A Patent Cooperation Treaty (PCT) application enables a U.S. applicant to file one international application (known as the international phase) to the U.S. and have that international application acknowledged as a regularly nationally filed application (known as the national phase) in as many member PCT countries as he or she designates.

An international PCT application goes through the international phase initially. This includes:
Sending in the application and having the Receiving Office process it.
Establishing an International Search Report and Written Opinion (for applications filed on or after January 1, 2004) by one of the "International Search Authorities".
Publishing the international application along with the international search report.
Establishing an international preliminary examination if desired.

Subsequently, the national phase will begin and the application is examined in the same manner as if it had been filed as a regular, nonprovisional application in each country designated in the international application.

The PTO has begun asking more questions from this section on the new computerized exams. This chapter is one of the more complex, therefore, it is important to become familiar with the details it covers and where to find them within the MPEP.

Basic Overview of the New Changes
The PCT was amended between the Rev 1 and Rev 2 MPEP (8th edition). The two major changes are listed out here for your convenience.

January 1, 2004 A Written Opinion is established by the International Searching Authority along with the international search report. Before this amendment, the International Preliminary Examination Authority established the Written Opinion.

International applications used to enter the national phase at 20 months from the date of the priority filing. This time period has been changed to 30 months from the date of priority filing for most countries. The amendment was made April 1, 2002. Note that the U.S. has converted to the 30 month time period.

1801 Basic Patent Cooperation Treaty (PCT) principles
A PCT application enables the U.S. applicant the ability to file one international application in the U.S. and have that application acknowledged as a regularly national filed application in as many member countries (Contracting States) as he or she designates.

A PCT filing may replace regular filings in the designated country (i.e. a US. applicant may file a PCT application designating the US. in English, to the US. Receiving Office, and the application will eventually be prosecuted by the US.)
or
A foreign applicant may file a PCT international application designating the US. in their home language in their home patent office and have that application acknowledged as a regular U.S. national filing.

Basics:
a PCT application:
provides a mechanism for an applicant to file only one application (called "international application") in one language
that application will be recognized in as many member countries as the applicant designates

the two major phases of a PCT application include:
the filing of an international application
this is called the "international phase"
the entry into the local prosecution phase in a PTO member country this is called the "national" phase

usually, a national U.S. application will be filed first, and then an international application will be filed within the priority year as provided for by the Paris Convention then, the priority benefit of the U.S. national filing date will be claimed

International application timeline.

for international applications filed on or after January 1, 2004:
the PCT provides for an International Search Report and a Written Opinion of the international application
these are normally established 16 months from the claimed priority date
publication of the international application will occur after 18 months has passed from the priority date

Details:
the two main chapters of the PCT:
Chapter I of the PCT includes the procedures for the filing, search and publication of an international application
this is the general Chapter an international application is filed under
all applications must be filed under Chapter I initially
Chapter II includes additional procedures for the preliminary examination of the PCT international application
an application must be filed under Chapter I before a demand for II can be made

if an inventor will not sign a request for an international application:
the other inventor(s) may sign the request and provide a statement with it that includes a satisfactory explanation for the lack of the nonsigning inventor(s) signature(s)

a PCT application (meeting the appropriate conditions) becomes prior art under 37 C.F.R. 102(e) when the:
fee has been paid
declaration or oath of inventor has been filed
translation has been submitted

a U.S. patent term is still 20 years from the filing date of the international application, not the date the application enters the national phase

once the international application finally makes it to the national stage and the national fees have been paid and any required translation has been made, the application will be subjected to the national procedures for the granting of patents for each of the designated countries:
the international application usually enters the national phase 30 months after the filing of any priority application, or 30 months after the international filing date if no priority is claimed

Definitions:
Receiving Office (RO):
this is the office where applicants file their international application
U.S. residents and nationals would choose from either the USPTO or the World Intellectual Property Organization (WIPO)
an international application must contain the designation of at least one Contracting State to which patent protection is desired
an international application is subject to the payment of fees within one month of the filing date

International Searching Authority (ISA):
this Office conducts a prior art search of the inventions claimed in international applications and issues an International Search Report
for international applications filed on or after January 1, 2004, the ISA also issues a Written Opinion of the application
for most applications filed with the U.S. Receiving Office, the applicant would choose the U.S. to act as the ISA
in some instances, nationals or residents of the U.S. may instead choose the European Patent Office (EPO) as the ISA (the details of which will be discussed in MPEP 1840)

the International Search Report and the Written Opinion will normally both be issued by the ISA within 3 months from the receipt of the search copy (this usually occurs 16 months after the priority date)
the International Search Report will contain a listing of relevant prior art documents and it will identify the claims that are pertinent in relation to the prior art

the International Search Report will not contain any opinions regarding the patentability of the application
the Written Opinion discusses whether or not the ISA believes each claim satisfies the conditions of novelty, nonobviousness and industrial applicability
it will also contain any defects of the application

after completing the International Search Report (for all applications) and the Written Opinion (for applications filed on or after January 1, 2004), the ISA will transmit one copy of each to both the applicant and the International Bureau

International Bureau (IB):
this Office maintains the master file of all the international applications and acts as the publisher and central coordinating body under the PCT
the World Intellectual Property Organization (WIPO) in Geneva, Switzerland performs the duties of the IB
the applicant has 2 months from the date of transmittal of the International Search Report to amend the claims by filing an amendment directly with the IB

applicants must submit a certified copy of the priority document (or the prior U.S. national application) that the international application claims priority of directly to the IB or Receiving Office no later than 16 months after the priority date
the IB will then normally publish the international application along with the International Search Report and any amended claims 18 months from the priority date

the Written Opinion will be made publicly available 30 months from the priority date

