CHAPTER 5:  FILING AN INTERNATIONAL APPLICATION


GENERAL

Article 2(vii)
3(1)

5.001.   What is an international application?  An application is “international” when it is filed under and with reference to the PCT.  It is the first step towards obtaining a patent in or for a State party to the PCT:  “in” such a State when a national patent is desired;  “for” such a State when a regional patent (ARIPO, Eurasian, European or OAPI patent) is desired.

Article 2(i)
and (ii)
3(1)

5.002.   What may be the subject of an international application?  An international application must be an application for the protection of an invention.  The PCT encompasses the filing of applications for patents for inventions, inventors’ certificates, utility certificates, utility models, and various kinds of patents and certificates of addition (see Article 2(i)).  An international application thus cannot validly be filed for certain other forms of industrial property rights which fall outside the scope of “inventions,” such as, for example, purely ornamental designs.

Article 4(1)(ii)
11(3)
64(4)
Rule 4.9

5.003.   What are the main effects of an international application?  Any international application has two main effects.  One of those effects, generally speaking, is the same as that of a national (or regional) application.  It occurs on the date accorded as the international filing date (see paragraph 6.005).  It is produced in or for the “designated States,” that is, the States in which or for which the applicant wishes to obtain a patent by filing an international application.  For the prior art effect of international applications in the United States of America, see National Chapter (US).

Article 31(1)
31(4)(a)

5.004.   Designated States in respect of which international preliminary examination has been demanded by the applicant are called “elected States” in the terminology of the PCT.

Article 22(1)
23(1)

5.005.   Subject to what is said in the following paragraph, the other main effect of an international application is that, normally, no designated Office may process or examine the international application prior to the expiration of 30 months from the priority date (for the definition of “priority date”, see paragraph 5.057) and that any fees due to a designated Office and any translation of the international application to be furnished to a designated Office will have to be paid and furnished, respectively, only by the expiration of that 30-month period.  In respect of certain designated Offices (currently three), the applicable time limit is the former 20-month time limit, not the new 30-month time limit because, due to the incompatibility, for the time being, of the modified PCT provision (PCT Article 22(1)) with the relevant national law, those Offices made a declaration of incompatibility which will remain in effect until it is withdrawn by the respective Offices.  Furthermore, certain designated Offices have fixed time limits expiring even later than 30 months, or 20 months, as the case may be (for more detailed information, see paragraph 4.016 and the National Chapters (Summaries)).  This effect of the international application is normally referred to as the effect of “delaying” the patent examination and granting procedure before the national (or regional) Offices.

Article 39(1)
40(1)

5.006.   If international preliminary examination has been demanded before the expiration of 19 months from the priority date, the delaying effect in respect of any State whose designated Office has notified the International Bureau that the 30-month time limit under Article 22(1), as in force from April 1, 2002, is incompatible with the national law applied by that Office, is 10 months longer, so that any fees due to an elected Office and any translation of the international application will have to be paid and furnished, respectively, only by the expiration of 30 months from the priority date.  (For more detailed information see the National Phase and National Chapters.  Later time limits apply in some Offices.)

Article 8
11(4)

5.007.   An international application which has been accorded an international filing date is the equivalent of a “regular national filing” within the meaning of the Paris Convention for the Protection of Industrial Property and, consequently, may be invoked as the basis of a priority claim in a national, regional or other international application filed subsequently within the time limit and subject to the conditions provided for in that Convention. 

Article 10
Rule 19.1(a)
19.2

5.008.   Where should an international application be filed?  Annexes B indicate, for each Contracting State, the authorities with which its nationals and residents may, as applicants, file international applications.  In the terminology of the PCT, these authorities are called "receiving Offices" (because they receive international applications).  They are listed with their full names and addresses, their telephone, facsimile and/or teleprinter numbers and, where available, their e-mail and/or Internet addresses, in Annexes B, and the requirements of each receiving Office are listed in Annex C.  Where there are several applicants who are not all nationals and/or residents of the same Contracting State, any receiving Office of or acting for a Contracting State of which at least one of the applicants is a resident or national is competent to receive an international application filed by those applicants.  Alternatively, at the applicant’s option, the international application may be filed with the International Bureau as receiving Office, regardless of the Contracting State of which the applicant is a resident or national.  If there are two or more applicants, the international application may be filed with the International Bureau as receiving Office if at least one of the applicants is a resident or national of a Contracting State.  Residents or nationals of States which are party to the PCT and also to the ARIPO Harare Protocol, to the Eurasian Patent Convention, to the European Patent Convention, or to the OAPI Agreement generally also have the option of filing an international application with the ARIPO Office, the Eurasian Patent Office, the European Patent Office, or the OAPI Office, respectively.  Compliance with any national security prescriptions applicable under national law is the applicant’s responsibility.  As to measures which may be applied by receiving Offices in connection with such prescriptions, see paragraph 6.010.

Article 31(2)(a)
Rule 18.1
54

5.009.   Applicants may have a choice between several receiving Offices, for example, where there are two or more applicants whose States of nationality and residence include more than one Contracting State, or where a sole applicant has nationality and/or residence in more than one Contracting State.

Article 3(2)
7

5.010.   What are the elements of an international application?  Any international application must contain the following elements:  request, description, claim or claims, one or more drawings (where drawings are necessary for the understanding of the invention), and abstract.  Detailed information on each is given below.

Section 207(a)

5.011.   What is the order of the elements of the international application?  The elements of the international application must be arranged in the following order:  request, description, claim(s), abstract, drawing(s) (if any).  For applications containing sequence listings, see paragraph 11.088.

Rule 11.7(a)
Section 207(b)

5.012.   How must the sheets of an international application be numbered?  All the sheets constituting the international application must be numbered in consecutive Arabic numerals with three or, where the international application contains a sequence listing, four separate series of numbers:  the first applying to the request, the second applying to the part consisting of the description, the claim(s) and the abstract (see paragraph 5.106), the third applying to the drawings (see paragraph 5.140), and the last applying to the sequence listing part, if any, of the description (see paragraph 5.099).

Article 3(4)(i)
Rule 12.1
48.3(b)

5.013.   What language must be used for an international application?   The language in which an international application must be filed depends on the receiving Office.  Some receiving Offices allow the applicant to choose between two or more languages.  The language or languages which may be used for filing an international application with a given receiving Office are indicated in Annex C.  If the international application is filed in a language other than Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish (that is, the languages in which international applications may be published - see paragraphs 9.017 to 9.020), or if the language in which the international application is filed is not accepted by the International Searching Authority which is to carry out the international search (see paragraph 7.002 and Annex D), a translation of the international application will need to be furnished for the purposes of international search and/or international publication.  A translation may also be required for the purposes of the supplementary international search if neither the language in which the international application is filed or published nor that in which the translation is furnished for the purposes of the main international search is accepted by the Authority which is to carry out the supplementary international search (see Annex SISA). Furthermore, a translation may also be required for the purposes of the international preliminary examination if the language in which the international application is filed or published is not accepted by the International Preliminary Examining Authority which is to carry out the international preliminary examination (see Annex E).  The requirements in relation to languages and the furnishing of translations are explained in greater detail in paragraphs 6.013 to 6.020, 8.012, 9.017 to 9.019 and 10.011.  Those requirements operate, in most cases, in such a way that only one translation would need to be furnished for the purposes of the international phase of processing.  All elements of the international application must normally be in the same language.  However, the request must be in a language which is both a language accepted by the receiving Office (see Annex C) and a language of publication, and the text matter of the drawings (if any) and the abstract may be in the language in which the international application is to be published (see paragraphs 6.018 and 6.019).

Rule 19.4(a)(ii)

5.014.   For the case where an international application is not filed in a language accepted by the receiving Office with which it is filed, see paragraph 6.034.


THE REQUEST

Rule 3.1
3.2
3.4
4
89ter
Section 102

5.015.   What is the form of the request?   The request must:  (a) be made on a printed form (Form PCT/RO/101) to be filled in with the required indications;  or (b) be presented as a computer print-out complying with the Administrative Instructions;  or (c) be presented in the format of the print-out of the computer generated request prepared using the PCT-SAFE software1.  A filled-in sample and a blank copy of the Form PCT/RO/101 are available from the Internet website address indicated below.  Any prospective applicant may also obtain copies of the printed request Form PCT/RO/101, free of charge, from the receiving Office with which he plans to file his international application or from the International Bureau.  To facilitate preparation of the request, the International Bureau has prepared downloadable PDF (portable document format) versions on its website.  These may be downloaded from www.wipo.int/pct/en/forms/ and completed using a computer or printed out and filled in using a typewriter.  The request, and instructions on how to complete the editable version, is also available from that site.

Any prospective applicant may obtain the PCT-SAFE software free of charge from the International Bureau or download it directly from the PCT-SAFE website at:  www.wipo.int/pct-safe/en/, which also provides guidance on using this software.

Article 4(1)
43
44
45
Rule 3
4.1
4.9(a)
4.10
4.11
4.14bis
4.15

5.016.   The request contains a petition for the international application to be processed according to the PCT and must also contain certain indications.  It must contain the title of the invention.  It must identify the applicant, (normally) the inventor, and the agent (if any).  The filing of a request constitutes the designation of all Contracting States bound by the PCT on the international filing date, for the grant of every kind of protection available and for the grant of both regional and national patents.  The request should also contain, where applicable, a priority claim, an indication of the applicant’s choice of competent International Searching Authority and a reference to any relevant earlier international, international-type or other search.  The request must be signed.  Details for the filling in of the request form are given below in respect of each Box of that form.  As to the language of the request, see paragraph 5.013.

Section 109

5.017.   It is recommended that the applicant indicate his file reference, if any, not exceeding 12 characters in length, in the box provided for this purpose on the first sheet of the request form.  The receiving Office, International Bureau, International Searching Authority and International Preliminary Examining Authority will use the file reference in correspondence with the applicant (see also paragraphs 5.105, 5.129, 10.015 and 11.071 as to the indication of file references on other elements of, or papers relating to, the international application).

Rule 11.9(d)

5.018.   Physical Requirements.  Any text matter in the request must be in characters the capital letters of which are not less than 0.21 cm high.


Box No. I:  Title of Invention

Rule 4.3
5.1(a)

5.019.   What are the requirements with respect to the title of the invention?   The title of the invention must be short (preferably two to seven words, when in English or translated into English) and precise.  The same title must be given by the applicant in Box No. I of the request and at the beginning of the description (see paragraph 5.094).


Boxes Nos.  II and III:  Applicants;  Inventors

Article 9(1)
9(3)
Rule 18.1
18.3

5.020.   Who may file an international application?  Any resident or national of a Contracting State may file an international application.  Where there are two or more applicants, at least one of them must be a national or a resident of a Contracting State.  The Contracting States are listed in Annex A.  As to questions of residence and nationality, see paragraph 5.023.

5.021.   [Deleted]

Article 9(3)
Section 203(b)

5.022.   In any international application, different applicants may be indicated for the various designated States.  Note, however, that where more than one type of protection is available for a Contracting State (see paragraph 5.055 and Annex B), different applicants may not be indicated for different types of protection, furthermore for the national and regional designation of a State, the same applicant or applicants must be indicated.

Rule 18.1

5.023.   How are questions of residence and nationality determined?  The question whether an applicant is a resident or national of a Contracting State depends on the national law of that State and is decided by the receiving Office.  In any case, however, possession of a real and effective industrial or commercial establishment in a Contracting State is considered residence in that State, and a legal entity constituted according to the national law of a Contracting State is considered a national of that State.  Where a question of the applicant’s residence or nationality arises in connection with an international application filed with the International Bureau as receiving Office, the International Bureau will request the national Office of, or acting for, the Contracting State concerned to decide the question and will inform the applicant of such request.  The applicant has the opportunity to submit arguments relating to the issue of residence or nationality directly to that national Office, which will decide the question promptly.

Rule 4.5

5.024.   How must the applicant be identified?  The applicant must be identified by the indication of his name and address and by marking next to that indication, the check-box “This person is also inventor” in Box No. II, or “applicant and inventor” in Box No. III, where the applicant is also the inventor or one of the inventors, or the check-box “applicant only” where the applicant is not also the inventor or one of the inventors.  Where the applicant is a corporation or other legal entity (that is, not a natural person), the check-box “applicant only” must be marked.  Where the applicant is registered with the receiving Office, the number or other indication under which the applicant is so registered may also be indicated in Boxes No. II or III.  The applicant’s nationality and residence must also be indicated (see paragraph 5.031).  For the identification of the inventor, see paragraph 5.035.  For later changes in the person, name and address of the applicant, see paragraphs 11.018 to 11.022.

Rule 4.4(a)
4.19(a)

5.025.   How must names be indicated in the request?  The names of natural persons must be indicated by the family name followed by the given name(s).  Academic degrees or titles or other indications which are not part of the person’s name must be omitted.  The family name should preferably be written in capital letters (see filled-in sample of the request form at the address indicated in paragraph 5.015).

Rule 4.4(b)

5.026.   The name of a legal entity must be indicated by its full official designation (preferably in capital letters).

Rule 4.4(c)

5.027.   How must addresses be indicated in the request?  Addresses must be indicated in such a way as to satisfy the requirements for prompt postal delivery at the address indicated and must consist of all the relevant administrative units up to and including the house number (if any).  The address must also include the country.

Rule 4.4(c)

5.028.   When is the indication of a telephone number, a facsimile number or an e-mail address recommended? It is recommended that the telephone number, facsimile number and e-mail address of the applicant, named first in the request, be given, if no agent or common representative is indicated in Box No. IV (see paragraphs 5.041 to 5.051). Any e-mail address supplied will be used only for the types of communication which might be made by telephone, unless the applicant has authorized either the sending of advance copies of notifications by e-mail followed by paper notifications or the sending of notifications exclusively by e-mail to the indicated e-mail address (see below).

