When did IP Australia become available as an International Searching Authority for U.S. applicants?

IP Australia became available as an International Searching Authority (ISA) for PCT applications filed by U.S. nationals or residents on November 1, 2008. This applies to applications filed in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. As stated in the MPEP, Since November…

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What is the relationship between inventive step and non-obviousness in PCT applications?

In the context of PCT applications, inventive step and non-obviousness are essentially equivalent concepts. This is evident from the language used in MPEP 1878.01(a)(2), which refers to: “For the purposes of Article 33(3), the relevant date for the consideration of inventive step (non-obviousness) is the date prescribed in Rule 64.1.” The parenthetical use of “non-obviousness”…

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How are international patent applications considered as prior art in the U.S.?

International patent applications can be considered as prior art in the U.S. under specific conditions. MPEP 901.03 states: “A U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under pre-AIA 35 U.S.C. 102(e) as of the international…

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How are INID Codes used for international patent applications under the PCT?

INID Codes are used to identify specific information related to international patent applications filed under the Patent Cooperation Treaty (PCT). Key codes include: (86) Filing data of the PCT international application (87) Publication data of the PCT international application (88) Date of deferred publication of the search report The MPEP provides guidance on how to…

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How 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…

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What is a “general power of attorney” in international patent applications?

A “general power of attorney” in international patent applications is a document that appoints an agent to represent the applicant in relation to any international application that may be filed by that applicant. This is explained in MPEP 1807, which cites PCT Rule 90.5: “Appointment of an agent in relation to a particular international application…

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When did the EPO become available as an International Searching Authority for U.S. applicants?

The European Patent Office (EPO) became available as an International Searching Authority (ISA) for PCT applications filed by U.S. nationals or residents on October 1, 1982. MPEP 1840.01 specifically states: “Since October 1, 1982, the European Patent Office (EPO) has been available as an International Searching Authority for PCT applications filed by U.S. nationals or…

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What is the role of the European Patent Office as an International Searching Authority?

The European Patent Office (EPO) has been available as an International Searching Authority (ISA) for PCT applications filed by U.S. nationals or residents since October 1, 1982. This applies to applications filed in the U.S. Patent and Trademark Office (USPTO) as receiving Office or in the International Bureau (IB) as receiving Office. As stated in…

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How does the appointment of an agent or common representative affect earlier appointments?

The appointment of an agent, attorney, or common representative in an international patent application can have an impact on earlier appointments. According to MPEP 1807, which cites 37 CFR 1.455(a): “The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated“ This means that when a new…

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What are the responsibilities of the Director of International Patent Legal Administration regarding PCT applications?

The Director of International Patent Legal Administration has several responsibilities regarding PCT (Patent Cooperation Treaty) applications, including: Deciding petitions to withdraw the Notice of Acceptance and the Notice of Withdrawal for international applications Deciding petitions for restoration of the right of priority under PCT Rule 26bis.3 Deciding petitions to excuse applicant’s failure to act within…

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