Designated Office (DO)
the DO is the national office acting for each of the Contracting States designated in the international application (for example, the USPTO)
effective April 1, 2002, a copy of the international application, a translation thereof and the national fee are due to the designated Office no later than at the expiration of 30 months from the priority date in most contracting states
however, not all member countries have changed their laws for consistency, some still expect the requirements for entering the national stage to occur within 20 months from the priority date of the international application
where the 30 month time limit does not apply, the applicant may file a demand for international preliminary examination to the appropriate IPEA within 19 months of the priority date and the entry into national stage will be delayed until 30 months from the priority date
for international applications filed on or after January 1, 2004, the applicant should file the demand with the IPEA before the expiration of the latest:
3 months from date of transmission of the International Search Report and the Written Opinion to the applicant
22 months from the priority date of the international application

Elected Office (EO)
the national office acting for the state or region elected under Chapter II

International Preliminary Examination Authority (IPEA)
the IPEA starts the International Preliminary Examination when it is in possession of the demand, fees, translation and the International Search Report (and Written Opinion for applications filed on or after January 1, 2004)
if no International Search Report will be established, the IPEA will begin
its examination when a notice stating this is filed by the International
Search Authority

the IPEA establishes the International Preliminary Examination Report, which is now called the International Preliminary Report on Patentability for applications filed on or after January 1, 2004:
this report presents the final position as to whether each claim is novel, involves an inventive step and is industrially applicable by 28 months from the priority date
a copy of the International Preliminary Examination Report is sent to the applicant and to the IB
the IB sends the International Preliminary Examination Report to each elected office
the applicant must complete the requirements for entering the national stage by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application as to that elected Office
some elected Offices provide a longer period to complete the application

1803 Reservations under the PCT taken by the United States of America
as far as the U.S. is concerned, international publication is not required

if the U.S. is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months
nonetheless, the USPTO will publish the application under 35 U.S.C. 122(b) when it enters the U.S. national stage
it will be published again if it is allowed to issue as U.S. patent

the U.S. Receiving Office continues to accept applications only in English

1805 Where to file an international application

§ 1.421 Applicant for international application.
(a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting State, or
(2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(5), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office. (See also § 1.412(c)(6)).
(b) Although the United States Receiving Office will accept international applications filed by any resident or national of the United States of America for international processing, an international application designating the United States of America will be accepted by the Patent and Trademark Office for the national stage only if filed by the inventor or as provided in §§ 1.422, 1.423 or 1.425.
(c) International applications which do not designate the United States of America may be filed by the assignee or owner.
(d) The attorney or agent of the applicant may sign the international application Request and file the international application for the applicant if the international application when filed is accompanied by a separate power of attorney to that attorney or agent from the applicant. The separate power of attorney from the applicant may be submitted after filing if sufficient cause is shown for not submitting it at the time of filing. Note that paragraph (b) of this section requires that the applicant be the inventor if the United States of America is designated.
(e) Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.
(f) Changes in the person, name, or address of the applicant of an international application shall be made in accordance with PCT Rule 92 bis.
(g) The wording of PCT Rule 92 his is as follows:
PCT Rule 92 bis Recording of Changes in Certain Indications in the Request or the Demand
92 bis Recording of Changes by the International Bureau
(a) The International Bureau shall, on the request of the applicant or the receiving Office, record changes in the following indications appearing in the request or demand:
(i) Person name, residence, nationality or address of the applicant,
(ii) Person, name or address of the agent, the common representative or the inventor.
(b) The International Bureau shall not record the requested change if the request for recording is received by it after the expiration:
(i) Of the time limit referred to in Article 22(1), where Article 39(1) is not applicable with respect to any Contracting State;
(ii) Of the time limit referred to in Article 39(1)(a), where Article 39(1) is applicable with respect to at least one Contracting State.

an application may be filed to the U.S. Receiving Office only if one or more of the applicants is a resident or a national of the U.S.

the applicant(s) must always be the actual inventor(s)

Mailing information:
a facsimile transmission may not be used for the filing of:
an international application
drawings under 37 C.F.R. 1.437 for international applications
a copy of the international application
the basic national fee which is required to enter the U.S. national stage under 35 U.S.C. 371

the demand for an international preliminary examination may be filed by facsimile transmission

the international application will be considered received as of the date accorded by the U.S. Receiving Office

1807 Agent or common representative and general power of attorney

§.455 Representation in international applications.
(a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)).
(b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
(c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
(d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.

applicants of international applications may be represented by attorneys or agents who are registered by the PTO or by an applicant appointed as a common representative
the USPTO may waive the requirement for a separate power of attorney or a copy of the general power of attorney in international applications having an international filing date on or after January 1, 2004:
however, a separate power of attorney or copy of the general power of attorney may still be required in certain cases (for example, where an agent's authority to act on behalf of the applicant is in doubt)

1808 Change in or revocation of the appointment of an agent or a common representative
the acting attorney or agent may be revoked if necessary:
the revocation must be signed by the person(s) who made the appointment or by their successors in title

attorney or agents may withdraw from international applications:
each attorney or agent must sign the notice the PTO usually requires 30 days notice

1810 Filing date requirements
an international filing date is accorded on the date which the international application was received by the receiving Office or pursuant to the correction of defects on a later date:
in order to receive a filing date, the application must have what appears to be a claim or claims, a specification, and a request (the specific necessary elements are described in the next section)

note that the application filing fees may be paid at a later date

if an application is not filed in English, or the applicant is not a U.S. citizen, the application will be forwarded to the IB which will act as the Receiving Office and accord a filing date:
this is provided the applicant(s) are citizens of a PCT Contracting State and the application is in a language accepted by the PCT