5.029.   If the applicant has authorized either the sending of advance copies of notifications by e-mail or the sending of notifications exclusively by e-mail, by marking the corresponding check-box in Box No. II of the request form, the receiving Office, the International Searching Authority (also in its capacity as Authority specified for supplementary search), the International Bureau and the International Preliminary Examining Authority may, if they wish to do so, send such notifications in respect of the international application to the applicant, thus avoiding processing or postal delays. Details of which Authorities will send notifications by e-mail are included in Annex B.  If an e-mail notification is followed by the official notification on paper, only the paper copy of the notification is considered to be the legal copy of the notification and only the date of mailing of the paper copy will commence any time limit within the meaning of Rule 80.  Where the applicant requests the sending of notifications exclusively by e-mail, the date of mailing indicated on the electronic copy will commence any time limit within the meaning of Rule 80.  It is the applicant’s responsibility to keep any e-mail address details up-to-date and to ensure that incoming e-mails are not blocked, for any reason, on the recipient’s side. Changes to the e-mail address indicated in the request should be requested to be recorded, preferably directly at the International Bureau, under Rule 92bis (see paragraphs 11.018 to 11.022).

Rule 4.4(d)

5.030.   May a special address be given for the sending of correspondence?  Only one address may be indicated for each applicant in Box No. II or III.  However, where no agent, or common representative, is indicated in Box No. IV of the request, a special address for correspondence may be indicated in that Box.  Where an applicant is indicated in Box No. IV as common representative, an address for correspondence may be indicated in that Box (see paragraphs 5.047 and 5.051) other than the address given for that applicant in Box No. II or III.

Article 9(1)
Rule 18
19

5.031.   Why and how must the nationality and residence of the applicant be indicated in the request?  This information is needed to determine whether the applicant is entitled to file an international application and also to determine the competence of the receiving Office.  It must be provided by an indication of the names of the country of which the applicant is a national and of the country of which he is a resident.  Where the country of residence is not indicated specifically but a country is indicated in the address, it will be assumed that the country of residence is the country indicated in the address.  For the procedure where an international application is filed with a “non-competent” receiving Office, see paragraph 6.035.  For the manner of indicating names of countries, see paragraph 5.033.

Rule 26.2bis(b)

5.032.   Must the indications in respect of applicants be provided for all applicants?  If there is more than one applicant, it is advisable that the indications outlined in paragraphs 5.024 to 5.031 are provided in respect of all applicants.  However, if the indication of the address, nationality and residence has been provided in respect of at least one applicant who is entitled to file the international application with the receiving Office, the receiving Office will not invite the applicant to furnish the missing indications in respect of any other applicant. 

Section 115

5.033.   How must the names of States be indicated? The name of any State may be indicated either by the full name of the State or by a short title or two-letter code or any combination thereof. This principle applies for the indication of the names of States in all Boxes of the request where such names must be indicated. Annex K contains a comprehensive list of the short names and two-letter codes accepted for use in indicating countries, territories and intergovernmental organizations (and their Offices) in documents relating to international applications under the PCT. The list is as set out in WIPO Standard ST.3, which is published in the WIPO Handbook on Industrial Property Information and Documentation and available on the Internet site at www.wipo.int/standards/en/pdf/03-03-01.pdf.

5.034.   Which of several applicants should be named first?  It is recommended that the applicant who will represent all the applicants and to whom notifications are to be sent be named first, since he will be considered to be the common representative of all the applicants if no common agent or common representative is appointed and if that applicant is entitled to file an international application with the receiving Office (see paragraph 5.048).  However, if a common agent representing all applicants or a common representative is indicated in Box No. IV of the request, notices will be sent to that common agent or common representative.  (See also paragraphs 11.015 to 11.017.)

Article 4(1)(v)
4(4)
Rule 4.1(a)(iv)
4.6

5.035.   When and how must the inventor be identified?  Where the person identified in Box No. II as applicant is also the inventor, it is sufficient to mark the check-box "This person is also inventor." No repetition of the name and address of the inventor is required in Box No. III.  Where the inventor is identified in Box No. III, the check-box "applicant and inventor" must be marked if the inventor is also applicant;  the check-box "inventor only" must be marked if the inventor is not also applicant.  Where the inventor is not the same for all designated States, see paragraph 5.038.  Where the inventor is deceased, see paragraphs 11.023 to 11.026.

Article 4(4)
Rule 4.1(c)(i)

5.036.   Where the inventor is not also an applicant, the check-box "inventor only" must be marked and his name and address must be indicated in one of the sub-boxes of Box No. III.  The name and address of the inventor may be omitted from the request where the national law of none of the designated States requires that the name of the inventor be furnished at the time of filing a national application.  Annexes B indicate what the requirements are for each Contracting State or intergovernmental organization.  However, unless special reasons prevent the indication of the name and address of the inventor, it is recommended that it always be included in the request since such information is generally required in the national phase.

Rule 4.4

5.037.   As regards the indication of the name and address of the inventor, what is said in this respect for the applicant, in paragraphs 5.025 and 5.027, also applies.  An indication of the country of which the inventor is a national or resident is not required unless the inventor is also applicant.  For later changes in the person, name or address of the inventor, see paragraphs 11.018 and 11.020.

Rule 4.6(c)

5.038.   What must be done if the inventors are not the same for all designated States?  The PCT permits different inventors to be indicated for different designated States where, in this respect, the requirements of the national laws of the designated States are not the same.  For the manner of indicating for which designated States the person named is the inventor, see item 1(iii) of the Supplemental Box of the request form (see filled-in sample of the request form at the address indicated in paragraph 5.015).  Where, and this is the usual case, all the inventors are the same for all designated States, no special indication in the Supplemental Box is required.

5.039.   How, in the case of several applicants, are the designated States for which they are applicants to be identified?  Details concerning the designation of States in general are given in paragraphs 5.052 to 5.054 below.  At the bottom of Box No. II and of each sub-box of Box No. III, there are two check-boxes (see filled-in sample of the request form at the address indicated in paragraph 5.015). One (but only one) of those check-boxes must be marked for the applicant identified in Box No. II and for each further applicant, if any.  Neither should be marked if the person identified in any of the sub-boxes of Box No. III is "inventor only."  An explanation of the two check-boxes is given below, separately for Box No. II and Box No. III.

– Box No. II:

    “   all designated States”

This check-box must be marked where the person identified in Box No. II is and qualifies as applicant for all designated States.

    “   the States indicated in the Supplemental Box”

This check-box must be marked only in special cases where the applicant is not an applicant for all designated States:  Where, for example, each of three applicants is applicant for different States, the indication of the States for which the person identified in Box No. II is applicant must be made in the Supplemental Box of the request form (see the explanation given below in relation to the sub-boxes of Box No. III for the other two applicants in such a case).  The manner in which the Supplemental Box is to be used is explained in detail in item 1(ii) of the Supplemental Box itself (see filled-in sample of the request form at the address indicated in paragraph 5.015)

– Box No. III:

    “    all designated States”

This check-box must be marked where the person identified in the sub-box as "applicant and inventor" or as "applicant only" is and qualifies as applicant for all designated States.

    “    the States indicated in the Supplemental Box”

This check-box must be marked only in special cases where the applicant is not an applicant for all designated States.  Where, for example, each of three applicants is applicant for different States, the indication of the States for which each of the two further applicants identified in a sub-box of Box No. III as "applicant and inventor" or "applicant only" must be made in the Supplemental Box of the request form (see the explanation given above in relation to the sub-boxes of Box No. II for the first applicant). The manner in which the Supplemental Box is to be used is explained in detail in item 1(ii) of the Supplemental Box itself (see filled-in sample of the request form at the address indicated in paragraph 5.015).

5.040.   [Deleted]


Box No. IV:  Agent or Common Representative

Article 27(7)
49
Rule 2.2
90.1

5.041.   Does the applicant have to be represented by an agent before the receiving Office, the International Bureau and other International Authorities under the PCT?  Annex C indicates, for each receiving Office, whether the applicant has to be represented by an agent.  As already stated (see paragraph 1.004), in view of the importance of careful preparation of the international application and of its proper processing, it is in any case highly advisable for applicants to use the services of a professional patent attorney or patent agent.

Article 49
Rule 83.1bis
Section 106

5.042.   Who may be appointed to act as an agent?  Any person who can act as an agent before the Office which acts as receiving Office (see Annex C) may be appointed as an agent for any international application filed with that Office.  Where the international application is filed with the International Bureau as receiving Office, any person who has the right to practice before the national (or regional) Office of, or acting for, a Contracting State of which the applicant (or, if there are two or more applicants, any of the applicants) is a resident or national may be appointed as agent (see Annex C).  An appointed agent who has the right to represent the applicant before the receiving Office is automatically also entitled to act before the International Bureau, the International Searching Authority and the International Preliminary Examining Authority.

Article 4(1)(iii)
Rule 4.1(a)(iii)
4.7
90.3

5.043.   How is an agent to be appointed? Subject to paragraph 5.044 an agent may be appointed by designation in Box No. IV of the request (see filled-in sample of the request form at the address indicated in paragraph 5.015) if the international application is signed by the applicant (see also paragraphs 5.088 and 5.089). Otherwise the appointment of the agent must be in a separate document (“power of attorney”) signed by the applicant. The indication in Box No. IV of the request or in the power of attorney must contain the name and address of the agent in the manner indicated in paragraphs 5.025 to 5.028. It is recommended that the agent’s telephone number, facsimile number and/or e-mail address also be indicated. Where the agent is registered with the receiving Office, the number or other indication under which the agent is so registered may also be indicated. Where there are several applicants, an agent representing all of them may be appointed by designation in the request or by a separate power of attorney or by a combination of both methods, provided that all the applicants have signed either the request or a separate power of attorney. Model powers of attorney are available in editable PDF format on the WIPO website at: www.wipo.int/pct/en/forms/pa/index.htm. The separate power of attorney must be submitted to the receiving Office or to the International Bureau or, if the appointment was made specifically for the purposes of the procedure before the International Searching Authority or International Preliminary Examining Authority, to the Authority concerned (see paragraph 5.045). Where a general power of attorney authorizes an agent to represent the applicant before the Office which acts as receiving Office, and where that general power includes the filing of international applications, a copy of the general power of attorney originally submitted to the receiving Office must accompany any international application in relation to which the appointment made in it is to be exercised unless this requirement has been waived by the receiving Office concerned (see paragraph 5.044), and reference must be made to that copy in Box No. IX of the request. It is to be noted that general powers of attorney must be deposited with the receiving Office (not with the International Bureau, except where the international application is filed with the International Bureau as receiving Office) or, if the appointment was made specifically for the purposes of the procedure before the International Searching Authority or International Preliminary Examining Authority, with the Authority concerned (see paragraph 5.045).

Rule 90.4(d) and (e)
90.5 (c) and (d)

5.044.   Any receiving Office, International Searching Authority, International Preliminary Examining Authority or the International Bureau may waive the requirement that a separate power of attorney be submitted to it.  Any receiving Office, International Searching Authority, or International Preliminary Examining Authority may waive the requirement that a copy of a general power of attorney is attached to the request, the demand or a separate notice.  The receiving Office or Authority may waive these requirements in general or only for certain cases.  In cases where either waiver is applicable, no separate power of attorney or copy of a general power of attorney needs to be furnished by the applicant.  Any such waiver and any conditions relating thereto are published in the Official Notices (PCT Gazette) (see also Annexes C, D and E).  Please note that a power of attorney must, in any event, still be furnished for any case of withdrawal, even if the requirement has been waived for other cases.  Any waiver made by a receiving Office only applies in respect of that Office but not necessarily in respect of other Authorities involved in the PCT procedure.  Regarding signature requirements, see paragraphs 5.088 to 5.091;  for special provisions regarding withdrawals, see paragraphs 11.048 to 11.061.

Rule 90.1(d)(ii)
90.6(b)

5.045.   Further agents may be appointed at any time to represent the applicant either generally or specifically before the International Searching Authority or the International Preliminary Examining Authority, and an agent appointed for general purposes, unless otherwise indicated in the document appointing him, may appoint sub-agents to represent the applicant.  The appointment of a new agent is treated as revocation of any former appointment of agents, unless otherwise indicated in the power of attorney appointing the new agent.

Article 27(7)
Rule 4.7
90.3

5.046.   If representation by an agent before the receiving Office is required (see paragraph 5.041), it is advisable that the agent be appointed by the time the international application is filed to ensure that the international application will be accepted for processing by the receiving Office.  The practice of the receiving Office with regard to enforcing the requirement that an agent be appointed is, generally the same as that observed by it in the case of national (or regional) applications.  If the appointment of an agent is not obligatory, an appointment may be made either at the time of filing the international application or later.

5.047.   Is the person who signs the request for a corporate applicant regarded as an agent?  The answer depends on the nature of the authorization to act for the corporate applicant – that is, on whether the person signs on behalf of the corporate applicant or as an appointed agent.  If the name of that person is indicated in Box No. IV and the check-box "agent" is marked, the person will be regarded as an agent and a power of attorney may be required.  If the corporate applicant is indicated in that Box and the check-box "common representative" is marked, the person who signs will not be regarded as an agent.  The mere fact that a person is indicated as part of the address for correspondence to the corporate applicant as common representative (see paragraph 5.051) does not mean that the person will be regarded as an agent.

Rule 2.2bis
90.2

5.048.   Can one of several applicants represent all of them as a common representative?  If a common agent is not appointed by all the applicants, one of the applicants may be appointed by the other applicants as the common representative of all the applicants (see paragraph 11.005).  If neither a common agent nor a common representative is appointed, the first-named applicant who has a right to file an international application with the receiving Office concerned is automatically considered to be the “deemed” common representative of all the applicants (see paragraph 11.006).

5.049.   A more detailed explanation of the provisions relating to agents and common representatives appears in paragraphs 11.001 to 11.014.

5.050.   If the agent or common representative has authorized either the sending of advance copies of notifications by e-mail or the sending of notifications exclusively by e-mail by marking the corresponding check-box in Box No. IV of the request form, the receiving Office, the International Searching Authority (also in its capacity as Authority specified for supplementary search), the International Bureau and the International Preliminary Examining Authority may, if they wish to do so, send such notifications in respect of the international application to the agent or common representative at the indicated e-mail address, thus avoiding processing or postal delays. Where an e-mail address has been provided both in respect of the applicant and in respect of an agent or common representative, the International Bureau will send e-mail communications only to the appointed agent or common representative (see also paragraph 5.029).

Rule 4.4(d)
Section 108

5.051.   When and how may a special address for correspondence be given?  Correspondence is sent to the appointed agent or common representative, if any.  Where no agent or common representative is appointed, any correspondence will be sent to the address, indicated in Box No. II or III, of the applicant (if only one person is named as applicant) or of the applicant who is considered to be the common representative (if there are two or more persons named as applicants) (see paragraphs 5.048 and 11.006).  However, if the applicant wishes correspondence to be sent to a different address, in such a case, that address must be indicated in Box No. IV instead of the indication of an agent or common representative.  In this case, and only in this case, the last check-box of Box No. IV must be marked (that is, the last check-box must not be marked if either of the check-boxes "agent" or "common representative" in Box No. IV has been marked).


