William and Mary Law School

PCT Chapter I

Dear Readers,

I ended work this Wednesday so I will try to conclude my blog with a few additional posts on PCTs.  I worked extensively with PCTs this summer.  PCTs have three stages: Chapter I, Chapter II, and the National Stage.  Chapter I is controlled by MPEP 1810.  There are 7 elements necessary to receive a filing date for an international application. 

1.    There must be an indication that at least one applicant is a national or resident of the PCT contracting state. 
2.    The International Application must be in Arabic, Chinese, English, French, German, Japanese, Russian or Spanish. 
3.    There must be some indication that the application is an International Application.  Usually just the words International Application.
4.    If the International Application is before January 1st 2004, then designation of a contracting state is necessary.  After this date, there is an automatic designation. 
5.    Applicant name.
6.    A description.
7.    One or more claims. 

There are other required elements for an International Application however they are not necessary to establish a filing date and may be submitted later.    

1.    Any request that the International Application be processed.
2.    Abstract
3.    Drawings
4.    Fee
5.    Translation.

After a filing date is establish an international search for prior art usually begins.  If the invention lacks unity of invention, then the applicant under MPEP1850 pays an additional search fee.  The International Searching Authority conducts the search for material resembling the invention.  In the US, it is generally the PTO or EPO that does the searching. An invention must have novelty, an inventive step, and industrial applicability.  The International Search Report is mailed to applicant 16 months from International Application filing date or from the earliest priority date.  The report does not contain opinions, reasoning, arguments or explanations.  It merely indicates examiner’s approval or amendments of title or text of abstract, and selection of representative drawings. 

Applicant can elect to amend her claims within 2 months from International Search Report mailing date. She can amend only once during the Chapter I process.  The International Bureau will publish the international application along with possible amendments.  Publication occurs 18 months form International Application filing date or the earliest priority date.  If the applicant requests for an even earlier publication date, the USPTO may grant that date.  Publication may be delayed by withdrawing priority claim.  Applicant can avoid publication completely by withdrawing her International Application or priority claim within 17.5 months from international application filing date.  Further if the US is the only contracting/designated state in a PCT application, the International Application will not be published automatically by the International Bureau at 18 months. 

I decided to split a lengthier blog into three separate pieces.  The next two pieces follow. 

Best regards,

Tony