1812 Elements of the international application

§ 1.431 International application requirements.
(a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or more claims, an abstract, and one or more drawings (where required). (PCT Art. 3(2) and Section 207 of the Administrative Instructions.)
(b) An international filing date will be accorded by the United States Receiving Office, at the time of receipt of the international application, provided that:
(1) At least one applicant is a United States resident or national and the papers filed at the time of receipt of the international application so indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)).
(2) The international application is in the English language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)).
(3) The international application contains at least the following elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an international application (PCT Rule 4.2);
(ii) The designation of at least one Contracting State of the International Patent Cooperation Union (§ 1.432);
(iii) The name of the applicant, as prescribed (note §§1.4211.424);
(iv) A part which on the face of it appears to be a description; and
(v) A part which on the face of it appears to be a claim.
(c) Payment of the basic portion of the international fee (PCT Rule 15.2) and the transmittal and search fees (§ 1.445) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. The basic, transmittal, and search fee payable is the basic, transmittal, and search fee in effect on the receipt date of the international application.
(1) If the basic, transmittal and search fees are not paid within one month from the date of receipt of the international application and prior to the sending of a notice of deficiency, applicant will be notified and given one month within which to pay the deficient fees plus a late payment fee equal to the greater of:
(i) Fifty percent of the amount of the deficient fees up to a maximum amount equal to the basic fee; or
(ii) An amount equal to the transmittal fee (PCT Rule 16 bis ).
(2) The onemonth time limit set pursuant to this paragraph to pay deficient fees may not be extended.
(d) If the payment needed to cover the transmittal fee, the basic fee, the search fee, one designation fee and the late payment fee pursuant to paragraph (c) of this section is not timely made in accordance with PCT Rule 16 bis .1(e), the Receiving Office will declare the international application withdrawn under PCT Article 14(3)(a).

an international application must contain:
a request
a description
one or more claims
an abstract
one or more drawings (where drawings are necessary for the understanding of the invention)
a sequence listing if necessary

an international application shall also:
be in the appropriate language
comply with the physical requirements
designate at least one country
be in compliance with the unity of invention (similar to the restriction requirements)
include the required fees

the oath and translation may be submitted late (up to one month) in filing a PCT application in the U.S. as long as it is sent in with the required fee

note that an abstract may be submitted late in a PCT filing

1817 PCT member states
1. in a continuation or continuationinpart application, a specific reference to the parent application must be included in an application data sheet or in the first sentence of the specification
1819 Earlier international or internationaltype search
2. certain International Searching Authorities refund part or all of the international search fee or reduce the amount of the international search fee where the international search can be based wholly or partly on an earlier search
3. the U.S. provides for reduced search fees where:
a. there is a corresponding prior U.S. national application, and
b. the application is adequately identified in the international application or accompanying papers at the time of filing the international application

1820 Signature of applicant
officers such as the President, Vice President, Secretary, Treasurer, the Chief Executive Officer, Chief Operating Officer, and Chief Financial Officer of an organization are presumed to have the authority to sign on behalf of the organization:
note that the chairman of the board may also sign
an attorney does not generally have the authority to sign on behalf of an organization
an international application must be signed by the applicant, if there are two or more applicants, they (or all their agents) must sign
a legal representative or a deceased inventor may file an international application designating the U.S.:
in these instances, the legal representative will be indicated as the applicant only and the deceased inventor will be indicated as the inventor only

1828 Priority claim and document

§ 1.451 The priority claim and priority document in an international application.
(a) The claim for priority must, subject to paragraph (d) of this section, be made on the Request (PCT Rule 4.10) in a manner complying with sections 110 and 115 of the Administrative Instructions.
(b) Whenever the priority of an earlier United States national application or international application filed with the United States Receiving Office is claimed in an international application, the applicant may request in a letter of transmittal accompanying the international application upon filing with the United States Receiving Office or in a separate letter filed in the United States Receiving Office not later than 16 months after the priority date, that the United States Patent and Trademark Office prepare a certified copy of the prior application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is set forth in § 1.19(b)(1).
(c) If a certified copy of the priority document is not submitted together with the international application on filing, or, if the priority application was filed in the United States and a request and appropriate payment for preparation of such a certified copy do not accompany the international application on filing or are not filed within 16 months of the priority date, the certified copy of the priority document must be furnished by the applicant to the International Bureau or to the United States Receiving Office within the time limit specified in PCT Rule 17.1(a).
(d) The applicant may correct or add a priority claim in accordance with PCT Rule 26 his .1.

an applicant may claim the priority of an application filed in or for a Contracting 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, 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

an applicant may correct or add a priority claim by a notice submitted to the RO or IB within 16 months from the priority date or 16 months from a changed priority date
all priority claim additions or changes must be submitted no later than 4 months
from the international filing date

a priority claim must indicate the country in or for which the earlier application
was filed, the date on which it was filed, and the application number under which it was filed
a certified copy of the earlier (priority) application must be submitted by the applicant before 16 months from the priority date to the International Bureau or the Receiving Office
the copy must be certified by the authority with which the earlier application was filed

a priority claim can be added in later in a PCT filing

Inventor's certificate:
an inventor's certificate is similar to a patent, some countries use these instead of patents

1832 License request for foreign filing under the PCT
a license for foreign filing is not required when filing an international application to a Receiving Office, but it may be required before the applicant or Receiving Office can forward a copy of the international application to a foreign patent office, the International Bureau or other foreign country
the applicant should petition for a license for foreign filing if appropriate

applications under secrecy order will not be forwarded to the International Bureau until the secrecy order has been raised

1834 Correspondence
correspondence will be sent to the applicant unless an agent has been appointed:
the first mentioned agent is the one correspondence will be sent to