Box No. V:  Designation of States

Article 4(1)(ii)
11(1)(iii)(b)
Rule 4.9(a)

5.052.   What is the designation of States?  The designation of States is the indication of Contracting States in or for which the applicant may seek protection for his invention.  For international applications filed after 1 January 2004, the filing of the request automatically constitutes:

(i)  the designation of all Contracting States that are bound by the Treaty on the international filing date; 

(ii)  an indication that the international application is, in respect of each designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State;  and

(iii)  an indication that the international application is, in respect of each designated State to which Article 45(1) applies, for the grant of a regional patent and also, unless Article 45(2) applies, a national patent. 

This is also valid where the applicant does not use the request Form PCT/RO/101 issued on 1 January 2004, or thereafter, or where the international filing date is changed to a date either on, or after, 1 January 2004. 

Rule 4.9(b)

5.053.   As an exception to the automatic and all-inclusive designation of Contracting States, Germany, Japan and the Republic of Korea may be excluded from being designated.  The reason for this exception is that these States have notified the International Bureau that the national law applied by their designated Offices contains provisions to the effect that the filing of an international application which contains the designation of that State and which claims the priority of an earlier national application having effect in the same State, has the result that the earlier national application ceases to have effect.  Check-boxes can therefore be marked when an applicant wants to avoid undesired loss of the national priority application.  Further details relating to this issue, and particular conditions which may apply, are explained in Annex B in respect of these States. 

5.054.   Is the procedure for extending a European patent to a country having an Extension Agreement with the European Patent Organisation available through the filing of an international application?  A European patent granted on an international application may, if the necessary conditions are met, be extended to a State having an Extension Agreement to that effect with the European Patent Organisation.  The procedure is available through the filing of an international application as the filing of the request constitutes the designation of all States, including the designation of the European Patent Office and the designation for a national patent of all States having concluded an Extension Agreement, and which are also PCT Contracting States.  Annex B (EP) contains information as to the States to which European patents may be so extended.  Details of the applicable procedure, including the steps to be taken on entering the national phase and fees payable, have been published in the Official Journal of the European Patent Office (No. 1-2/1994, pages 75 to 88, and No. 11/1997, pages 538 to 542);  see also the National Chapter Summary (EP).

Article 4(1)(ii)
4(3)
43
44
Rule 4.1(b)(iii)
4.11
49bis.1

5.055.   Is it possible to choose a kind of protection other than a patent, and if so how is it done?  As indicated in paragraph 5.052, the filing of the request constitutes the indication that the international application is, in respect of each designated State to which Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State.  Examples of such kinds of protection are an inventor’s certificate, a utility certificate, a utility model, a "petty patent," a patent of addition, a certificate of addition or an inventor’s certificate of addition.  It is not possible, during the international phase, to indicate the wish to obtain a certain kind of protection for a particular designated Office.  Any further choice of the kind of protection sought can only be made at the time of national phase entry before the respective designated Offices.  Please note, however, that it is possible to withdraw a certain type of protection in respect of the designation of a State.  Annexes B indicate, for each Contracting State, the kinds of protection available.

5.056.   Is it necessary to include any parent information in the international application?  Where, when entering the national phase, a title (patent, certificate, inventor’s certificate) of addition is sought, or where the applicant wishes the international application to be treated as an application for a continuation or a continuation-in-part, for the purposes of the international search, that fact must be indicated following the name of the designated State, and the parent application must be identified in the "Supplemental Box" (see item 2 or 3 of that Supplemental Box). 


Box No. VI:  Priority Claim and Restoration of the Right of Priority

Article 8(1)
Rule 4.1(b)(i)
4.10

5.057.   How may the priority of an earlier application be claimed?  Any international application may contain a declaration claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for a member of the World Trade Organization (WTO) that is not party to that Convention (see www.wipo.int/pct/en/texts/pdf/pct_paris_wto.pdf).  Note that where priority is claimed of an earlier filing in or for a WTO member which is not party to the Paris Convention, a PCT Contracting State that is not a Member of the WTO is not required to recognize the effects of such a priority claim.  An earlier regional (ARIPO, Eurasian, European, OAPI or any other similar regional organization providing for the grant of regional patents and where at least one of the countries party to that regional patent treaty is party also to the Paris Convention or the WTO) application or an earlier international application can also serve as a basis for a priority claim.  Any priority claim must be made in the request.  The priority claim must contain the necessary indications which allow the earlier application to be uniquely identified.  If the earlier application was a national application, it must indicate the country in which it was filed, the date on which it was filed and the number under which it was filed.  Where the earlier application was a regional application, the priority claim must indicate the Office with which it was filed;  only where not all countries party to the regional patent treaty under which the earlier application was filed are also party to the Paris Convention for the Protection of Industrial Property (the Paris Convention) or are also members of the WTO must the priority claim indicate at least one country party to the Paris Convention or at least one member of the WTO for which that earlier regional application was filed.  Where the earlier application was an international application, the priority claim must indicate the receiving Office with which it was filed.  The two-letter code (see Annex K and paragraph 5.033) may be used for the indication of the country or, where applicable, for the Office of filing.  Subject to certain conditions, priority claims may be corrected and added, after the international application has been filed, by a notice submitted to the receiving Office or to the International Bureau (see paragraphs 6.038 to 6.044).

Article 2(xi)

5.058.   What does “priority date” mean?  Where the international application contains a priority claim, “priority date” means the filing date of the application whose priority is claimed.  Where the international application does not contain such a claim, “priority date” means the filing date of the international application.  Where the international application contains two or more claims, “priority date” means the filing date of the earliest application whose priority is claimed.

Rule 2.4
80.5

5.059.   What does “priority period” mean?  “Priority period” means the period of 12 months from the filing date of the earlier application whose priority is claimed in the international application.  The day of filing of the earlier application is not included in this period.  Subject to what is said below, in order to validly claim priority, an international application must always be filed within the priority period;  otherwise, the right of priority will be lost.  Note that, in certain cases (see Rules 2.4(b) and 80.5) the priority period may expire on a later day.  Note further that, if the international application is filed after the expiration of the priority period but within a certain time limit, it may be possible, under limited circumstances, to request restoration of the right of priority (see paragraphs 5.062 to 5.069;  this, however, will not apply to all Contracting States).

Article 8(1)
and (2)(a)
11(3)
11(4)
Rule 4.10

5.060.   What are the principles governing the right of priority for international applications?  The PCT makes no change to the provisions which govern the right of priority and are contained in Article 4 of the Paris Convention for the Protection of Industrial Property;  WTO members are required to apply Paris Convention Article 4 in accordance with Article 2.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).  Since an international application has the effect in each designated State of a regular national application, it may claim priority from another application, and be used as the basis for a priority claim in a later application, just like any regular national application.  So far as PCT procedures are concerned, the priority claim is particularly important because it establishes a priority date for the purposes of computing time limits under the PCT.  The validity of a priority claim is not determined during the international phase (although the matter is taken into consideration for the purposes of establishing international preliminary reports on patentability (Chapter I or II of the PCT)).  Also, a priority claim would, subject to the possibility of correction (see paragraphs 6.038 to 6.044), for the purposes of the procedure under the PCT, be considered not to have been made if the application, the priority of which is claimed, was not filed either in a country party to the Paris Convention or in a member of the WTO, if the international application were filed more than two months after the expiration of the priority period (see paragraphs 5.062 and 6.038) or if the priority claim did not include the required details concerning the date on which and the country and/or Office, as the case may be, where the earlier application was filed. 

Section 110

5.061.   How must dates be indicated in the priority claim?  Each date appearing in the international application or in any correspondence must be indicated by the Arabic number of the day, the name of the month and the Arabic number of the year, in that order.  In the request, after, below or above that indication, the date should be repeated in parentheses with a two-digit Arabic numeral each for the number of the day and the number of the month, the number of the year must be indicated in four digits, in that order and separated by periods, slants or hyphens, for example:  "20 March 2006 (20.03.2006) or 20 March 2006 (20/03/2006) or 20 March 2006 (20-03-2006)."

Rule 26bis.3

5.062.   What are the consequences if the international application is filed after the expiration of the priority period?  Where an international application has an international filing date which is later than the date on which the priority period expired (see paragraph 5.059) but within a period of two months from that date, the priority claim concerned will not be declared void for the purposes of the international phase of the PCT procedure, irrespective of whether the restoration of the right of priority is requested (see below), or whether such a request is accepted or refused by the receiving Office.  Where the priority claim in question is the only or the earliest priority claim in the international application, it will continue to serve as the basis to calculate all time limits during the international phase.  Note, however, that the fact that the priority claim is retained in the international application does not mean in any way that the validity of such a priority claim in the national phase is assured.

 

In respect of such a priority claim, the applicant may file a request for the restoration of the right of priority with the receiving Office (see the following paragraphs for the procedure relating to the restoration of the right of priority).  Several receiving Offices have, however, notified the International Bureau under Rule 26bis.3(j) of the incompatibility of the provisions governing such requests to restore the right of priority with the national laws applied by those Offices.  As a result, those receiving Offices will not apply those provisions and thus do not accept such requests.  A list of Offices which will not accept requests under Rule 26bis.3(a) can be found on WIPO’s website at www.wipo.int/pct/en/texts/reservations/res_incomp.html#R_26bis_3_j.  To the extent that the applicant is aware, before filing the international application, of the need to file a request for restoration, he should consider filing the international application with a competent receiving Office that does accept such requests.  For example, the receiving Office of the International Bureau accepts such requests and is competent for international applications filed by a national or resident of any PCT Contracting State.  If the need to file a request to restore only becomes apparent after the international application has already been filed, the applicant may request the receiving Office to transmit the international application to the receiving Office of the International Bureau under Rule 19.4(a)(iii).

Rule 26bis.3(e)

5.063.   What is the time limit for requests for the restoration of the right of priority?  The time limit for complying with the requirements to request the restoration of the right of priority is two months from the date on which the priority period expired.  If the receiving Office requires the applicant to provide a declaration or evidence in support of the statement of reasons for failure to timely file the international application (see paragraph 5.064), it will allow the applicant a reasonable time under the circumstances to furnish such documents.

Rule 4.1(c)(v) 26bis.1(a)
26bis.3

5.064.   How should a request for the restoration of the right of priority be filed with the receiving Office? The request form, Box VI, includes an option for the applicant to request restoration of the right of priority and a similar option is included in the PCT-SAFE software. The applicant only needs to add an indication, in the case of multiple priority claims, to clarify in respect of which priority claim restoration is requested. The request to restore the right of priority may also be submitted separately from the request form by way of a letter to the receiving Office.

For the request to restore the right of priority to be successful, the following requirements must be met:

 –  the international application must contain a priority claim to an earlier application. In addition, this international application must have been filed within two months from the date of the expiration of the priority period. If, the international application does not contain the relevant priority claim at the time of filing, such a claim must be added, in accordance with Rule 26bis.1(a) (see paragraphs 6.038 to 6.040), within two months from the expiration of the priority period (see Rules 26bis.3(c) and (e));

 –  the request to restore should state the reasons for the failure to file the international application within the priority period. This statement of reasons should be submitted as a separate document and accompany the request for restoration in the request form or may be filed subsequently within the time limit under Rule 26bis.3(e). The statement of reasons should take into consideration the restoration criterion which the applicant seeks to satisfy, from among those applied to such requests by the Office (see Annex C and paragraph 5.065);

 –  a fee for requesting restoration, if applicable, must be paid (see Annex C for whether a particular receiving Office requires a fee for the restoration of the right of priority) before the expiration of the time limit under Rule 26bis.3(e); the time limit for payment of the fee may be extended for a period of up to two months from the expiration of the time limit under Rule 26bis.3(e) (Rule 26bis.3(d));

 –  if required by the receiving Office, a declaration or other evidence in support of the statement of reasons should preferably be furnished together with the request to restore but may also be furnished upon invitation by the receiving Office (Rule 26bis.3(f)) (for the applicable time limit, see paragraph 5.063).

Rule 26bis.3(a) 49ter.1(a)
and (b)

5.065.   What are the criteria for restoration applied by the receiving Office?  There are two possible criteria for restoration:  either the failure to file the international application within the priority period occurred in spite of due care required by the circumstances having been taken or the failure to file the international application within the priority period was unintentional.  All Offices to which these Rules are applicable (see paragraph 5.062) must apply at least one of these criteria.  If a receiving Office wishes, it may apply both criteria for restoration and leave the choice to the applicant as to which criterion is sought to be applied in a specific case, noting that it would be advantageous for the applicant to obtain a positive finding by the receiving Office on the stricter criterion of “due care” since such a finding would in general be effective in all designated States, unlike a finding on the less strict “unintentionality” criterion.  Furthermore, a receiving Office will be free to apply, upon request of the applicant, first the “due care” criterion and then, if the receiving Office finds that that criterion is not complied with, the “unintentionality” criterion.

5.066.   What needs to be included in the statement of reasons for the request to restore the right of priority?  The statement should indicate the reasons for the failure to file the international application within the priority period.  It should contain all the relevant facts and circumstances which would allow the receiving Office to determine that the failure to file the international application within the priority period occurred in spite of due care required by the circumstances having been taken or was unintentional.

Rule 26bis.3(f)

5.067.   What kind of declaration or evidence is required in support of a request for restoration of the right of priority?  Under Rule 26bis.3(f), the receiving Offices may require that a declaration or other evidence in support of the statement of reasons be furnished or, if some evidence has already been provided, that additional evidence be furnished.

Rule 26bis.3(g)

5.068.   Will there be an opportunity for dialogue with the receiving Office should that Office intend to refuse the request?  If the receiving Office intends to refuse the request for restoration of the priority claim, it is required to notify the applicant of its intention.  The applicant then has an opportunity to make observations on the intended refusal within a reasonable time limit, specified in the notification of intended refusal (Form PCT/RO/158).  Note that this notification may in practice be sent to the applicant together with an invitation to file a declaration or other evidence.

