Are international patent applications required to incorporate “Sequence Listings” by reference?
No, international patent applications during the international stage are exempt from the requirement to incorporate “Sequence Listings” by reference. This exemption is specifically stated in 37 CFR 1.823(b)(2): “37 CFR 1.823(b)(2) specifically exempts international applications during the international stage from the incorporation by reference requirement in 37 CFR 1.823(b)(1).“ This means that while domestic U.S.…
Read MoreHow are international applications treated under pre-AIA 35 U.S.C. 102(e)?
The treatment of international applications under pre-AIA 35 U.S.C. 102(e) depends on their filing date and other factors: For international applications filed on or after November 29, 2000: If the application meets three conditions: (1) international filing date on or after November 29, 2000, (2) designated the United States, and (3) published under PCT Article…
Read MoreHow does the publication of an international application affect the protest submission period?
The publication of an international application under the Patent Cooperation Treaty (PCT) does not affect the protest submission period for national stage applications. According to MPEP 1901.04: “Publication under the Patent Cooperation Treaty (PCT) by the World Intellectual Property Organization (WIPO) of an international application would not trigger the end of the 37 CFR 1.291(b)…
Read MoreWhat is the critical reference date for international applications?
For international applications, the critical reference date depends on whether the international application was filed before or on/after November 29, 2000. MPEP 2136.03 provides specific guidance: “If the international application has an international filing date prior to November 29, 2000, the international application was not published under 35 U.S.C. 122(b) by WIPO. Any U.S. patent…
Read MoreWhat are the consequences of failing to timely provide a required “Sequence Listing XML”?
If an applicant fails to timely provide a required “Sequence Listing XML” in response to a notice from the United States International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), there are significant consequences for the search and examination of the application. MPEP 2414.05 states: “If the applicant fails to timely provide the required…
Read MoreHow do AIA 35 U.S.C. 102(b)(1) exceptions affect international patent applications?
The AIA 35 U.S.C. 102(b)(1) exceptions have important implications for international patent applications, particularly in relation to the Patent Cooperation Treaty (PCT) and Paris Convention applications. According to MPEP 2153: “AIA 35 U.S.C. 102(d) defines ‘effective filing date’ for purposes of determining whether a particular disclosure qualifies as prior art under AIA 35 U.S.C. 102(a)(1)…
Read MoreWhat is a written opinion in the context of international patent searches?
A written opinion is an essential document produced alongside the international search report during the PCT application process. According to MPEP 1843, the written opinion serves several important purposes: It indicates whether the claimed invention appears to be novel, involve an inventive step (non-obvious), and be industrially applicable. It points out any defects in the…
Read MoreCan I withdraw specific designations from my international patent application?
Yes, you can withdraw specific designations from your international patent application. This process is governed by PCT Rule 90bis.2 and outlined in MPEP 1859. Here are the key points: You can withdraw the designation of any designated State up to 30 months from the priority date. Withdrawal of a designation that has been elected also…
Read MoreHow does WIPO Standard ST.26 differ from WIPO Standard ST.25 for sequence listings?
WIPO Standard ST.26 and ST.25 are different standards for sequence listings in patent applications: ST.26 applies to applications filed on or after July 1, 2022. ST.25 applies to applications filed before July 1, 2022. ST.26 requires sequence listings in XML format, while ST.25 uses a different format. ST.26 allows for a single, internationally acceptable sequence…
Read MoreWho needs to sign an international patent application?
According to MPEP 1820, an international patent application must be signed by the applicant(s). Specifically: “Pursuant to PCT Rule 4.15, the international application must be signed in Box No. X of the request by the applicant, or, where there are two or more applicants, by all of them.” However, it’s important to note that: “Under…
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