"Express Mail" may be used to file PCT applications or associated papers

1836 Rectification of obvious errors
obvious errors in the international application or related papers may be rectified under PCT Rule 91 provided the error is rectified within the proper time limit:
obvious errors subject to rectification include linguistics or spelling errors (as
long as the meaning of the disclosure document does not change)
examples of errors that are not obvious and are not subject to rectification include, missing chemical formulas or missing lines of text

the improper identification of the application number has been held to be an "obvious error" under PCT Rule 91 when the applicant did include the proper agent's file reference and other information properly identifying the application file

rectifications must be authorized:
by the RO if the error is in the request
by the ISA if the error is in any part of the international application (or other related paper) other than the request
by the IPEA if the error is in any part of the international application (or other related paper), other than the request, if a demand for Chapter II examination has been filed
by the IB if the error is in any paper submitted to it other than the international application or amendment or correspondence to the applicant

1840 The International Searching Authority
the search copy is transmitted by the Receiving Office to the International Searching Authority (ISA)

the ISA takes the international application and performs the following:
it makes the international search
it prepares the international search report
it prepares a written opinion for international applications filed on or after January 1, 2004

the International Search Report is generally established about 16 months from the priority date

the publication of an international patent generally occurs about 18 months from the priority date

choosing the International Searching Authority:
the U.S. International Searching Authority may be used to carry out the international search for international applications filed with the U.S. Receiving Office
the European Patent Office (EPO) may also be used for international searches of applications filed with the U.S. Receiving Office

using the EPO (European Patent Office) as the International Searching Authority may be advantageous because:
the claims may be amended according to EPO search results before entering the European regional phase
an EPO search fee need not be paid upon entering the European regional phase
EPO search results may be available for use in a U.S. priority application
an EPO international search may be obtained without the need for a European professional representative
an EPO search could provide the U.S. applicant with the benefit of a European art search before it is necessary to enter the EPO or other designated Offices

some disadvantages to using the EPO to conduct the international search include that: the EPO may not be competent to perform the search if the application was filed by a national or resident of the U.S. and the application has claims relating to biotechnology or business methods
the additional mailing time to and from the EPO may actually shorten the time for applicants to respond to any comments
there may be some difficulty in solving any procedural problems between the applicant and the EPO due to physical distance and time differences

1842 Basic flow under the PCT
time limits under the PCT are measured from the priority date of the application: when there is no priority claim, the international filing date is considered the priority date

international applications under the PCT are usually filed within 12 months after the filing of the first application containing the same subject matter so that the priority date of the first application may be claimed

then, an International Search Report and the Written Opinion (remember, this is only necessary for applications filed on or after January 1, 2004) must be established:
the due date is 3 months from the receipt of the search copy by the ISA, or 9
months from the priority date, whichever is later

international applications are published by the IB promptly after the expiration of 18 months of the priority date of the application

international preliminary examination is optional, the applicant may file a demand for one if he or she desires:
for international applications filed before January 1, 2004, the demand may be filed at any time
for international applications filed on or after January 1, 2004, the demand must be filed prior to the expiration of the latest:
3 months from the date of transmittal to the applicant of the International Search Report and Written Opinion
22 months from the priority date
note that to take advantage of a national phase entry time limit of at least 30 months from the priority date in relation to all States designated in the international application, it may be necessary to file a demand before the expiration of 19 months from the priority date

national stage entryPCT Chapter I:
prior to April 1, 2002, the national stage requirements were due no later than 20 months from the priority date
after the April 1, 2002 amendments, the national stage requirements were due no later than 30 months from the priority date if no demand has been filed
note that not all Contracting States have changed their national laws to the
30 month period

1843 The international search
the international search is a thorough, high quality search of the most relevant resources

once it has been completed, an International Search Report by the ISA is prepared along with a Written Opinion (if the application was filed on or after January 1, 2004)

certain subject matter need not be searched (as some are not patentable), these include instances where the international application relates to the following subject areas:
scientific and mathematical theories
plant or animal varieties or essential biological processes (other than microbiological processes and the products of such processes)
schemes, rules or methods of doing business, performing purely mental acts or playing games
methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods
mere presentation of information
computer programs

an applicant may be advised not to file an international application if the application falls into one of the above mentioned areas
if he or she files one anyway, the ISA may refuse to establish the search report
however, even without an International Search Report, the international application will continue to be processed

an international search will also not be performed when:
a nucleic acid or amino acid sequence is not provided in the prescribed form
there is a lack of unity of the invention
some of the claims relate to subject matter that the ISA is not required to search the claims prevent a meaningful search
for example, where there is absolutely nothing previously written relating to the disclosed subject matter

the publication of the international application occurs at 18 months from the earliest priority date, or, where there is not priority date, publication will occur 18 months from the international application filing date

1847 Refund of international search fee
some fees may be refunded
for example, the search fee may be refunded if no international filing date is accorded or if the application is withdrawn before the search copy is transmitted to the ISA

1848 Sequence listings and tables related to sequence listings
applications containing nucleic and/or amino acid sequences must contain a listing of the sequence that complies with the laws and rules of sequence listings

1850 Unity of invention before the International Searching Authority
effective April 1, 2005, the time limit for the applicant to reply to an invitation to pay additional fees will be set at one month by the ISA

any international application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept

unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more special technical features

the unity of invention requirement for the PCT indicates the restriction procedures for international applications

standards for restriction do not apply for PCT applications, however, unity of invention rules do apply

an international application that lacks a unity of invention (i.e. it contains more than a single invention) will be subject to additional searching fees