Rule 49ter.1

5.069.   What are the effects of a decision by a receiving Office on designated Offices?  A decision by a receiving Office to restore a right of priority based on the criterion of “due care” will, as a general rule, be effective in all designated Offices, unless the designated Office submitted a notification of incompatibility under Rule 49ter.1(g).  A decision by a receiving Office to restore a right of priority based on the criterion of “unintentionality” will be effective only in those designated States the applicable laws of which provided for restoration of the right of priority based on that criterion or on a criterion which, from the viewpoint of applicants, is more favorable than that criterion.  A decision by a receiving Office to refuse to restore the right of priority can always be reviewed by a designated Office, unless it has submitted a notification of incompatibility under Rule 49ter.1(g), such that restoration is not possible in that jurisdiction.

In addition, a review of a positive decision may be made by a designated Office in the limited situation where it reasonably doubts that one of the substantive requirements for restoration was complied with.  No review is permitted on purely formal grounds, such as, for example, the ground that the relevant fee in the international phase might not have been paid.

Rule 4.1(c)(ii)
17.1
17.2(a)
Section 411

5.070.   When and to whom must the priority document be furnished?  Before the expiration of 16 months from the priority date (or, where the applicant requests early processing pursuant to Article 23(2), before that request is made), a certified copy of the earlier application (whether it is a national, regional or international application) must be submitted by the applicant either to the International Bureau or to the receiving Office (unless it has already been filed with the receiving Office together with the international application).  Any certified copy that reaches the International Bureau after the expiration of 16 months from the priority date, but before the date of international publication of the international application, will be considered to have reached the International Bureau on the last day of that 16-month period.  The copy must be certified by the authority with which the earlier application was filed.  Where that authority is the same Office as the receiving Office, the applicant may, instead of submitting the certified copy, request the authority, before the expiration of 16 months from the priority date, to prepare and transmit the certified copy to the International Bureau;  in that case, the fee usually charged by the Office should be paid when the request for transmittal is made;  the easiest solution for the applicant is to make this request at the time of filing the international application, by marking the check-box provided for that purpose in Box No. VI of the request Form PCT/RO/101.  Furthermore, where the priority document is available to the International Bureau from a digital library in accordance with Rule 17.1(b-bis) and Section 715(a), the applicant may, prior to the date of international publication, request the International Bureau to obtain the priority document from such a digital library (see paragraph 5.070B).  The International Bureau will not charge a fee for this service.  The easiest solution for the applicant is to make this request with the International Bureau at the time of filing the international application, by marking the check-box provided for that purpose in Box No. VI.

5.070A.   How will I know if my earlier application is available to the PCT System from a digital library?  The only available “digital library” in the PCT system is the WIPO Digital Access Service (DAS).  This offers access to earlier applications filed at the receiving Office of the International Bureau and a number of national Offices for use as priority documents.  However, unlike some of the bilateral priority document sharing systems between national Offices, the earlier application is only available if the applicant has taken specific steps to make the document available.

5.070B.   What steps must be taken so that the International Bureau can obtain the priority document from a digital library, in particular via DAS?  The procedural steps that the applicant needs to follow so that the earlier application will be available to the International Bureau are set out on the DAS website at the following address: www.wipo.int/das/en/description.html and on the individual web sites of the participating offices (see the list at www.wipo.int/das/en/participating_offices.html).  Having carried out these steps, the applicant will receive an access code.  The applicant should then mark the applicable check-boxes in Box No. VI, and indicate the access code for each specific priority document or submit a written request containing this information to the International Bureau.

5.070C.   What steps must be taken when the earlier application to be made available via DAS is an international application?  Applicants may also claim priority from an international application when filing a patent application at another Office (an Office of Second Filing).  If the international application was filed with the receiving Office of the International Bureau, the applicant may send a letter to that Office requesting that the document be made available via DAS, and then request the Office of Second Filing to retrieve that document from DAS.  For international applications filed at other receiving Offices, check the list of Offices at www.wipo.int/das/en/participating_offices.html to see whether a particular participating Office will make international applications, filed at its receiving Office, available to DAS in addition to national applications.

5.070D.   The International Bureau notifies the applicant of the date on which the priority document was received or obtained.  Any designated Office may request a copy of the priority document from the International Bureau.  Provided the applicant has either furnished a certified copy or requested that the priority document be transmitted or obtained and paid the necessary fee as described above, no designated Office may ask the applicant to furnish a certified copy of the earlier application.  Where this is not the case and unless the earlier application of which priority is claimed was filed with the designated Office in its capacity as national Office or if the priority document is available to the designated Office from a digital library, any designated Office may disregard the priority claim.  The designated Office must first, however, have given the applicant an opportunity to furnish the priority document within a time limit which is reasonable under the circumstances.  For the obligation of the applicant to furnish a simple (not certified) copy of the priority document to the designated Offices (including a copy of the priority certificate), see National Phase, paragraph 5.009 and the relevant National Chapters.

Rule 17.2(b)

5.071.   For information as to the obtaining of copies of the priority document after international publication, see paragraph 9.023.


Box No. VII:  International Searching Authority

Rule 4.1(b)(iv)
4.14bis

5.072.   Must an applicant indicate a choice of International Searching Authority?  Where two or more International Searching Authorities are competent to carry out the international search, the applicant must indicate the Authority chosen in the appropriate space in Box No. VII.  For details on which International Searching Authorities are competent, see Annex C and paragraph 7.002.

Rule 4.1(b)(ii)
4.12
12bis
16.3
41.1

5.073.   Can the International Searching Authority be requested to take into account the results of an earlier search? What are the benefits of this for applicants? If the applicant wishes the International Searching Authority, in carrying out the international search, to take into account the results of an earlier international, international-type or national search (Rule 4.12) and has complied with all the requirements under Rule 12bis.1, the Authority must, to the extent possible, take into account the results of the earlier search if it was carried out by the same Office as that which is acting as the International Searching Authority (Rule 41.1(i)). However, if the earlier search was carried out by another International Searching Authority or national (or regional) Office, the International Searching Authority may choose whether it takes into account the results of the earlier search (Rule 41.1(ii)). To the extent that the International Searching Authority takes such earlier search results into account, the International Searching Authority must reduce the search fee to the extent and under the conditions provided for in the agreement under Article 16(3)(b) (Rule 16.3). International Searching Authorities are free to decide the extent and conditions for such search fee reductions. For the full texts of the agreements under Article 16(3)(b) see www.wipo.int/pct/en/access/isa_ipea_agreements.html (see also paragraph 5.198).

The request form, Box No. VII, includes an option for the applicant to request that the results of an earlier search be taken into consideration by the International Searching Authority and a similar option is included in the PCT-SAFE software. The applicant only needs to check the corresponding box in Box No. VII and identify the earlier application (whether national, regional or international) in respect of which the earlier search was carried by including the filing date, the filing number and the country of filing.

In general, if the applicant has made a request for the results of an earlier search to be taken into account, he should – together with the international application and at the time of filing – provide the receiving Office with a copy of the results of the earlier search. However, the applicant will not need to furnish a copy of the earlier search results in the following cases:

– where the earlier search was carried out by the same Authority or Office as that which will act as the International Searching Authority;

– where the earlier search was carried out by the same Office as that which is acting as the receiving Office; in this case, the applicant can request the receiving Office to prepare and transmit the earlier search results directly to the International Searching Authority by marking the check-box provided in Box No. VII of the request form;

– where a copy of the earlier search results is available to the International Searching Authority in a form and manner acceptable to it, for example, from a digital library and the applicant indicated this fact as provided for in Box No. VII of the request form.

If the applicant wants the results of more than one search to be taken into account, the above-mentioned indications must be specified for each and every earlier search. In addition, where the applicant requests the International Searching Authority to take into account the results of more than two earlier searches, the sheet of the request form containing Box No. VII, Use of Results of Earlier Search, Reference to that Search, should be duplicated as many times as necessary to allow the applicant to comply with the requirements and provide the required information for each earlier application.

Unless the applicant has done so already, the International Authority may invite the applicant (Form PCT/ISA/238) to furnish to it a copy of the earlier application, a translation (where required) of that earlier application into a language accepted by the International Searching Authority, a translation (where required) of the results of the earlier search into a language accepted by the International Searching Authority and/or a copy of any document cited in the results of the earlier search. However, the International Searching Authority may not require the applicant to furnish any or some of those documents in the following cases:

– where the earlier search was carried out by the same Authority or Office as that which will act as the International Searching Authority;

– where the earlier search was carried out by the same Office as that which is acting as the receiving Office; in this case, the applicant can request the receiving Office to prepare and transmit a copy of the earlier application and copies of any documents cited in the results of the earlier search directly to the International Searching Authority by marking the check-box(es) provided in Box No. VII of the request form;

– where the applicant marks the check-box provided in Box No. VII of the request form stating that the international application is the same or substantially the same as the earlier application in respect of which the earlier search was carried out, except that it is filed in a different language, the International Searching Authority may not require a copy of the earlier application or a translation thereof;

– where a copy of the earlier application or of any document cited in the results of the earlier search or a translation of the earlier application or a translation of the results of the earlier search are available to the International Searching Authority in a manner acceptable to it, and if the applicant has indicated so by marking the check-box provided in Box No. VII of the request form.


Box No. VIII:  Declarations

5.074.   What declarations may be referred to in Box No. VIII and included in Boxes Nos. VIII(i)
to (v)?
  The applicant may, for the purposes of the national law applicable in one or more designated States, include any of the following declarations under Rule 4.17:

Rule 4.17(i)
51bis.1(a)(i)

– Box No.VIII(i):  declaration as to the identity of the inventor (This declaration need not be made if the name and address of the inventor are indicated in the request, that is, usually in Boxes No. II and/or III).

Rule 4.17(ii)
51bis.1(a)(ii)

– Box No.VIII(ii):  declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent.  (This declaration does not apply to situations where the applicant’s entitlement was acquired only after the international filing date.)

Rule 4.17(iii)
51bis.1(a)(iii)

– Box No.VIII(iii):  declaration as to the applicant’s entitlement, as at the international filing date, to claim priority of the earlier application.  (This declaration does not apply to situations where the applicant’s entitlement was acquired only after the international filing date.) 

Rule 4.17(iv)
51bis.1(a)(iv)

– Box No.VIII(iv):  declaration of inventorship (only for the purposes of the United States of America).  (Submitting a declaration of inventorship during the international phase may be advantageous as inventors may be more difficult to be reached when the application enters the national phase).

Rule 4.17(v)
51bis.1(a)(v)

– Box No.VIII(v):  declaration as to non-prejudicial disclosures or exceptions to lack of novelty.

Rule 4.17
51bis.1
51bis.2

5.075.   What is the purpose of those declarations?  The purpose of declarations under Rule 4.17 is to enable applicants to comply with some of the national requirements of the designated Offices referred to in Rule 51bis.1 already during the international phase.  The national laws of many designated Offices require the applicant to furnish documents or evidence relating to certain matters, for example the applicant’s entitlement to apply for or be granted a patent, during the national phase.  By submitting declarations under Rule 4.17 during the international phase, the applicant will generally not have to furnish any documents or evidence on the particular subject matter covered by the declaration to any designated Office which has such a requirement.  For example, when the applicant furnishes a declaration under Rule 4.17(ii) during the international phase, he does generally not need to submit any further document or evidence relating to the applicant’s entitlement to apply for or be granted a patent (for example an assignment document transferring rights from the inventor to the applicant) during the national phase before designated Offices which have such requirements under their national law (see also paragraph 5.081).  The PCT does not require that declarations be submitted during the international phase, but if they are, they should be prepared using standardized wording (see paragraphs 5.076 to 5.078).  No other declaration(s) may be included in any of Boxes VIII (i) to (v).

Rule 4.17
Section 211
212
213
214
215

5.076.   How must the declarations be presented in the request?  Each declaration should be made on the appropriate sheet (Box No. VIII (i) to (v));  a "continuation sheet for declaration" (Continuation of Box No. VIII (i) to (v)) should be used in case any single declaration does not fit on the corresponding sheet.  The declarations must be worded using the standardized wording provided for in Sections 211 to 215.  Except in respect of the declaration of inventorship for the purposes of the designation of the United States of America (see paragraph 5.077), the applicant must choose those items and elements of the standardized wording that apply and place them in the appropriate order, taking into account the facts of the case, the chronology of events, etc.  Detailed guidance on making these declarations is contained in the Notes to the request form.  If no declaration is made, none of the declaration sheets should be included in the request.

Rule 4.17(iv)
Section 214(a)
and (b)

5.077.   The text of the declaration of inventorship for the purposes of the designation of the United States of America only is pre-printed in Box No. VIII(iv) of the request form since that text must be used as set out in Section 214, no parts may be omitted or presented in an order different from that used in the form.  When this declaration is furnished after the international filing date, the PCT application number must be added to the declaration in the space provided for this purpose.  In addition, when there are several inventors, all inventors must sign and date a complete declaration containing all inventors, even if they do not sign the same (copy of the) declaration, and the name, residence and address must be included for each inventor;

Rule 51bis.2

5.078.   Must the standardized wordings of declarations always be used?  The standardized wording should always be used otherwise the designated Offices may require the applicant to furnish a new declaration or further evidence in the national phase.  It should be noted, that even if a declaration has not been made using the standardized wording, the International Bureau will nevertheless publish it.  It will then be up to each designated Office concerned to determine whether it can accept the declaration or not;  in other words, the applicant will not have any guarantee that an Office will accept it.  If the circumstances of a particular case are such that the standardized wording under Rule 4.17 is not applicable the applicant should consider complying with the requirement during the national phase.

Rule 4.17(iv)
Section 214(a) and (b)

5.079.   Must a declaration under Rule 4.17 be signed?  Only the declaration of inventorship for the purposes of the designation of the United States of America must be signed and dated by all inventors.  No other declaration must be signed.

Rule 51bis.2

5.080.   Do all designated Offices accept declarations made under Rule 4.17 under their national law?  All designated Offices that have special national requirements allowed under the PCT accept such declarations.  For more information about which States require the substantive information in each of the declarations, see “Special requirements of the Office” in the corresponding National Chapter (Summary) for the designated Office concerned, and National Phase, paragraphs 5.003 to 5.005.

