 CFR 1.8 procedure is used, the paper will be accorded the date of receipt at the USPTO, not the date of mailing. This could result in late filing if the paper is not physically received by the due date. Therefore, applicants should use other methods, such as Priority Mail Express®, for time-sensitive PCT filings.

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Question 12

How should chemical formulae be included in a PCT application abstract?

Accepted Answer

When including chemical formulae in a PCT application abstract, follow these guidelines:

Include the chemical formula that best characterizes the invention.
Choose the most characteristic formula among all formulae contained in the application.

MPEP 1826 states: "Where applicable, the chemical formula which, among all the formulae contained in the international application, best characterizes the invention." This means you should select the formula that most clearly represents the inventive concept.

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Question 13

How does withdrawing a priority claim affect an international patent application?

Accepted Answer

Withdrawing a priority claim can have significant effects on an international patent application, as outlined in PCT Rule 90bis.3 and MPEP 1859:

Priority claims can be withdrawn up to 30 months from the priority date.
Withdrawal of a priority claim may change the priority date of the application.
Time limits computed from the original priority date that haven't expired will be recalculated based on the new priority date.
International publication may be postponed by withdrawing the priority claim before publication.

The MPEP states: "Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the original priority date and which has not yet expired—for example, the time limit before which processing in the national phase cannot start—is computed from the priority date resulting from the change."

However, it's important to note: "if the notice of withdrawal reaches the International Bureau after the completion of the technical preparations for international publication, the International Bureau may proceed with the international publication on the basis of the time limit for international publication as computed from the original priority date."

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Question 14

What is the Global Dossier Public Access and how is it useful for patent research?

Accepted Answer

The Global Dossier Public Access is a tool provided by the USPTO that allows access to file histories of related patent applications. It is particularly useful for researching international applications and applications from WIPO-CASE participating offices.

According to the MPEP: If the examiner wishes to obtain a copy of a specification from an international application filed under the Patent Cooperation Treaty (PCT) or a patent application from a WIPO-CASE participating Office, the Global Dossier Public Access is a tool which provides online access to the file histories of related applications.

This tool enhances the ability of patent examiners and researchers to access and review related international patent documents efficiently.

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Question 15

What is the importance of the title in a PCT national phase application?

Accepted Answer

The title of the invention in a PCT national phase application is important for several reasons:

It provides a concise description of the invention, helping examiners and the public quickly understand the subject matter.
It is used in official USPTO documents, such as the filing receipt, which is an important record of the application.
It may influence the classification and routing of the application within the USPTO.
It appears on the published patent document if the application is granted.

The MPEP emphasizes the importance of the title by detailing the process for determining it: In the absence of an application data sheet (37 CFR 1.76) or preliminary amendment changing the title, the Office will use the title of the invention that appears on the first page of the description of the published international application (if published under PCT Article 21 in English) or the title that appears on the first page of the description of the English translation of the international application (if not published under PCT Article 21 in English) in preparing the official filing receipt.

This detailed process underscores the significance of the title in the patent application and examination process.

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Question 16

What is the relevance of the novelty definition to the written opinion of the International Searching Authority?

Accepted Answer

The novelty definition provided in PCT Article 33(2) is also applicable to the written opinion of the International Searching Authority. This is explicitly stated in PCT Rule 43bis.1(b), which states that the provisions of Article 33(2)-(6) apply mutatis mutandis to the written opinion.

This means that when the International Searching Authority prepares its written opinion on the patentability of an invention, it uses the same criteria for novelty as defined in PCT Article 33(2).

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Question 17

How is the residence or nationality of an applicant determined for PCT purposes?

Accepted Answer

The determination of an applicant's residence or nationality for PCT purposes is outlined in MPEP 1864.02, which references PCT Rule 54.1. The process is as follows:

Generally, residence or nationality is determined according to PCT Rule 18.1(a) and (b).
In certain circumstances, the International Preliminary Examining Authority may request the receiving Office or the national Office to decide on the applicant's claimed residence or nationality.
If such a request is made, the applicant is informed and given an opportunity to submit arguments directly to the Office concerned.

The MPEP states: "The International Preliminary Examining Authority shall, in the circumstances specified in the Administrative Instructions, request the receiving Office or, where the international application was filed with the International Bureau as receiving Office, the national Office of, or acting for, the Contracting State concerned to decide the question whether the applicant is a resident or national of the Contracting State of which he claims to be a resident or national."

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Question 18

What is the "priority date" in the context of the Patent Cooperation Treaty (PCT)?

Accepted Answer

The priority date is a crucial concept in the Patent Cooperation Treaty (PCT) system. According to MPEP 1842, "Time limits under the PCT are measured from the 'priority date' of the application." The MPEP further explains:

"The priority date for the purposes of computing time limits is defined in PCT Article 2(xi). Where an international application does not contain any priority claim under PCT Article 8, the international filing date is considered to be the priority date."

