How can I request a refund for fees paid in an international patent application?
To request a refund for fees paid in an international patent application or a national stage application, you need to submit a request under 37 CFR 1.26 or 1.446 to the Director of International Patent Legal Administration. As stated in MPEP 1002.02(p): “Requests under 37 CFR 1.26 or 1.446 for refund of fees paid in…
Read MoreWhat is the role of the International Bureau (IB) in the PCT process?
The International Bureau (IB), operated by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, plays a central coordinating role in the PCT process. According to the MPEP, The basic functions of the International Bureau (IB) are to maintain the master file of all international applications and to act as the publisher and central coordinating…
Read MoreWhat is the role of the International Bureau in the PCT election process?
The International Bureau (IB) plays a crucial role in the PCT election process, as outlined in MPEP 1881. Its main responsibilities include: Notifying elected Offices of the demand and elections Sending the notification to elected Offices along with the Article 20 communication Promptly notifying elections made after the initial communication Informing the applicant in writing…
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 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 MoreWhat happens if I file an international application with the USPTO but I’m not eligible?
If you file an international application with the USPTO as the Receiving Office but you’re not eligible (i.e., you’re not a resident or national of the United States), the application may be forwarded to the International Bureau as Receiving Office. The MPEP explains: “PCT Rule 19.4 provides for transmittal of an international application to the…
Read MoreWhat is industrial applicability in the context of international patent applications?
Industrial applicability is a key criterion in the assessment of international patent applications. According to PCT Article 33(4), industrial applicability is defined as follows: “For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense)…
Read MoreWhat are the requirements for describing the industrial applicability of an invention in a patent application?
Describing the industrial applicability of an invention is an important aspect of a patent application, especially for international applications under the Patent Cooperation Treaty (PCT). The MPEP 1823 provides guidance on this matter: “The description should indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which…
Read MoreHow should the status of claims be indicated in a national phase application amendment?
The status of claims in a national phase application amendment should be indicated using specific identifiers. According to the MPEP: “The status of every claim in such listing must be indicated after its claim number by one of the following identifiers in a parenthetical expression: (Original), (Currently Amended), (Canceled), (Withdrawn), (Previously Presented), (New), and (Not…
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…
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