Rule 51bis.2

5.081.   May the designated Offices require further evidence during the national phase?  Where the declaration in question is one of those referred to in Rule 4.17(i) to (iv), the designated Office may not require any document or evidence relating to the subject matter of such declaration unless it may reasonably doubt the veracity of that declaration.  Where the declaration in question is that referred to in Rule 4.17(v), the designated Office may require further documents or evidence, noting that the matter of non-prejudicial disclosures and exceptions to lack of novelty is a substantive matter of patentability.  It is to be noted that the fact that a declaration is made does not, of itself, establish the matters declared:  those matters remain for determination by the designated Offices in accordance with the applicable national law.

Rule 48.2(a)(x)
48.2(b)(iv)

5.082.   How do designated Offices receive the declarations relevant to them?  All declarations will be part of the published international application (see paragraph 9.015) and will therefore not be communicated separately to the designated Offices concerned.

5.083.   What is the purpose of the check-boxes in Box No. VIII?  The check-boxes in Box No. VIII should be completed by the applicant to allow the receiving Office to verify that the declaration(s) referred to correspond to those made in Boxes No. VIII (i) to (v).

If the applicant chooses not to make any declaration at the time of filing the international application or if the declarations are not yet available at the time of filing, the request should not include the optional sheets for declarations and nothing should be marked in the check-boxes in Box No. VIII.

Rule 26ter.1

5.083A.   Can a declaration referred to in Rule 4.17 be corrected or added during the international phase?  A declaration may be corrected, or a new (missing) declaration added, by a notice submitted to the International Bureau.  For further details, see paragraphs 6.045 to 6.050.  It should be noted, however, that a declaration may not be withdrawn once it has been filed. 


Box No. IX:  Check List

Rule 3.3
Section 313

5.084.   What is the purpose of the check list?  Box No. IX should be completed by the applicant to allow the receiving Office to verify the completeness of the documents constituting and/or accompanying the international application and, in particular, to check whether the international application as filed actually contains the number of sheets in paper form indicated in items (a) to (f).

5.085.   The actual number of sheets constituting each element of the international application as well as their total should be indicated (for the numbering of sheets, see paragraph 5.012).  As for the sheets of the request, they are at least four in number (the “first sheet,” the “second sheet”, the “third sheet” and the “last sheet”).  There may be more sheets if one or more optional sheets are used (the “continuation sheet” for Box No. III, the “supplemental sheet”, the “declaration sheet” or the “continuation sheet for declaration”).

Article 27(2)
Rule 13bis
51bis.1
Section 209

5.086.   For details on the completion of Box No. IX and on the kinds of items which may need to be filed with the international application, see the Notes to the request form.  See also the National Chapters for details concerning certain matters in relation to designated Offices.

Rule 3.3(a)(iii)
8.2
Section 201

5.087.   The applicant must further indicate in Box No. IX the number of that figure of the drawings (if any) which is suggested to accompany the abstract for publication (see paragraph 5.170) and preferably also the language of filing of the international application.


Box No. X:  Signature of Applicant or Agent

Article 14(1)(a)(i)
Rule 4.1(d)
4.15
26.2bis(a)
51bis.1(a)(vi)
90.3

5.088.   Who must sign the international application and when?  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, if there is more than one applicant, the receiving Office will not invite the applicant to furnish missing signatures when the request is signed by at least one of the applicants.  Note, however, that in this case, any designated Office may in accordance with the applicable national law require the confirmation of the international application by the signature of any applicant for the designated State who has not signed the request.  Subject to certain conditions indicated in paragraph 5.089, the request may be signed by the agent instead of the applicant(s).

Rule 2.1
4.1(d)
4.15
90.3
90.4
90.5

5.089.   May the international application be signed by an agent?  The international application may be signed by an agent, but in that case the agent must be appointed as such by the applicant in a separate power of attorney signed by the applicant himself.  The power of attorney has to be submitted to the receiving Office unless the receiving Office has waived the requirement to furnish a separate power of attorney (see paragraphs 5.041 to 5.051, and 11.001 to 11.014).  If there are two or more applicants, the request may be signed by an agent on behalf of all or only some of them;  in that case the agent must be appointed as such in one or more powers of attorney signed by the applicants on whose behalf the agent signs the application.  Where a power of attorney appointing an agent who signs an international application is missing and the receiving Office requires that a power of attorney be furnished, the signature is treated as missing until the power of attorney is submitted.  For the case of a general power of attorney, see paragraphs 5.043 and 11.009.

5.090.   How must the international application be signed?  The signature should be executed indelibly in a dark color, preferably in black ink, so that it will appear clearly in a photocopy.  The name of each person signing the international application should be indicated (preferably typewritten) next to the signature.  Where the person signs on behalf of a legal entity, the capacity in which that person signs should also be indicated.

Rule 2.3

5.091.   When must or may a seal be used instead of a signature?  In international applications filed with the State Intellectual Property Office of the People’s Republic of China as receiving Office, a seal may be used instead of a signature.  In the case of international applications filed in English with the Japan Patent Office as receiving Office and in respect of which the European Patent Office has been chosen by the applicant as International Searching Authority, a signature must be furnished instead of a seal. In international applications filed with the Korean Intellectual Property Office as receiving Office, a seal may be used instead of a signature.


Notes to the Request Form

5.092.   What are the Notes to the request form?  The Notes to the request form are intended to facilitate the completion of that form.  They indicate, in relation to each Box of that form, what indications are required and how they are to be made.  The Notes are not required to be submitted with the request, however, and should not be numbered as part of the request.


Fee Calculation Sheet

5.093.   What is the fee calculation sheet?  The fee calculation sheet is intended to help the applicant to calculate the total amount of fees payable to the receiving Office.  The sheet is usually annexed to the request form which the applicant obtains from the receiving Office.  It is not part of the form and is not counted as a sheet of the request, however, and its use is not mandatory.  Nevertheless, it is strongly recommended that the applicant complete the fee calculation sheet and submit it to the receiving Office.  This will help the receiving Office to verify the calculations and identify any errors.  Where two or more International Searching Authorities are competent for searching the international application (see paragraph 7.002), the Authority which was chosen by the applicant and indicated in Box No. VII of the request form (see paragraph 5.072) should also be indicated in the fee calculation sheet, together with the amount of the applicable search fee (see paragraph 5.187).  See the Notes to the fee calculation sheet for details about completion of the sheet.  For information about the payment of fees generally, see paragraphs 5.184 to 5.199.


THE DESCRIPTION

Article 5
11(1)(iii)(d)
Rule 5
Section 204

5.094.   How must the description be drafted?  The description must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.  It must start with the title of the invention as appearing in Box No. I of the request.  Rule 5 contains detailed requirements as to the “manner and order” of the description, which, generally, should be in six parts.  Those parts should have the following headings:  “Technical Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” “Best Mode for Carrying Out the Invention” or, where appropriate (see paragraph 5.096), “Mode(s) for Carrying Out the Invention,” “Industrial Applicability,” and, where applicable, “Sequence Listing” and “Sequence Listing Free Text.”

5.095.   The details required for the disclosure of the invention so that it can be carried out by a person skilled in the art depend on the practice of the national Offices.  It is therefore recommended that due account be taken of national practice (for instance in Japan and the United States of America) when the description is drafted.  The need to amend the description during the national phase (see paragraph 5.111 below) may thus be avoided.

Rule 5.1(a)(v)

5.096.   What is said in paragraph 5.095 applies likewise to the need to indicate the “best mode for carrying out the invention.”  If at least one of the designated Offices requires the indication of the “best mode” (for instance, the United States Patent and Trademark Office), that best mode must be indicated in the description.

5.097.   A description drafted with due regard to what is said in paragraphs 5.094 to 5.096 will be accepted by all the designated Offices.  It might require more care than the drafting of a national patent application, but certainly much less effort than the drafting of multiple applications, which is necessary where the PCT route is not used for filing in several countries.

5.098.   The requirement of unity of invention is discussed, in connection with the claims, in paragraphs 5.114 to 5.123.

Rule 5.2
13ter.1
Section 204
208
513

5.099.   What special requirements apply to a nucleotide and/or amino acid sequence listing part of the description?  Where the international application contains disclosure of a nucleotide and/or amino acid sequence, the description must contain a listing of the sequence which complies with the standard provided for in Annex C of the Administrative Instructions (Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications Under the PCT) and which is presented as a separate part of the description in accordance with that standard.  Where the international application contains the disclosure of a sequence listing, the "sequence listing part" of the description should be headed "Sequence Listing." Where applicable, the main part of the description should, under the heading "Sequence Listing Free Text," repeat the free text contained in the sequence listing.  For further information relating to nucleotide and/or amino acid sequence listings, including those filed for the purposes of international search see below and paragraphs 7.005 to 7.012.

Section 208
702
Annex F of the Administrative Instructions

5.100.   How can an international application containing a sequence listing be filed?  An international application containing a sequence listing, forming part of the international application, can be filed on paper or in electronic form.  Where the international application is filed in electronic form, the sequence listing part of the description must also be filed in that form.  The application has to be in an electronic document format and/or by a means of transmittal accepted by the receiving Office for the purposes of filing international applications in electronic form (Annex F).  The sequence listing shall preferably be in text format prepared in accordance with paragraph 40, Annex C of the Administrative Instructions.  This means the actual sequence listing file output generated by the “PatentIn” software (a “.txt” or “.app” file–depending on the version of the software used (see paragraph 5.104)) without converting it into PDF or any other format.  Where the international application is filed on paper, the sequence listing part of the description must also be filed on paper in accordance with Annex C of the Administrative Instructions.  Where the international application is filed on paper and the International Searching Authority requires a copy of the sequence listing in electronic form, such a copy together with the required statement should accompany the international application, but only for the purposes of international search under Rule 13ter (see paragraph 5.102).

Rule 13ter.1
Schedule of Fees
Section 707
Annex C of the Administrative Instructions

5.101.   How is the fee for filing sequence listings calculated?  For international applications filed on paper, page fees for the sequence listing are calculated in exactly the same way as the page fees in the main part of the description.  For international applications filed in electronic format, this calculation depends on whether the sequence listing is provided in the text format referred to in paragraphs 5.099 and 5.100, above.  If so, no page fees at all are payable in respect of the sequence listing.  If, however, the sequence listing is provided in any other format (such as PDF), or if the sequence is included in the main part of the description instead of as a separate sequence listing file, full page fees are payable.  In all cases, tables relating to sequence listings should be an integral part of the description and sheets containing such tables are counted as pages of the description, irrespective of the format in which they are submitted.

Rule 13ter
Annex C of the Administrative Instructions

5.102.   How should the applicant proceed where the international application is filed on paper and a sequence listing, not forming part of the international application, is to be furnished in electronic form for the purposes of international search only?  If the applicant is aware that the International Searching Authority requires a listing of the sequence in electronic form (see Annex D), it is advisable to submit such a listing in the prescribed format (see Annex C of the Administrative Instructions) on an electronic carrier, accompanied by a statement confirming that “the information recorded in electronic form submitted under Rule 13ter is identical to the sequence listing as contained in the international application as filed on paper,” to the receiving Office, together with the international application, rather than to wait for an invitation from the Authority.  The receiving Office will then include the electronic carrier, which does not form part of the international application, with the copy of the international application transmitted by the receiving Office to the Authority.

5.103.   Do all receiving Offices accept the filing of sequence listings in electronic format?  Receiving Offices which are prepared to accept the filing of international applications in electronic format are indicated in Annex C.  Since the international application and the sequence listing part of the description must either both be in electronic format, or both be on paper, only Offices that accept international applications in electronic form will accept sequence listings filed in this format (see paragraph 5.100).

5.104.   Does the International Bureau recommend any software for the preparation of sequence listings in electronic format?  The electronic form of sequence listings should preferably be created by dedicated software such as “PatentIn” (available free of charge from the European Patent Office website at: www.epo.org/patents/Grant-procedure/Filing-an-application/European-applications/Filing-options/PatentIn-filing-software.html, or from the United States Patent and Trademark Office (USPTO) website at: www.uspto.gov/web/offices/pac/patin/patentin.htm).

Rule 11
Section 109

5.105.   What are the physical requirements for the description?  Rule 11 lists the physical requirements which have to be met by an international application.  The paper must be of A4 size, white and durable.  The minimum margins must be 2 cm on the top, the bottom and the right side of the sheet, and 2.5 cm on the left side of the sheet.  The margins should not exceed 3 cm on the bottom and the right side of the sheet and 4 cm on the top and the left side of the sheet.  The margins must be completely blank, except that a file reference not exceeding 12 characters in length may be placed by the applicant in the left-hand corner of the top margin within 1.5 cm from the top of the sheet.  Any text matter in the description must be in characters the capital letters of which are not less than 0.28 cm.

Rule 11.7
11.8
11.9
Section 207

5.106.   How should the pages and lines be numbered?  The page number must be centered at the top or bottom of the sheet, but not in the 2 cm margin (that is, a page number, if at the top of the sheet, must be below the 2 cm margin, and if at the bottom of the sheet, above the 2 cm margin).  It is strongly recommended that every fifth line of each sheet be numbered in the right half of the left margin.  The description must be typewritten or printed.  The typing must be 1½ spaced and in dark indelible color so as to permit direct reproduction.  The capital letters of the characters must be a minimum of 0.28 cm high.

Rule 11.9(b)
11.10(b)

5.107.   How are chemical or mathematical formulae to be represented?  The description, the claims and the abstract may contain chemical or mathematical formulae.  Such formulae may be written by hand or drawn if necessary but it is recommended that appropriate drafting aids or materials such as stencils or transfers be used.  For practical reasons formulae may be grouped together on one or more sheets in the description and paginated with it.  It is recommended in such cases that each formula be designated by a reference sign and the description should contain references to such formulae whenever necessary.  Chemical or mathematical formulae may also be grouped together and be placed after the claims as drawings.  In such a case, the chemical or mathematical formulae must be drawn to comply with the requirements for drawings and the sheets must be numbered as drawing sheets (see paragraph 5.157).

Rule 11.9(b)
11.9(d)
11.13(h)

5.108.   Chemical or mathematical formulae must employ symbols in general use and must be drawn in such a way that they are completely unambiguous.  Numerals, letters and signs which are not typed must be legible and identical in form in the various formulae, irrespective of the element of the international application in which they appear.  Chemical or mathematical formulae appearing in the text of the international application must have symbols the capital letters of which are at least 0.28 cm high.  Where they appear on sheets of drawings, these symbols must be at least 0.32 cm high.  All mathematical symbols used in a formula which appear in a description or on sheets of drawings should be explained in the description, unless their significance is clear from the context.  In any case, the mathematical symbols used may be collated in a list.