1857 International publication
the International Bureau must send a copy of published international applications to each of the designated Offices that have requested to receive the published application on the day of publication

effect of publication:
remember that an international application may be used as prior art as of its international filing date, or an earlier U.S. filing date for which benefit is properly claimed, under 35 U.S.C. 102(e), if the international application:
was filed on or after November 29, 2000
designated the U.S.
was published under PCT Article 21(2) in English

1859 Withdrawal of international application, designations or priority claims
the applicant may withdraw the international application, the designation of any state, or a priority claim by a notice addressed to the International Bureau or to the Receiving Office as long as it is received before the expiration of 30 months from the priority date

a notice of withdrawal must be signed by all the applicants, an appointed agent or an appointed common representative:
the applicant who is considered to be the common representative may not sign such a notice on behalf of the other applicants

the applicant may prevent international publication by withdrawing the international application, provided the notice of withdrawal reaches the International Bureau before the completion of technical preparations for that publication

1864 The demand and preparation for filing of demand

§1.480 Demand for international preliminary examination.
(a)On the filing of a proper Demand in an application for which the United States International Preliminary Examining Authority is competent and for which the fees have been paid, the international application shall be the subject of an international preliminary examination. The preliminary examination fee (§ I.482(a)(1))and the handling fee (§ 1.482(b)) shall be due within the applicable time limit set forth in PCT Rule 57.3.
(b)The Demand shall be made on a standardized form (PCT Rule 53).Copies of the printed Demand forms are available from the United States Patent and Trademark Office. Letters requesting printed Demand forms should be marked "Mail Stop PCT."
(c)Withdrawal of a proper Demand prior to the start of the international preliminary examination will entitle applicant to a refund of the preliminary examination fee minus the amount of the transmittal fee set forth in §1.445(a)(1).
(d)The filing of a Demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty on the international filing date (PCT Rule 53.7). (e)Any Demand filed after the expiration of the applicable time limit set forth in PCT Rule 54 bis .1(a) shall be considered as if it had not been submitted (PCT Rule 54 bis .1(b)).

once an applicant has filed an international application under Chapter I of the PCT, he or she may choose to file a demand for preliminary examination under Chapter II:
it is not possible to file a demand unless a Chapter I request for an international
application has been made

Chapter I affords the applicant the benefit of an international search, including an International Search Report and Written Opinion for applications filed on or after January 1, 2004

Chapter II affords the applicant examination of the description, claims and drawings to
correct any defects, respond to observations, or add in negative findings of claims

preliminary examination enables the applicant to obtain an international preliminary report, which in some elected offices is used as a basis for the issuance of a patent

Conduct of preliminary examinations:

§ 1.484 Conduct of international preliminary examination.
(a) An international preliminary examination will be conducted to formulate a nonbinding opinion as to whether the claimed invention has novelty, involves an inventive step (is nonobvious) and is industrially applicable.
(b) International preliminary examination will begin promptly upon receipt of a proper Demand in an application for which the United States International Preliminary Examining Authority is competent, for which the fees for international preliminary examination (§ 1.482) have been paid, and which requests examination based on the application as filed or as amended by an amendment which has been received by the United States International Preliminary Examining Authority. Where a Demand requests examination based on a PCT Article 19 amendment which has not been received, examination may begin at 20 months without receipt of the PCT Article 19 amendment. Where a Demand requests examination based on a PCT Article 34 amendment which has not been received, applicant will be notified and given a time period within which to submit the amendment.
(1) Examination will begin after the earliest of:
(i) Receipt of the amendment;
(ii) Receipt of applicant's statement that no amendment will be made; or
(iii) Expiration of the time period set in the notification.
(2) No international preliminary examination report will be established prior to issuance of an international search report.
(c) No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
(d) The International Preliminary Examining Authority will establish a written opinion if any defect exists or if the claimed invention lacks novelty, inventive step or industrial applicability and will set a nonextendable time limit in the written opinion for the applicant to reply.
(e) If no written opinion under paragraph (d) of this section is necessary, or after any written opinion and the reply thereto or the expiration of the time limit for reply to such written opinion, an international preliminary examination report will be established by the International Preliminary Examining Authority. One copy will be submitted to the International Bureau and one copy will be submitted to the applicant.
(f) An applicant will be permitted a personal or telephone interview with the examiner, which must be conducted during the nonextendable time limit for reply by the applicant to a written opinion. Additional interviews may be conducted where the examiner determines that such additional interviews may be helpful to advancing the international preliminary examination procedure. A summary of any such personal or telephone interview must be filed by the applicant as a part of the reply to the written opinion or, if applicant files no reply, be made of record in the file by the examiner.
(g) If the application whose priority is claimed in the international application is in a language other than English, the United States International Preliminary Examining Authority may, where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33(1), invite the applicant to furnish an English translation of the priority document within two months from the date of the invitation. If the translation is not furnished within that time limit, the international preliminary examination report may be established as if the priority had not been claimed.

1867 Preliminary examination fees
applicants will have 1 month to pay deficient fees plus a late payment fee
there is no extension of this deadline

1871 Processing amendments filed under Article 19 and Article 34 prior to or at the start of international preliminary examination in international applications having an international filing date on or after January 1, 2004

§ 1.485 Amendments by applicant during international preliminary examination.
(a) The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must:
(1) Be made by submitting a replacement sheet in compliance with PCT Rules 10 and 11.1 to
11.13 for every sheet of the application which differs from the sheet it replaces unless an
entire sheet is canceled; and
(2) Include a description of how the replacement sheet differs from the replaced sheet. Amendments that do not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
(b) If an amendment cancels an entire sheet of the international application, that amendment shall
be communicated in a letter.

amendments must not add subject matter which goes beyond the disclosure of the international application as originally filed

