What subject matter is exempt from international search requirements?
According to MPEP 1843.02, certain subject matter is not required to be searched by International Searching Authorities. These include: Scientific and mathematical theories Plant or animal varieties or essentially biological processes for their production Schemes, rules, or methods of doing business, performing purely mental acts, or playing games Methods for treatment of the human or…
Read MoreWhat types of petitions are decided by the Director of International Patent Legal Administration?
The Director of International Patent Legal Administration decides various types of petitions related to international patent applications and national stage applications. These include: Petitions to withdraw notices of acceptance or filing receipts for national stage applications under 35 U.S.C. 371 Petitions for withdrawal of attorney or agent of record in PCT proceedings Petitions for access…
Read MoreWhat role does the International Bureau play in PCT applications filed with it as the receiving Office?
The MPEP 1864.02 addresses the role of the International Bureau when it acts as the receiving Office for PCT applications. Specifically, it cites PCT Rule 54.3, which states: “Where the international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii), the International Bureau shall, for the purposes of Article 31(2)(a), be…
Read MoreWhat actions does the International Bureau take after receiving notification of a Demand?
After receiving notification of a Demand for International Preliminary Examination, the International Bureau takes two important actions, as outlined in MPEP 1869: “The International Bureau in turn notifies each elected Office of their election and also notifies the applicant that such notification has been made.” To break this down: The International Bureau notifies each elected…
Read MoreWhat happens if an applicant is not entitled to file a demand for international preliminary examination?
According to MPEP 1864.02, which cites PCT Rule 54.4, if an applicant does not have the right to file a demand for international preliminary examination, the following occurs: “If the applicant does not have the right to make a demand or, in the case of two or more applicants, if none of them has the…
Read MoreHow does an examiner indicate the use of earlier search results in an international search report?
When an examiner takes into account the results of an earlier search while preparing an international search report, there is no specific requirement to indicate this in the report. According to MPEP 1852: “The forms used in preparing the international search report do not provide for indicating either that the results of an earlier search…
Read MoreHow are applicants indicated in a PCT demand for international preliminary examination?
The MPEP 1864.02 provides guidance on how applicants should be indicated in a PCT demand for international preliminary examination: Only applicants for the elected States are required to be indicated in the Demand. The required information for each applicant includes name, address, telephone number, facsimile machine number, nationality, and residence. These requirements are the same…
Read MoreHow does unclear description or inadequate support affect international preliminary examination?
According to MPEP 1874, unclear description or inadequate support can significantly impact international preliminary examination. The MPEP states: “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.” This means that…
Read MoreWhat is Form PCT/IPEA/405 and when is it used?
Form PCT/IPEA/405, also known as the “Invitation to restrict or pay additional fees,” is used in the international patent examination process. It is issued when an examiner determines that an international application lacks unity of invention. According to MPEP 1875.01, this form is used to “invite the applicant, at his/her option, to restrict the claims…
Read MoreWhat actions should an examiner take if claims are unclear or inadequately supported?
According to MPEP 1874, if an examiner finds that claims are unclear or inadequately supported, they should take the following actions: Not proceed with the examination on those specific claims Inform the applicant of this opinion and provide reasons Check the appropriate box on the examination form The MPEP states: “The examiner should check the…
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