Rule 11.10(c)
and(d)

5.109.   How are tables to be represented?  For the sake of convenience, tables may be grouped together in one or more sheets of the description and paginated with it.  If two or more tables are necessary, each should be identified by a Roman numeral (independently of the pagination of the description or drawings or of the figure numbering) or by a capital letter, or by a title indicating its contents, or by some other means.  Each line and column in a table should begin with an entry explaining what it represents and, if necessary, the units used.  As far as possible, all tables should be set out upright on the sheets.  Where the tables cannot be presented satisfactorily in an upright position, they may be placed sideways, with the top of the tables on the left-hand side of the sheet.

Rule 91

5.110.   How can obvious mistakes in the description be rectified?  The procedure for rectification of obvious mistakes is explained in paragraphs 11.033 to 11.044.  The omission of an entire sheet of the description cannot be rectified without affecting the international filing date (see paragraphs 6.025 and 6.026).  Changes other than the rectification of obvious mistakes are considered amendments (see paragraph 5.111).

Article 28
34(2)(b)
41(1)
Rule 52
78

5.111.   Can the description be amended during the international phase?  The description can be amended during the international phase only if the applicant files a demand for international preliminary examination (see paragraph 10.001).  The description can also be amended during the national phase before each designated or elected Office (see National Phase).  Different provisions apply to amendment of the claims in the international phase – see paragraph 5.127.


THE CLAIMS

Article 6
11(1)(iii)(e)
Rule 6.1
6.2
6.3
6.4

5.112.   How must claims be drafted?  The claim or claims must “define the matter for which protection is sought.” Claims must be clear and concise.  They must be fully supported by the description.  Rule 6 contains detailed requirements as to the number and numbering of claims, the extent to which any claim may refer to other parts of the international application, the manner of claiming, and dependent claims.  As to the manner of claiming, the claims must, whenever appropriate, be in two distinct parts;  namely, the statement of the prior art and the statement of the features for which protection is sought (“the characterizing portion”).

Rule 6.4(a)

5.113.   In principle, under the PCT, any dependent claim which refers to more than one other claim (“multiple dependent claim”) must refer to such claims in the alternative only, and multiple dependent claims cannot serve as a basis for any other multiple dependent claim.  However, the national laws of most Contracting States permit a manner of claiming which is different from that provided for in the preceding sentence, and the use of that different manner of claiming is in principle also permitted under the PCT.  For the purposes of those designated States where that different manner of claiming is not permitted, the applicant must decide which drafting style to adopt.  If that different manner of claiming is used, amendments may need to be made to the claims during the national phase in those States which do not permit it.  Moreover, the national Offices of such States, when they act as International Searching Authorities, may indicate under Article 17(2)(b) that a meaningful search could not be carried out if that different manner of claiming is used (see paragraph 7.014).

Article 3(4)(iii)
Rule 13
45bis.6(a)

5.114.   What is meant by the requirement of "unity of invention"?  An international application should be drafted so that the claims relate to only one invention or to a group of inventions so linked as to form a single general inventive concept.  This principle is laid down in Article 3(4)(iii) and Rule 13.  Observance of this requirement is checked by neither the receiving Office nor the International Bureau, but it is checked by, and is important to the procedure before, the International Searching Authority (see paragraphs 7.015 to 7.021), the Authority specified for supplementary search (see paragraph 8.044) and the International Preliminary Examining Authority (see paragraph 10.072), and may be relevant in the national phase before the designated and elected Offices.  Since separate searches and examinations are required for distinctly different inventions, additional fees are required if the international search or international preliminary examination is to cover two or more inventions (or groups of inventions linked as just described).  (For how the issue of unity of invention affects the supplementary international search, see paragraph 8.043.)

Rule 13.2
13.3
Section 206

5.115.   How is the requirement of unity of invention satisfied?  Unity of invention is present only when there is a “technical relationship” among the claimed inventions involving one or more of the same or corresponding “special technical features.” The expression “special technical features” means those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.  The determination whether a group of inventions is so linked as to form a single inventive concept is made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.  An initial determination of unity of invention based on the assumption that the claims avoid the prior art will be made before the prior art search but may be reconsidered on the basis of the results of the search.  Annex B of the Administrative Instructions contains detailed criteria governing the determination whether an international application complies with the requirement of unity of invention under Rule 13.  The following paragraphs set out a summary of some of the more important criteria discussed in that Annex.  Illustrations of three particular situations are explained in detail below:

 

(i) combinations of different categories of claims (for example – product, process, use, and apparatus or means),

 

(ii) so-called “Markush practice” and

 

(iii) the case of intermediate and final products.

5.116.   May different categories of claims be combined in an international application?  The method for determining unity of invention contained in Rule 13 is construed as permitting, in particular, the inclusion of any one of the following combinations of claims of different categories in the same international application:

(i) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for a use of the said product, or

(ii) in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the said process, or

(iii) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product and an independent claim for an apparatus or means specifically designed for carrying out the said process,

it being understood that a process is specially adapted for the manufacture of a product if it inherently results in the product and that an apparatus or means is specifically designed for carrying out a process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.

5.117.   An apparatus or means is considered to be “specifically designed for carrying out” a claimed process if the contribution over the prior art of the apparatus or means corresponds to the contribution the process makes over the prior art.  Consequently, it would not be sufficient that the apparatus or means is merely capable of being used in carrying out the claimed process.

5.118.   What is permitted under the “Markush Practice”?  Rule 13.2 also governs the “Markush practice” wherein a single claim defines alternatives of an invention – a common drafting practice for inventions in the chemical field.  In this special situation, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2, is considered to be met when the alternatives are of a similar nature.

5.119.   When the Markush grouping is for alternatives of chemical compounds, they are regarded as being of a similar nature where the following criteria are fulfilled:

(i) all alternatives have a common property or activity, and

(ii) (a) a common structure is present – that is, a significant structural element is shared by all of the alternatives, or

  (b) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.

5.120.   When dealing with alternatives, if it can be shown that at least one Markush alternative is not novel over the prior art, the question of unity of invention will be reconsidered by the examiner.  Reconsideration does not necessarily imply that an objection of lack of unity will be raised.

5.121.   Can both intermediate and final products be claimed?  The situation involving intermediate and final products is also governed by Rule 13.2.  The term “intermediate” is intended to mean intermediate or starting products.  Such products have the ability to be used to produce final products through a physical or chemical change in which the intermediate loses its identity.  Unity of invention should be considered to be present in the context of intermediate and final products where the following two conditions are fulfilled:

(i)  the intermediate and final products have the same essential structural element, in that:

(a) the basic chemical structures of the intermediate and the final products are the same, or

(b) the chemical structures of the two products are technically closely interrelated, the intermediate incorporating an essential structural element into the final product, and

(ii)  the intermediate and final products are technically interrelated, this meaning that the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element.

5.122.   Unity of invention may also be considered to be present between intermediate and final products of which the structures are not known – for example, as between an intermediate having a known structure and a final product the structure of which is not known, or as between an intermediate of unknown structure and a final product of unknown structure.  In order to satisfy unity in such cases, there must be sufficient evidence to lead one to conclude that the intermediate and final products are technically closely interrelated as, for example, when the intermediate contains the same essential element as the final product or incorporates an essential element into the final product.

Article 2(x)
27(1)
Rule 13

5.123.   An international application which complies with the unity of invention requirements laid down in Rule 13 must be accepted by all the designated and elected Offices, since Article 27(1) does not allow any national law (as defined in Article 2(x)) to require compliance with requirements relating to the contents of the international application different from or additional to those provided for in the PCT.

Rule 11
11.4(a)

5.124.   What are the physical requirements for the claims?  The physical requirements are the same as those for the description as outlined in paragraph 5.105.  Note that the claims must commence on a new sheet.

Rule 11.10(c)

5.125.   May claims include tables?  The claims may include tables if this is desirable in view of the subject matter involved.  In this case, the tables must be included in the text of the relevant claim;  they may not be annexed to the claims nor may reference be made to tables contained in the description (see paragraph 5.109).

Rule 91

5.126.   How can obvious mistakes in the claims be rectified?  The procedure for rectification of obvious mistakes is explained in paragraphs 11.033 to 11.044.  The omission of an entire sheet of the claims cannot be rectified without affecting the international filing date (see paragraphs 6.025 and 6.026).  It is recommended that a request for the rectification of obvious mistakes in the claims be made only if the mistake is liable to affect the international search;  otherwise, the rectification should be made by amending the claims (see paragraph 5.127).

Article 19
28
34(2)(b)
41(1)

5.127.   Can the claims be amended during the international phase?  Yes, the claims may be amended under Article 19 on receipt of the international search report (see paragraphs 9.004 to 9.011);  they may also be amended during international preliminary examination if the applicant has filed a demand (see paragraphs 10.024 and 10.067) and during the national phase.


THE DRAWINGS

Article 3(2)
7
Rule 7.1

5.128.   When is the inclusion of drawings required in the international application?  The international application must contain drawings when they are necessary for the understanding of the invention.  Moreover where, without drawings being actually necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings, the applicant may include such drawings and any designated Office may require the applicant to file such drawings during the national phase.

Rule 7.1

5.129.   Perspectives, exploded views, sections and cross-sections, and details on a different scale are all considered to be drawings.  Drawings also cover flow sheets and diagrams, such as functional diagrams and graphic representations of a given phenomenon which express the relationship between two or more parameters.

Rule 11.10

5.130.   Where chemical or mathematical formulae and tables are included in the description, claims or abstract, they are not considered to be drawings and are thus not subject to the same requirements as drawings (see paragraphs 5.131 to 5.133).  However, such graphic forms may be submitted as drawings, in which case they are subject to the same requirements as drawings.

Rule 11.10
11.11
11.13

5.131.   How must the drawings be presented?  Drawings must be presented on one or more separate sheets.  They may not be included in the description, the claims or the abstract.  They may not contain text matter, except a single word or words when absolutely indispensable.  Rules 11.10 to 11.13 contain detailed requirements as to further physical requirements of drawings.  Any drawing meeting those requirements must be accepted in the national phase by the designated Offices.  Drawings newly executed according to national standards may not be required during the national phase if the drawings filed with the international application comply with Rule 11.  A file reference may be indicated on each sheet of the drawings as for the description (see paragraph 5.105).

Rule 11.2(a)

5.132.   The drawings must be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset and microfilming, in any number of copies.

Rule 11.2(a)
11.2(b)
and (c)
11.3
11.5
11.6(c)
11.12

5.133.   Drawings must be on sheets of A4 paper (29.7 cm x 21 cm) which must be flexible, strong, white, smooth, non-shiny and durable.  The sheets must be free from creases and cracks;  they must not be folded.  Each sheet must be reasonably free from erasures and must be free from alterations, overwriting and interlineations.  Only one side of each sheet may be used.  The usable surface of sheets must not exceed 26.2 cm x 17.0 cm.  The sheets must not contain frames around the usable surface.  The minimum margins which must be observed are:  top and left side:  2.5 cm;  right side:  1.5 cm;  bottom:  1.0 cm.

Rule 11.10(d)
11.13(j)

5.134.   Should figures of drawings be arranged in a particular manner?  All the figures constituting the drawings must be grouped together on a sheet or sheets without waste of space, but clearly separated from each other.  However, figures should not be separated by lines.

Rule 11.10(d)
11.13(j)

5.135.   As far as possible, all figures of the drawings should be set out upright on the sheets.  Where the drawings cannot be presented satisfactorily in an upright position, they may be placed sideways, with the tops of the drawings on the left-hand side of the sheet.  Thus, a figure which is broader than it is high, may be set out so that the bottom of the figure lies parallel to and along the right-hand side of the sheet.  In this case, if other figures are drawn on the same sheet, they should be set out in the same way, so that all the figures on a single sheet lie in the same position.  Similar considerations apply to tables and chemical and mathematical formulae (see paragraphs 5.107 and 5.109).

5.136.   The drawings should contain as many figures as may be necessary to adequately show the claimed invention.  The views may be plan, elevation, section, or perspective views;  detail views of portions or elements, on a larger scale if necessary, may be used.  Exploded views, with the separated parts of the same figure embraced by a bracket, to show the relationship or order of assembly of various parts, are permissible.  One figure should not be placed upon or within the outline of another figure.

5.137.   Where an invention concerns improvements to details of existing devices and machines, a general figure may be desirable to indicate where on the device or machine the improvement is situated, in order to ensure that the drawings are readily understood.  If, for example, the invention relates to the fixing of an elastic diaphragm in a diaphragm pump, a figure – generally the first – may represent the entire pump, as improved by the invention, the details of which will then be given in the other figures.  On the other hand, it would be unnecessary to represent the entire machine comprising this diaphragm, for example the automobile in which the diaphragm pump circulates the fuel.

5.138.   It is sufficient to choose the views which are the most representative and contain the minimum of hidden parts, so that the object is completely and unambiguously defined by means of the smallest possible number of views.  To this end, it is sometimes sufficient to replace the various views of an object by a single perspective view.  The simplest view compatible with the desired result should be chosen.

Rule 11.13(i)

5.139.   Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the figures appearing on the various sheets.  Partial figures drawn on separate sheets must always be capable of being linked edge to edge, that is to say, no partial figure may contain parts of another partial figure.  A very long figure may be divided into several parts placed one above the other on a single sheet.  However, the relationship between the different parts must be clear and unambiguous.  It is therefore recommended that a smaller scale figure be included showing the whole formed by the partial figures and indicating the positions of the parts shown.

Rule 11.7
Section 207(b)

5.140.   How must drawings be numbered?  All sheets of drawings must be numbered in the center of either the top or the bottom of each sheet but not in the margin (as for the sheets of the description – see paragraph 5.106) in numbers larger than those used as reference signs in order to avoid confusion with the latter.  For drawings, a separate series of numbers is to be used (see paragraph 5.012).  The number of each sheet of the drawings must consist of two Arabic numerals separated by an oblique stroke, the first being the sheet number and the second being the total number of sheets of drawings.  For example, “2/5” would be used for the second sheet of drawings where there are five sheets in all and “1/1” would be used in the case of a single sheet.