PCT Article 19 amendments are those made to the claims during the Chapter I search phase:
amendments to the claims can only be made after the search report has been established
Article 19 amendments will be transmitted to the IPEA by the International Bureau
PCT Article 34 amendments are those made to the description, claims and drawings during the Chapter II examination phase

Article 19 and 34 guidelines for processing PCT amendments:
amendments in compliance with 37 C.F.R. 1.485(a) will be considered amendments filed after the demand will be considered if filed before docketing
may be considered if filed after docketing at the discretion of the examiner
amendments filed after the expiration of the period for response to the written opinion will be considered if the examiner requested the amendment
even if not required by the examiner, these amendments may be considered

1874 Determination if international preliminary examination is required and possible
it usually benefits the applicant to have an international preliminary examination performed by the IPEA, exceptions include when:
the nature of the claimed subject matter relates to a subject that does not require an international preliminary examination
the claims are so indefinite that no examination is possible

1878 Preparation of the written opinion of the international preliminary examining authority in international applications having an international filing date on or after January 1, 2004
After January 1, 2004:
a written opinion must be prepared by the ISA at the same time the international search report is prepared in applications with an international filing date on or after January 1, 2004:
the U.S. IPEA considers the Written Opinion of the International Searching Authority to be the first Written Opinion of the IPEA
usually, no further Written Opinion needs to be issued before the establishment of the international preliminary examination report a further Written Opinion must be prepared if the applicant files a response with a persuasive argument that the Written Opinion issued by the International Searching Authority was improper

basically, for international applications filed on or after January 1, 2004, the first Written Opinion is usually prepared by the ISA and a further Written Opinion may be prepared by the IPEA if necessary

Before January 1, 2004:
for international applications having an international filing date before January 1, 2004, the IPEA would prepare the first Written Opinion:
in these cases, the applicant has the opportunity to amend the claims by filing amendments with the International Bureau within 2 months of the mailing of the international search report

Details of the Written Opinion:
a. reply to Written Opinion by ISA or IPEA must be received within the time limit set for the reply:
i. no extensions are allowed for the time to reply to the Written Opinion
ii. when the USPTO is acting as the IPEA, they will not accept any nonEnglish applications or amendments
b. amendments in reply to a Written Opinion must be made by submitting a replacement sheet for any sheet of the application which differs from the sheet it replaces
i. if an entire sheet is cancelled, a letter canceling the sheet must be included
ii. new matter which appears on a replacement sheet will be disregarded for the purpose of establishing the opinion. However, the remainder of the replacement sheet, including any amendments which do not constitute new matter, will be taken into consideration for the purpose of establishing the opinion

reply to Written Opinion by ISA or IPEA:
all replies must be received within the time limit set for the reply:
no extensions are allowed for the time to reply to the Written Opinion
when the USPTO is acting as the IPEA, they will not accept any nonEnglish applications or amendments

amendments in reply to a Written Opinion must be made by submitting a replacement sheet for any sheet of the application which differs from the sheet it replaces
if an entire sheet is cancelled, a letter canceling the sheet must be included

interviews:
one interview by either telephone or in person is a matter of right
the interview must be requested after the filing of the demand, yet during the time limit for reply to the Written Opinion

1879 Preparation of the international preliminary examination report
the International Preliminary Examining Authority (IPEA) shall start the international preliminary examination when it is in possession of all of the following:
a. the demand
b. the amount due
c. either the international search report or the declaration by the International Searching Authority that no international search report will be established, and the written opinion; provided that the IPEA shall not start the international preliminary examination before the expiration of the applicable time limit unless the applicant expressly requests an earlier start

the International Preliminary Examination Report (IPER) shall state (in yes or no form), in relation to each claim, whether the claim appears to satisfy the criteria of novelty, nonobviousness), and industrial applicability:
it is accompanied by citations of the documents the IPEA believes to support the stated conclusion
the International preliminary examination report is transmitted to both the International Bureau and the applicant
this report will be in English if handled by the USPTO
every attempt will be made to meet the deadlines set by the PCT

the International Preliminary Examination Report for applications with an international filing date on or after January 1, 2004 must be established before the latest of the following:
28 months from the priority date
6 months from the start of the International preliminary examination
6 months from the date of receipt by IPEA of translation

the International Preliminary Examination Report for applications with an international filing date before January 1, 2004 must be established before the latest of the following: 28 months from the priority date
8 months from the date of the payment of the fees
8 months from the date of receipt by IPEA of translation

1880 Withdrawal of demand or election
any withdrawal of the demand or any election must be sent to the International Bureau or the IPEA:
it must be signed by all applicants