In other words, the priority date is typically the filing date of the earliest application from which priority is claimed. If no priority is claimed, the international filing date becomes the priority date for PCT time limit calculations.

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Question 19

Can I claim priority from an application filed in a non-Paris Convention country?

Accepted Answer

Yes, you can claim priority from an application filed in a country that is not party to the Paris Convention, as long as that country is a member of the World Trade Organization (WTO). The MPEP states:

"Under PCT Rule 4.10, an applicant may claim the priority of an application filed in or for a State which is a Member of the World Trade Organization (WTO), even if that State is not party to the Paris Convention for the Protection of Industrial Property (Paris Convention)."

However, it's important to note that "a PCT Contracting State that is not a Member of the WTO would not be obliged to recognize the effects of such a priority claim." This means that while you can make the claim, its recognition may be limited in certain jurisdictions.

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Question 20

How are figures selected for inclusion with the abstract in a PCT application?

Accepted Answer

The selection of figures for inclusion with the abstract in a PCT application follows these guidelines:

The applicant may suggest a figure in the request form (PCT Rule 3.3(a)(iii)).
The International Searching Authority (ISA) may select a different figure if it better characterizes the invention.
If no figure is useful for understanding the abstract, the ISA may notify that no figure should be published with the abstract.

MPEP 1826 states: "If the International Searching Authority finds that a figure or figures other than that figure or those figures suggested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall [...] indicate the figure or figures which should accompany the abstract when the latter is published by the International Bureau."

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Question 21

What are the fees associated with a Supplementary International Search?

Accepted Answer

There are two main fees associated with a Supplementary International Search (SIS):

Supplementary search handling fee: This fee covers the costs of the International Bureau (IB). According to PCT Rule 45bis.2(a), The supplementary search request shall be subject to the payment of a fee for the benefit of the International Bureau ("supplementary search handling fee") as set out in the Schedule of Fees.
Supplementary search fee: This fee is set by each Supplementary International Searching Authority (SISA). As stated in PCT Rule 45bis.3(a), Each International Searching Authority carrying out supplementary international searches may require that the applicant pay a fee ("supplementary search fee") for its own benefit for carrying out such a search.

Both fees must be paid to the International Bureau in Swiss francs within one month of filing the request for SIS. Applicants from certain States may be eligible for a 90% reduction in the supplementary search handling fee.

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Question 22

What are the translation requirements for entering the U.S. national stage?

Accepted Answer

The translation requirements for entering the U.S. national stage are as follows:

1. If the international application was not filed in English and was not published under PCT Article 21(2) in English, a translation of the application into English is required.

2. For international applications with a filing date on or after July 1, 2022:

"An English translation is required for any sequence listing in XML format ("Sequence Listing XML") containing non-English language values for any language-dependent free text qualifiers in accordance with 37 CFR 1.831 through 1.834." (37 CFR 1.495(c))

3. For international applications with a filing date before July 1, 2022:

"A sequence listing need not be translated if the sequence listing complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b)." (37 CFR 1.495(c))

4. The translation must be a complete and accurate translation of the international application as filed, including any changes accepted under PCT Rules 26 or 91.

5. A processing fee is required for accepting a translation after 30 months from the priority date.

Failure to provide a timely and proper translation may result in the application being held abandoned.

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Question 23

How does unity of invention differ from restriction practice?

Accepted Answer

Unity of invention and restriction practice are distinct concepts applied to different types of patent applications:

Unity of invention applies to international applications (both Chapter I and II) and national stage applications submitted under 35 U.S.C. 371.
Restriction practice, as outlined in 37 CFR 1.141 - 1.146, applies to U.S. national applications filed under 35 U.S.C. 111(a).

The MPEP states: "Examiners are reminded that unity of invention (not restriction practice pursuant to 37 CFR 1.141 - 1.146) is applicable in international applications (both Chapter I and II) and in national stage applications submitted under 35 U.S.C. 371."

It's important to note that restriction practice still applies to U.S. national applications filed under 35 U.S.C. 111(a), even if they claim benefit to an earlier international application or national stage application.

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Question 24

What fees are associated with late submission of a "Sequence Listing XML" in PCT applications?

Accepted Answer

When submitting a "Sequence Listing XML" in response to a notice from the United States International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), applicants are required to pay a late furnishing fee. According to MPEP 2414.05:

"In response to such a requirement, the late furnishing fee set forth in § 1.445(a)(5) is also required."

This fee is in addition to the submission of the "Sequence Listing XML" and a statement that the information does not go beyond the original disclosure. The specific amount of the fee can be found in 37 CFR 1.445(a)(5) and is subject to change, so applicants should consult the current fee schedule on the USPTO website.

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