Rule 11.13(k)
49.5(f)

5.141.   Different figures on the sheets of drawings must be numbered in Arabic numerals consecutively and independently of the numbering of the sheets and, if possible, in the order in which they appear.  The numbers of the figures should be preceded by the expression “Fig.,” whatever the language of the international application.  Where a single figure is sufficient to illustrate the claimed invention, it should not be numbered and the abbreviation “Fig.” should not appear.  Numbers and letters identifying the figures must be simple and clear and may not be used in association with brackets, circles, or inverted commas, except as regards partial figures intended to form one complete figure, irrespective of whether they appear on one or several sheets.  In this case the complete figure may be identified by the same number followed by a capital letter (for example, Fig. 7B).

5.142.   The different figures should preferably be set out, as far as possible, on each sheet in ascending numerical order from left to right and from top to bottom.  If one of two figures illustrates on a larger scale a detail from the other, each figure should be numbered separately, and if possible, consecutively.

Rule 11.13

5.143.   How should drawings be executed?  The drawings must be executed in durable, black, uniformly thick and well-defined lines and strokes.  In all cases, the thickness of the lines and strokes must take into account the scale, nature, execution and perfect legibility of the drawing and of the reproductions.  All lines in the drawings must, ordinarily, be drawn with the aid of a drafting instrument, except those which by their nature do not permit the use of such instruments, for example, irregular diagrams, ornamental structures and curved reference lines (see paragraph 5.145).

5.144.   May lines of different thicknesses be used in the same drawing?  Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.  One could, for instance, use:

– a continuous thick line for edging and outlining views and cross-sections;

– a continuous thin line for reference lines (see paragraph 5.145 for further details), hatching, outlining parts of adjoining elements, fictitious lines of intersection of surfaces connected by curved or rounded edges;

– a continuous thin line drawn freehand for delimiting views, part sections or interrupted views;

– a thin broken line made up of short dashes for hidden edges and contours;

– a dot-dash thin line for axes and planes of symmetry, extreme positions of movable elements, in front of a cross-section;

– a thin line terminating in two thick lines for outlines of cross-sections.

5.145.   How should reference lines be shown?  Reference lines (also referred to as leading lines), that is, lines between the reference signs (for example, reference numerals) and the details referred to, may be straight or curved and should be as short as possible.  They must originate in the immediate proximity of the reference sign and extend to the feature indicated.  Reference lines for certain reference signs may be omitted.  Reference signs of this type, which are not connected to anything, will then indicate the surface or cross-section on which they are placed.  In such cases the reference sign may be underlined to make it quite clear that the line has not been left out by mistake.  Reference lines must be executed in the same way as other lines in the drawing (see paragraph 5.143).

5.146.   Arrows may be used at the end of the reference lines provided that their meaning is clear.  They may indicate a number of points:

(i)  a freestanding arrow indicates the entire section towards which it points; 

(ii)  an arrow touching a line indicates the surface shown by the line looking along the direction of the arrow; 

(iii)  arrows may also be used in appropriate cases to show the direction of movement.

Rule 11.13(b)

5.147.   How are cross-sections to be represented?  In making and representing cross-sections, certain conditions must be observed with regard to the indication and identification of the figures concerned and how they are to be represented, as more fully explained in paragraphs 5.148 and  5.149.

5.148.   Where a figure is a cross-section on another figure, the latter should indicate the position of the section and may indicate the viewing direction by arrows at each end.  In addition, in order to allow each sectional figure to be quickly identified, especially where several cross-sections are made on the same figure, each end of the cross-section line should be marked on the diagram with the same single Arabic or Roman numeral which identifies the figure in which the section is illustrated.  A cross-section represents that part of an object which is situated on a cutting surface.  In industrial drawings, the cross-section is that part of the object which is behind the cutting surface from the point of view of the person looking at it.  Cutting surfaces are generally plane surfaces and if they are not, they must be defined precisely.  Cross-sections must always follow the cutting surface, whatever it may be.

5.149.   A cross-section must be set out and drawn in the same manner as a normal view whose parts in cross-section are hatched with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched.  Hatching should not impede the clear reading of the reference signs and reference lines.  Consequently, if it is not possible to place reference signs outside the hatched area, the hatching may be broken off wherever reference signs are inserted.  Certain types of hatching may be given a specific meaning.  The hatching should be at a substantial angle to the surrounding axes or principal lines, preferably 45º.  The various parts of a cross-section of the same item should be hatched in the same manner.  The hatching of juxtaposed different elements should be angled in a different way.  In the case of large areas, hatching can be confined to an edging drawn around the inside of the outline of the area to be hatched.

Rule 11.13(c)

5.150.   What should be the scale of figures of the drawings?  The scale of the figure should be such that all the essential details can be clearly distinguished in a linear reduction in size to two-thirds.  In exceptional cases, where required, the scale of the drawing may be graphically represented.  Indications such as “actual size” or “scale ½” on the drawings or in the description, are not permitted, since these lose their meaning with reproduction in different format.

Rule 11.13(g)

5.151.   Each element of each figure must be in proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure.  As a preferred alternative to a difference in proportion within one figure for the purpose of achieving the necessary clarity, a supplementary figure should be added giving a larger scale illustration of the element of the initial figure.  In such cases, it is recommended that the enlarged element shown in the second figure be surrounded by a finely drawn or “dot-dash” circle in the first figure pinpointing its location without obscuring the figure.

Rule 11.13(e)

5.152.   How should numbers, letters, reference signs and like indications be presented and applied to drawings?  Numbers, letters and reference signs and any other data given on the sheets of drawings, such as the numbering of figures, and of the sheets of the drawings, acceptable text matter, graduations on scales, etc., must be simple and clear, and not used in association with any brackets, inverted commas, circles or outlines whatsoever.   Signs indicating minutes, seconds or degrees are permitted.  Numbers, letters and reference signs should be laid out in the same direction as the diagram so as to avoid having to rotate the sheet.  Such numbers, letters and reference signs should not be so placed in the closed and complex parts of the drawings as to interfere with a thorough comprehension of the same, and therefore should rarely cross or mingle with the lines.  As a general rule, numbers, letters and reference signs should be placed as closely as possible to the part in question.

Rule 11.13(h)

5.153.   A minimum size of 0.32 cm is required for all numbers and letters used on the drawings so that their reduction in size to two-thirds remains easily legible.  The Latin alphabet should normally be used for letters.  The Greek alphabet is to be accepted, however, where it is customarily used, for example, to indicate angles, wavelengths, etc.

Rule 11.13(l)

5.154.   Reference signs are to be used in a manner which is consistent as between the description, claims and drawings.  In particular, reference signs not mentioned in the description must not appear in the drawings, and vice versa.  Features of a drawing should not be designated by a reference sign in cases where the feature itself has not been described.  This situation may arise as a result of amendments to the description involving the deletion of pages or whole paragraphs.  One solution would be to delete reference signs on the drawing which have been deleted in the description.  Where for any reason a figure is deleted, all reference signs relating solely to that figure appearing in the description and claims should also be deleted.

Rule 11.13(m)

5.155.   The same features, when denoted by reference signs, must, throughout the international application, be denoted by the same signs.  However, where several variants or embodiments of a claimed invention are described, each with reference to a particular figure, and where each variant contains features whose function is the same or basically the same, the features may, if this is indicated in the description, be identified by reference numbers made up of the number of the figure to which it relates followed by the number of the feature, which is the same for all variants, so that a single number is formed.  For example, the common feature “15” would be indicated by “115” in Fig.  1, while the corresponding feature would be indicated by “215” in Fig.  2, thereby allowing the individual feature and the figure on which it is to be considered to be indicated at the same time.  Complex cases involving many pages of drawings may be made easier to read if, when the individual variants or embodiments are described with reference to particular groups of figures, the common reference sign is prefixed by the number of the particular variant or embodiment to which it relates;  however, this should, if used, be explained in the description.

Rule 11.11

5.156.   May drawings contain text matter?  The drawings must not contain text matter, except a single word or words when absolutely indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB” and in the case of electric circuits and block schematic or flow sheet diagrams, a few short catch words indispensable for understanding.  Any words used must be so placed that if translated, they may be pasted over without interfering with any lines of the drawings.

Rule 10.1(d)
and (e)

5.157.   May symbols be used in drawings?  Known devices may be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art provided no further detail is essential for understanding the subject matter of the claimed invention.  Other signs and symbols may be used provided that they are not likely to be confused with existing conventional symbols, that they are readily identifiable, that is, simple, and providing that they are clearly explained in the text of the description.  Different types of hatching may also have different conventional meanings as regards the nature of a material seen in cross-section.

5.158.   Is the use of shading permitted?  The use of shading in figures is allowed provided this assists in their understanding and is not so extensive as to impede legibility.  Shading may, for instance, be used to indicate the shape of spherical, cylindrical, conical elements, etc.  Flat parts may also be lightly shaded.  Such shading is allowed in the case of parts shown in perspective but not for cross-sections.  Only spaced lines may be used for shading, not fully blacked out areas.  These lines must be thin, as few in number as possible and they must contrast with the rest of the drawings.

5.159.   May a photograph be presented instead of a drawing?  The PCT makes no provision for photographs.  Nevertheless, they are allowed where it is impossible to present in a drawing what is to be shown (for instance, crystalline structures).  Where, exceptionally, photographs are submitted, they must be black and white, must be on sheets of A4 size, and must respect the minimum margins (see paragraph 5.133) and admit of direct reproduction.  Color photographs are not accepted, nor are color drawings.  Photographs are retained by the International Bureau as part of the record copy.

Rule 11.13(n)

5.160.   May a list of reference signs used in the drawings be included in the description?  In the case of international applications dealing with complex subjects and incorporating a large number of drawings, a separate sheet listing all reference signs may be included at the end of the description as a part thereof.  This list may take whatever form is appropriate and contain all the reference signs together with the designation of the features which they denote.  This method could have the advantage of allowing an easier reference to the meaning of the various reference signs employed and understanding of the drawings.

Rule 91

5.161.   How can obvious mistakes in the drawings be rectified?  The procedure for rectification of obvious mistakes is explained in paragraphs 11.033 to 11.044.  The omission of an entire sheet of drawings cannot be rectified without affecting the international filing date (see paragraphs 6.025(i)(b) and 6.026).  Changes other than the rectification of obvious mistakes are considered amendments (see paragraph 5.162).

Article 28
34(2)(b)
41(1)

5.162.   Can the drawings be amended during the international phase?  The drawings can be amended during the international phase only if the applicant files a demand for international preliminary examination (see paragraph 10.001).  The drawings can also be amended during the national phase.

5.163.   As regards the figure or, exceptionally, figures to accompany the abstract, see paragraph 5.171.


THE ABSTRACT

Article 3(3)
14(1)(a)(iv)
Rule 8

5.164.   How must the abstract be drafted?  The abstract must consist of a summary of the disclosure as contained in the description, the claims and any drawings.  Where applicable, it must also contain the most characteristic chemical formula.  The abstract must be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English).  As a rule of thumb, it can be said that the volume of the text of the abstract, including one of the figures from the drawings (if any), should not exceed what can be accommodated on an A4 sheet of typewritten matter, 1½ spaced.  The other physical requirements must correspond to those for the description, outlined in paragraph 5.105.  The abstract must be so drafted that it can efficiently serve as a scanning tool for the purposes of searching in the particular art.  These and other requirements concerning the abstract are spelled out in detail in Rule 8.

5.165.   The abstract should be primarily related to what is new in the art to which the invention pertains.  Phrases should not be used which are implicit (for instance, “the invention relates to …”).

5.166.   If the invention is in the nature of a modification to an apparatus, process, product or composition, the abstract should be directed to the technical disclosure of the modification.  If the invention is of a basic nature, the entire technical disclosure may be new in the art and the abstract should be directed to the entire disclosure.  If an international application relating to a product, particularly a compound or composition, also contains significant disclosure of its method of preparation or use, this matter should also be abstracted.  If the disclosure involves alternatives, the abstract should deal with the preferred alternative and identify the others if this can be done succinctly;  if this cannot be done, it should mention that they exist and whether they differ substantially from the preferred alternative.

5.167.   Where applicable, and provided the international application contains the information, the abstract should include at least the following:  (1) if the invention is a machine, apparatus, or system, its organization and operation;  (2) if the invention is an article, its method of making;  (3) if the invention is a chemical compound, its identity and preparation;  (4) if the invention is a mixture, its ingredients;  (5) if the invention is a process, the steps.  Extensive mechanical and design details of apparatus should not be given.

Rule 8.1(a)(ii)

5.168.   With regard particularly to chemical inventions for compounds or compositions, the general nature of the compound or composition should be given as well as the use thereof, for example, “the compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a class should be by a typical example.  For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example.  Wherever applicable, the chemical formula should be given which, among all the formulae contained in the international application, best characterizes the invention.

Rule 8.1(c)

5.169.   The abstract must not contain statements on the alleged merits or value of the claimed invention or on its speculative application.

Rule 3.3(a)(iii)
8.2

5.170.   When must a figure be suggested to accompany the abstract?  Where the international application contains drawings, the applicant must indicate, in the check list of the request, the number of the figure in the drawings which the applicant suggests should be published with the abstract.

5.171.   The figure illustrating the abstract must be the figure which best characterizes the claimed invention and must be chosen from the drawings accompanying the international application.  Only one figure should be indicated.  The abstract may exceptionally be illustrated by more than one figure.  If none of the figures is found useful for the understanding of the abstract, no figure need be indicated in the check list.  The figure or figures that will accompany the abstract at the time the international application is published may not be included in the abstract.

Section 207

5.172.   The abstract must be presented on a separate sheet which must appear after the claims and be numbered accordingly (see paragraph 5.012).

Article 14(1)(a)(iv)
and (b)
Rule 26.2
38.2
38.3

5.173.   What happens if the abstract is missing or defective?  Where the receiving Office finds that the abstract is missing, it invites the applicant to furnish it within a time limit of two months from the date of the invitation to correct.  The international application is considered withdrawn if no abstract is furnished to the receiving Office within the time limit fixed.  Where the receiving Office has not invited the applicant to furnish an abstract, the International Searching Authority establishes one.  The same applies where the abstract does not comply with the requirements outlined in the preceding paragraphs (see also paragraph 7.022).  Where the abstract is established by the International Searching Authority, the applicant may submit comments on it within one month from the date of mailing of the international search report.

Rule 38.3

5.174.   Can an abstract be corrected even if the International Searching Authority has already approved it?  The applicant is entitled, until the expiration of one month from the date of mailing of the international search report, to submit to the International Searching Authority proposed modifications of the abstract.  It will be up to the Authority to decide whether to modify the abstract accordingly.