1893 National stage (U.S. national application filed under 35 U.S.C. 371)

35 U.S.C. 371 National stage: Commencement.
(a) Receipt from the International Bureau of copies of international applications with any amendments to the claims, international search reports, and international preliminary examination reports including any annexes thereto may be required in the case of international applications designating or electing the United States.
(b) Subject to subsection (I) of this section, the national stage shall commence with the expiration of the applicable time limit under article 22 (1) or (2), or under article 39 (1)(a) of the treaty.
(c) The applicant shall file in the Patent and Trademark Office
(1) the national fee provided in section 41(a) of this title;
(2) a copy of the international application, unless not required under subsection (a) of this section or already communicated by the International Bureau, and a translation into the English language of the international application, if it was filed in another language;
(3) amendments, if any, to the claims in the international application, made under article 19 of the treaty, unless such amendments have been communicated to the Patent and Trademark Office by the International Bureau, and a translation into the English language if such amendments were made in another language;
(4) an oath or declaration of the inventor (or other person authorized under chapter 11 of this title) complying with the requirements of section 115 of this title and with regulations prescribed for oaths or declarations of applicants;
(5) a translation into the English language of any annexes to the international preliminary examination report, if such annexes were made in another language.
(d) The requirement with respect to the national fee referred to in subsection (c)(1), the translation referred to in subsection (c)(2), and the oath or declaration referred to in subsection (c)(4) of this section shall be complied with by the date of the commencement of the national stage or by such later time as may be fixed by the Director. The copy of the international application referred to in subsection (c)(2) shall be submitted by the date of the commencement of the national stage. Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable. The payment of a surcharge may be required as a condition of accepting the national fee referred to in subsection (c)(1) or the oath or declaration referred to in subsection (c)(4) of this section if these requirements are not met by the date of the commencement of the national stage. The requirements of subsection (c)(3) of this section shall be complied with by the date of the commencement of the national stage, and failure to do so shall be regarded as a cancellation of the amendments to the claims in the international application made under article 19 of the treaty. The requirement of subsection (c)(5) shall be complied with at such time as may be fixed by the Director and failure to do so shall be regarded as cancellation of the amendments made under article 34 (2)(b) of the treaty.
(e) After an international application has entered the national stage, no patent may be granted or refused thereon before the expiration of the applicable time limit under article 28 or article 41 of the treaty, except with the express consent of the applicant. The applicant may present amendments to the specification, claims, and drawings of the application after the national stage has commenced.
(f) At the express request of the applicant, the national stage of processing may be commenced at any time at which the application is in order for such purpose and the applicable requirements of subsection (c) of this section have been complied with.

§ 1.495 Entering the national stage in the United States of America.
(a) The applicant in an international application must fulfill the requirements of 35 U.S.C. 371 within the time periods set forth in paragraphs (b) and (c) of this section in order to prevent the abandonment of the international application as to the United States of America. The thirtymonth time period set forth in paragraphs (b), (c), (d), (e) and (h) of this section may not be extended. International applications for which those requirements are timely fulfilled will enter the national stage and obtain an examination as to the patentability of the invention in the United States of America.
(b) To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not later than the expiration of thirty months from the priority date:
(1) A copy of the international application, unless it has been previously communicated by
the International Bureau or unless it was originally filed in the United States Patent and
Trademark Office; and
(2) The basic national fee (see § 1.492(a)).
(c)
(1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of:
(i) A translation of the international application, as filed, into the English language, if it was originally filed in another language and if any English language translation of the publication of the international application previously submitted under 35 U.S.C. 154(d) (§ 1.417) is not also a translation of the international application as filed (35 U.S.C. 371(c)(2));
(ii) The oath or declaration of the inventor (35 U.S.C. 371(c)(4) and § 1.497), if a declaration of inventorship in compliance with § 1.497 has not been previously submitted in the international application under PCT Rule 4.17
(iv) within the time limits provided for in PCT Rule 26 .1;
(iii) The search fee set forth in § 1.492(b);
(iv) The examination fee set forth in § 1.492(c); and
(v) Any application size fee required by § 1.492(j);
(2) A notice under paragraph (c)(1) of this section will set a time period within which applicant must provide any omitted translation, oath or declaration of the inventor, search fee set forth in § 1.492(b), examination fee set forth in § 1.492(c), and any application size fee required by § 1.492(j) in order to avoid abandonment of the application.
(3) The payment of the processing fee set forth in § 1.492(i) is required for acceptance of an English translation later than the expiration of thirty months after the priority date. The payment of the surcharge set forth in § 1.492(h) is required for acceptance of any of the search fee, the examination fee, or the oath or declaration of the inventor after the date of the commencement of the national stage (§ 1.491(a)).
(4) 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).
(d) A copy of any amendments to the claims made under PCT Article 19, and a translation of those amendments into English, if they were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Amendments under PCT Article 19 which are not received by the expiration of thirty months from the priority date will be considered to be canceled.
(e) A translation into English of any annexes to an international preliminary examination report (if applicable), if the annexes were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Translations of the annexes which are not received by the expiration of thirty months from the priority date may be submitted within any period set pursuant to paragraph (c) of this section accompanied by the processing fee set forth in § 1.492(f). Annexes for which translations are not timely received will be considered canceled.
(f) Verification of the translation of the international application or any other document pertaining to an international application may be required where it is considered necessary, if the international application or other document was filed in a language other than English.
(g) The documents and fees submitted under paragraphs (b) and (c) of this section must be clearly identified as a submission to enter the national stage under 35 U.S.C. 371. Otherwise, the submission will be considered as being made under 35 U.S.C. 111(a).
(h) An international application becomes abandoned as to the United States thirty months from the priority date if the requirements of paragraph (b) of this section have not been complied with within thirty months from the priority date. If the requirements of paragraph (b) of this section are complied with within thirty months from the priority date but either of any required translation of the international application as filed or the oath or declaration are not timely filed, an international application will become abandoned as to the United States upon expiration of the time period set pursuant to paragraph (c) of this section.