OTHER FORMAL REQUIREMENTS

Article 21(6)
Rule 9

5.175.   What other formal requirements does the international application have to meet?  The international application may not contain matter contrary to morality or public order, disparaging statements or obviously irrelevant or unnecessary matter.  The details are set out in Rule 9.

Rule 10

5.176.   There are certain requirements as to the technical terminology and signs to be used (metric system, etc.).  They are specified in Rule 10.  The use of such prescribed technical terminology will be accepted by all designated Offices.

Article 3(4)(ii)
14(1)(a)(v)
Rule 11

5.177.   The international application must comply with certain physical requirements, such as requirements concerning fitness for reproduction, the paper to be used, the manner of writing (generally typewritten or printed), etc.  The details are spelled out in Rule 11.  They are, in general, very similar to the requirements applied by the major Patent Offices for national applications (and by the Eurasian Patent Office and the European Patent Office for Eurasian and European patent applications, respectively).

Rule 4.16

5.178.   Where any name or address is written in characters other than those of the Latin alphabet (for example, Chinese, Cyrillic or Japanese), it must be transliterated or translated into English.  For details, see Rule 4.16.

Rule 11.1(a)
and (b)
21

5.179.   In how many copies must an international application be filed?  An international application, and, where applicable, a translation of the international application, must be filed in one, two or three copies, depending on the requirements of the receiving Office.  Annex C contains the relevant information.  See also Rule 21.

Article 12
Rule 21.1
22.1(a)
23.1(a)
Section 305

5.180.   It is to be noted that there must eventually be three copies of every international application:  one is kept by the receiving Office (the “home copy”), one is transmitted by the receiving Office to, and is kept by, the International Bureau (the “record copy”), and one is transmitted by the receiving Office to, and kept by, the International Searching Authority (the “search copy”).  If less than the required number of copies is filed by the applicant (see paragraph 5.179), the receiving Office is responsible for preparing the additional copies and may charge a fee to the applicant.

Rule 12
12.3
21.1
22.1(a)
23.1(a)
Section 305bis

5.181.   Where the international application was filed in a language which is accepted by the receiving Office but not by the International Searching Authority which is to carry out the international search, the applicant has to furnish a translation of the international application (see paragraphs 6.013 to 6.013 for details).  In that case, the receiving Office forwards a copy of the international application in the language of filing (the “record copy”) to the International Bureau, a copy (the “search copy” to the International Searching Authority and retains one copy (the “home copy”).  When the receiving Office receives the translation of the international application, it forwards one copy to the International Bureau (the “record copy – translation (Rule 12.3)”), keeps one copy for its files (the "home copy – translation (Rule 12.3)”) and forwards the third copy, together with a copy of the request (the “search copy – translation (Rule 12.3)”) to the International Searching Authority.  If the translation is filed by the applicant in fewer than the required number of copies (see paragraph 5.179), the receiving Office is responsible for preparing the additional copies and may charge a fee to the applicant.

Rule 12.4
21.1
22.1(a)
Section 305bis

5.182.   Where the international application was filed in a language which is accepted by the receiving Office and by the International Searching Authority which is to carry out the international search but which is not also in a language of publication, the applicant has to furnish a translation of the international application (see paragraphs 6.013 to 6.023 for details).  In that case, the receiving Office forwards a copy of the international application in the language of filing (the “record copy”) to the International Bureau, a copy (the “search copy”) to the International Searching Authority and retains one copy (the “home copy”).  When the receiving Office receives the translation of the international application, it forwards one copy to the International Bureau (the “record copy – translation (Rule 12.4)”) and keeps one copy for its files (the “home copy – translation (Rule 12.4)”).  No copy of the translation of the international application will therefore be forwarded to the International Searching Authority by the receiving Office.  If the translation is filed by the applicant in fewer than the required number of copies (see paragraph 5.179), the receiving Office is responsible for preparing the additional copy and may charge a fee to the applicant. 

Rule 62.1(i)
Section 420

5.183.   Where the International Preliminary Examining Authority is not part of the same national Office or intergovernmental organization as the International Searching Authority, the International Bureau will, promptly upon receipt of the international search report or, if the demand was received after the international search report, promptly upon receipt of the demand, send a copy of the international application and the international search report together with a copy of the written opinion of the International Searching Authority to the International Preliminary Examining Authority.  Where neither the language in which the international application was filed nor the language in which the international application is published is accepted by the International Preliminary Examining Authority that is to carry out the international preliminary examination, the applicant must furnish with the demand a translation of the international application into a language which is both a language accepted by that Authority and a language of publication.  No such translation is required where the International Searching Authority and the International Preliminary Examining Authority are part of the same national Office or intergovernmental organization.  In cases where, instead of the international search report, a declaration under Article 17(2)(a) was issued, references in the preceding sentences to the international search report shall be considered references to the said declaration.


FEES

Article 3(4)(iv)

5.184.   What fees are due in respect of an international application?  There are three kinds of fee which must be paid in connection with every international application.

Rule 14

(i) The “transmittal fee” is fixed by, and accrues to, the receiving Office for the performance of its tasks in connection with the receipt and checking of the international application, and for the transmittal of copies of it to the International Bureau and the International Searching Authority.

Rule 16.1

(ii) The “search fee” is fixed by, and accrues to the benefit of, the International Searching Authority for the carrying out of the international search and the establishment of the international search report and the written opinion of the International Searching Authority.

Rule 15.1
96

(iii) The “international filing fee” is fixed in the Schedule of Fees annexed to the PCT Regulations and accrues to the International Bureau for the performance of various tasks, including the publication of the international application and, where applicable, the issuance on behalf of the International Searching Authority of the international preliminary report on patentability (Chapter I of the PCT) and the communication of various notifications to the applicant, the receiving Office, the International Searching Authority, the International Preliminary Examining Authority, and the designated and elected Offices.

Rule 14.1(a)
15.1
16.1(b)

5.185.   To whom are the fees payable?  All three kinds of fee referred to in paragraph 5.184 are payable to the receiving Office with which the international application is filed.  The receiving Office then transmits the search fee to the International Searching Authority and the international filing fee to the International Bureau.

Rule 14.1(b)
15.2
16.1(b)

5.186.   What is the currency in which the fees are payable?  Generally, the fees referred to in paragraph 5.184 are payable in the currency of the country in which the receiving Office is located.  Complete information on this question is contained in Annex C and, for the search fee, in Annex D.

Rule 14.1(b)
15.2
16.1(a)

5.187.   What are the amounts of the fees?  Annex C and, for the search fee, Annex D indicate the amounts of the fees referred to in paragraph 5.184.  Where the applicant has the choice between two or more International Searching Authorities (see paragraph 7.002), the amount of the search fee depends on which International Searching Authority is chosen and indicated in Box No. VII of the request form (see paragraphs 5.072 and 5.093) and in the fee calculation sheet (see paragraph 5.093).  For details on how to calculate the fee for sequence listings, see paragraph 5.101.

5.188.   What fee reductions are available? An applicant who is a natural person and who is a national of and resides in a State whose per capita national income is below 3,000 US dollars (according to the average per capita national income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997), or who is a national of and resides in one of the following States: Antigua and Barbuda, Bahrain, Barbados, Libya, Oman, the Seychelles, Singapore, Trinidad and Tobago and the United Arab Emirates, is entitled, in accordance with the Schedule of Fees, item 4, to a reduction of 90% of the international filing fee. In addition, an applicant who qualifies for the 90% reduction in the international filing fee will not have to pay the transmittal fee in respect of an international application filed with the International Bureau as receiving Office. The same applies (i.e. the 90% reduction in the international filing fee and no transmittal fee to be paid if filing is made with the International Bureau as receiving Office) for an applicant, whether a natural person or not, who is a national of and resides in a State that is classed as a least developed country by the United Nations. If there are several applicants, each must satisfy one or the other of the above-mentioned criteria. The reduction of those fees will be automatically available to any applicant so entitled on the basis of the indications of name, nationality and residence given in the request. The fee reduction will be available even if one or more of the applicants are not from PCT Contracting States, provided that each of them satisfies the above-mentioned criteria and that at least one of them is a national or resident of a PCT Contracting State and thus is entitled to file an international application. Information about PCT Contracting States whose nationals and residents are entitled to a reduction of 90% of the international filing fee, is contained in Annex C and, in particular Annex C (IB). As far as other States are concerned, inquiries should be addressed to the International Bureau. It is to be noted that, if both the reduction for electronic filing of an international application and the 90% reduction of the international filing fee are applicable, the 90% reduction is calculated after the reduction for electronic filing of an international application.

Rule 89bis
89ter
Sections 102(i)
102bis
702
707

5.189.   An applicant who files an international application is entitled to a reduction in the international filing fee provided that: 

(i) – the request is presented as a computer print-out prepared using the PCT-SAFE software (“request in PCT-EASY format”);

– the request in PCT-EASY format is filed together with a computer diskette, prepared using the PCT-SAFE software, containing a copy in electronic form of the data contained in the request and of the abstract (“PCT-EASY physical medium”);  and

– the international application is filed with a receiving Office which is prepared to accept the filing of international applications containing the request in PCT-EASY format together with the PCT-EASY physical medium;  or

(ii) – the international application is filed in electronic form with a receiving Office which is prepared to accept the filing of international applications in electronic form and in compliance with Part 7, Annex F or the basic common standard.

The reduction is 100 Swiss francs or the equivalent in the currency in which the international filing fee is paid to the receiving Office in case (i) above.  In case (ii) above, the reduction is 100 Swiss francs or the equivalent where the request and the text of the description, claims and abstract are not in character coded format, 200 Swiss francs or the equivalent where the request is in character coded format and the text of the description, claims and abstract is not in character coded format and is 300 Swiss francs or the equivalent where the request and the text of the description, claims and abstract are in character coded format.  See paragraphs 6.002, 6.007, 6.033 and 11.094 to 11.101 for further details about the use of the PCT-SAFE software or any other electronic filing software that has been specified by the receiving Office in accordance with Annex F of the Administrative Instructions or that complies with the basic common standard.

5.190.   The international search fee payable to the Austrian Office, the European Patent Office (EPO) and the Spanish Patent and Trademark Office, as well as the preliminary examination fee payable to the Austrian Office and the EPO, are reduced by 75% under certain conditions (see Annexes D and, where applicable, E).

Rule 14
15.3
16.1(f)

5.191.   When are the fees due?  All fees referred to in paragraph 5.184 may be paid at the same time, and, if they are paid upon filing of the international application by the receiving Office, no problems can arise.  However, all fees can be paid as much as one month from the date of receipt of the international application by the receiving Office.  The dates on which payments are deemed to have been received are determined by the receiving Office.  The latter applies the same rules as are applied in the case of payments for national applications.

Rule 15.3
16.1(f)

5.192.   What happens if the amounts of the fees are changed?  Where the amount of the international filing fee or of the search fee, in the currency in which the fee is payable, changes, the new amount must be paid as from the date of its entry into force.  However, where the amount of any such fee changes between the date on which the international application was received and the date of payment, the amount payable is the amount applicable on the date of receipt of the international application.  This system allows the applicant to pay all the fees for the international application, within the one-month period, on the basis of the amounts applicable on the date on which the application was filed with the receiving Office.

Rule 16bis.1
16bis.2

5.193.   What happens if the fees are not paid or not paid in full?  Where, within the time they are due, the applicant has not paid any or all of the fees, the receiving Office invites the applicant to pay the missing amount, together with a late payment fee, within a time limit of one month from the date of the invitation.  If the applicant pays the amount (including the late payment fee) specified in the invitation, the deficiency in payment has no consequences for the international application.  The amount of the late payment fee is 50% of the missing amount or, if that 50% is less than the transmittal fee, an amount equal to the transmittal fee;  but the amount of the late payment fee may not exceed the amount of 50% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets (see Annex C).

5.194.   Where, within the time by which they are due, the applicant has not paid any or all of the fees, any payment relating to the missing amount must be considered to have been received within the time by which those fees are due, if the payment is received by the receiving Office before that Office sends the invitation, referred to in the preceding paragraph, to pay the missing amount.

Article 14(3)
Rule 16bis.1(c)
27.1
29.1
Section 321

5.195.   If the transmittal fee, the international filing fee and the search fee are not paid in the prescribed currency and within the prescribed time limits, including the time limit set in the invitation from the receiving Office to pay the missing amount together with the late payment fee (see paragraph 5.193), the international application is considered withdrawn, and the receiving Office promptly informs the applicant accordingly.  However, any payment must be considered to have been received before the expiration of the applicable time limit if it is received by the receiving Office before that Office makes the applicable declaration, under Article 14(3), that the international application is considered withdrawn.

5.196.   If the amounts paid do not cover the transmittal fee (if applicable), the international filing fee and the search fee (if applicable), the moneys paid will be allocated as specified by the applicant or, in the absence of such specification, as prescribed by the Administrative Instructions by the receiving Office, which promptly notifies the applicant accordingly.

Rule 15.4
16.2

5.197.   In what cases are fees refunded?  There is no rule under the PCT concerning the possibility of asking for a refund of the transmittal fee.  The search fee and the international filing fee are refunded where, due to prescriptions concerning national security, the international application is not treated as such, or where the receiving Office refuses to accord an international filing date to the international application under Article 11(1).  Such refusal occurs, generally speaking, where the international application is defective in certain respects (see paragraph 6.005).  The receiving Office will also refund the international filing fee or the search fee to the applicant if the international application is withdrawn or considered withdrawn before the transmittal of the record copy to the International Bureau or the transmittal of the search copy to the International Searching Authority, as the case may be.

Rule 16.3
41.1

5.198.   Most International Searching Authorities will refund part or all of the search fee if the international application is withdrawn or considered withdrawn after transmittal of the search copy but before the start of the international search (see Annex D). Where the International Searching Authority must, under Rule 41.1(i), or may, under Rule 41.1(ii), take into account the results of the earlier search when carrying out the international search (see also paragraph 5.073), in accordance with Rule 16.3, the International Searching Authority must refund the search fee to the extent and under the conditions provided for in the agreement under Article 16(3)(b). International Searching Authorities are free to decide the extent and conditions for such search fee reductions.

5.199.   For refunds or reductions of fees in the national phase, see National Phase, paragraph 4.007 and National Chapters (Summaries).

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  1. PCT-SAFE contains the features of the previous PCT-EASY software.