1. in the absence of an express request for early processing of an international application under 35 U.S.C. 371(f), the U.S. national stage will commence upon the expiration of 30 months from the priority date of the international application
a. the national stage may commence earlier than 30 months from the priority date, provided the applicant makes an express request for early processing and has complied with the applicable requirements under 35 U.S.C. 371(c).
2. if the basic national fee has been paid and the copy of the international application (if required) has been received by expiration of 30 months from the priority date, but the required oath or declaration, translation, search fee, examination fee, or application size fee has not been filed prior to commencement of the national stage, the Office will send the applicant a notice identifying any deficiency and provide a period of time to correct the deficiency
a. the processing fee will be required for the acceptance of an English translation of the international application later than the expiration of thirty months after the priority date, and the surcharge will be required for acceptance of any of the search fee, examination fee, or oath or declaration of the inventor after the date of commencement
b. Article 19 amendment(s) and the English translation of the amendment(s) must be received by the Office by the date of commencement of the national stage, otherwise, the amendment(s) will be considered to be canceled
3. if the annexes are in a foreign language, a proper translation must be furnished to the Office no later than the expiration of 30 months from the priority date
4. once the national stage application has been taken up by the examiner, prosecution proceeds in the same manner as a domestic application with the exception that:
a. the international filing date is the date used when searching the prior art
the unity of invention is used
b. if an examiner determines that the claims lack unity of invention and requires election of a single invention, when all of the claims drawn to the elected invention are allowable, the claims directed to the nonelected invention(s) should be considered for rejoinder

Correction of inventorship
1. where there has been no change of inventorship but the name of an inventor indicated in the international application during the international phase is different from the corresponding name indicated in an oath or declaration, for example, on account of marriage, then a petition under 37 CFR 1.182 will be required to accept the oath or declaration with the changed name
a.. however, where the discrepancy between the name of the inventor indicated in the international application during the international phase and the name of the inventor as it appears in the oath or declaration is the result of a typographical or transliteration error, then a petition under 37 CFR 1.182 will not be required
i. the Office should simply be notified of the error
ii. a typographical or transliteration error in the name of an inventor identified in a previously submitted oath or declaration may be corrected by simply notifying the Office of the error
iii. a new oath or declaration is not required to correct such error

1895 A continuation, divisional, or continuationinpart application of a PCT application designating the United States
it is possible to file a U.S. national application under 35 U.S.C. 111(a) during the pendency of an international application designating the U.S. without completing requirements for entering the national stage:
this may be accomplished by filing either a:
continuation
divisional
continuationinpart

continuationinpart applications are usually used when the applicant wishes to add new matter to the disclosure which is not supported by the disclosure of the international application as originally filed

a regular national application filed under 35 U.S.C. 111(a) and 37 C.F.R. 1.53(b) may claim the benefit of the filing date of an international application designating the U.S.

to obtain benefit under 35 U.S.C. 120 and the priority of an international application designating the U.S., the continuing U.S. national application must:
a. include a specific reference to the prior international application
i. the specific reference to the international application must be either in the first sentence of the specification following the title or included in the application data sheet
ii. the specific reference must identify the parent application by international application number and international filing date and indicate whether it is a continuation, divisional, or continuationinpart application
b. be copending with the prior international application
c. have at least one inventor in common with the prior international application

in order to expedite the examination, the applicant should certify at the time of filing a national application claiming benefit under 35 U.S.C. 120 and 365(c) to an international application that the international application has not been withdrawn

when a U.S. national application filed under 35 U.S.C. 111(a) becomes a U.S. patent, its effective date as a prior art reference against a pending application is its effective U.S. filing date other than an international filing date

a claim for foreign priority under 35 U.S.C. 119(a)(d) must be made in the continuing application in order to obtain the benefit of the filing date of the prior filed foreign application
a foreign priority claim is proper in the continuing application if the foreign application was filed within 12 months prior to the international filing date of the parent international application

the time for paying the basic fee is not extendible:
the failure to pay the fee within 30 months from the priority date will result in abandonment of the application

the oath/declaration and translation must be filed before 30 months from the priority date:
otherwise, a Notification of Missing Requirements will be sent to the applicant this notice will provide the applicant with a total of 2 months or 32 months from the priority date (whichever is longer) to send in the missing papers
the time period may be extended for an additional 5 months under 37 C.F.R. 1.136(a)

once the national stage application has been taken up by the examiner, prosecution
proceeds in the same manner as a domestic application with the exception that: the international filing date is the date used when searching the prior art the unity of invention is used

the international publication number and the publication date must be in the national stage application if the application is allowed

an international application designating the U.S. has two stages (international and national) with the filing dates being the same in both stages

International Preliminary Examination Report and International Preliminary Report on Patentability:
when International Preliminary Examination is performed by IPEA, an IPER is prepared and sent to elected offices

for applications filed on or after January 1, 2004, the International Preliminary Examination Report is referred to as the International Preliminary Report on Patentability (Chapter II of the PCT)
if the applicant did not file a timely demand for International Preliminary Examination with IPEA, and the application has a filing date on or after January 1, 2004, then an International Preliminary Report on Patentability (Chapter I of the PCT) ISA's opinion is sent to designated offices

1896 The differences between a national application filed under 35 U.S.C. 111 (a national and a national stage application submitted under 35 U.S.C. 371
Filing dates:
for an application filed under 35 U.S.C. 111(a), the filing date is the date the USPTO receives a specification containing a description, at least one claim and any required drawings

for a PCT international application, the filing date is the date the applicant satisfies Article 11 requirements and contains a description, a claim, names at least one applicant who is a resident or national of a PCT Contracting State, filed in the prescribed language and designating at least one Contracting State:
the U.S. filing date of an international application designating the U.S., is for most purposes, the international filing date

Reference date under 35 U.S.C. 102(e):
under 102(e), a national application's date of reference is its earliest effective U.S. filing date, taking into consideration any proper priority or benefit claim to prior U.S. applications under 35 U.S.C. 119(e) or 120 if the prior application(s) properly support(s) the subject matter to make the rejection

under 102(e), an international application's date of reference may be the international filing date if certain conditions are met (i.e. the international filing date is after November 29, 2000, it designates the U.S. and is published under PCT Article 21(2) in English

Priority requirements:
for national applications, the applicant must provide the claim and the certified copy of the foreign priority application

for international applications, the WIPO must provide the certified copy of the priority application and the applicant must provide the claim

Unity of invention:
for national applications, restriction practice is used

for international applications, unity of invention is used