1821 The Request [R-10.2019]
A general overview of certain aspects of the request follows.
37 C.F.R. 1.434 The request.
- (a) The request shall be made on a standardized form (PCT Rules 3 and 4 ). Copies of printed Request forms are available from the United States Patent and Trademark Office. Letters requesting printed forms should be marked "Mail Stop PCT."
- (b) The Check List portion of the Request form should indicate each document accompanying the international application on filing.
- (c) All information, for example, addresses, names of States and dates, shall be indicated in the Request as required by PCT Rule 4 and Administrative Instructions 110 and 201.
- (d) For the purposes of the designation of the United States of America, an international application shall include:
- (1) The name of the inventor; and;
- (2) A reference to any prior-filed national application or international application designating the United States of America, if the benefit of the filing date for the prior-filed application is to be claimed.
- (e) An international application may also include in the Request a declaration of the inventors as provided for in PCT Rule 4.17(iv).
The Request must either be made on a printed standard form PCT/RO/101 to be filled in with the required indications or be presented as a computer printout complying with the PCT Administrative Instructions. Any prospective applicant may obtain copies of the Request form PCT/RO/101, free of charge, from the receiving Office with which he/she plans to file his/her international application. Applicants may obtain an English language Request form from the United States Patent and Trademark Office using the following address: Mail Stop PCT, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. The Request form may also be obtained online from WIPO’s website (www.wipo.int/pct/en/forms/ ). Details of the requirements for the Request if presented as a computer printout are set out in Administrative Instructions Section 102(h).
The Request can also be filed via EFS-Web by uploading a zip file created using PCT-SAFE software which is available for downloading at WIPO’s website (www.wipo.int/ pct-safe/en/download/download_client.html ). The zip file from PCT-SAFE contains a validated PCT Request and fee calculation sheet in PDF format which are subsequently loaded in the USPTO’s Image File Wrapper (IFW). Further, submission of the zip file at the time of filing the international application entitles the applicant to a reduction of the international filing fee.
Alternatively, the Request can be filed via EFS-Web by uploading a zip file created using WIPO’s ePCT system. Submission of the zip file generated by ePCT entitles the applicant to the same reduction in international filing fees as submission of the zip file generated by PCT-SAFE. However, because WIPO’s ePCT system is web-based and the servers that support the system are located outside the United States, users of ePCT are reminded that the export of subject matter abroad pursuant to a foreign filing license from the USPTO is limited to purposes related to the filing of foreign applications, which include international applications filed in a receiving Office other than the RO/US. A foreign filing license does not authorize the export of subject matter into ePCT for generating a PCT Request for filing with the RO/US. Persons who are considering the use of WIPO’s ePCT system for preparation of the PCT Request for filing as part of an international application with the RO/US should consider contacting the Bureau of Industry and Security (BIS) at the Department of Commerce, the Directorate of Defense Trade Controls (DDTC) at the Department of State, or the National Nuclear Security Administration (NNSA) at the Department of Energy for the appropriate clearances where the international application may include technology subject to export controls. For detailed information, please see Use of WIPO’s ePCT System for Preparing the PCT Request for Filing as Part of an International Application With the USPTO as Receiving Office, 81 FR 27417, May 6, 2016 (www.gpo.gov/ fdsys/pkg/FR-2016-05-06/pdf/2016-10733.pdf ).
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 and the agent (if any), and must contain the designation of at least one Contracting State.
The Request may not contain any matter that is not specified in PCT Rules 4.1 to 4.17 or permitted under PCT Rule 4.18(a) by the Administrative Instructions. Any additional material will be deleted ex officio. See PCT Rule 4.18(b) and Administrative Instructions Section 303.
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 for the number of the month and followed by the number of the year in four digits, in that order and separated by periods, slashes or hyphens after the digit pairs of the day and of the month, for example, "20 March 2004 (20.03.2004)," "20 March 2004 (20/03/2004)," or "20 March 2004 (20-03-2004)." See Administrative Instructions Section 110.
II. SUPPLEMENTAL BOX
This box is used for any material which cannot be placed in one of the previous boxes because of space limitations. The supplemental information placed in this box should be clearly entitled with the Box number from which it is continued, e.g., "Continuation of Box No. IV." For indicating the international application as a continuation or continuation-in-part of an earlier application, see MPEP § 1828.02.
III. FILE REFERENCE
The applicant or his/her agent may indicate a file reference in the box provided for this purpose on the first sheet of the Request form, on each page of the other elements of the international application, on the first sheet of the demand form, and in any other correspondence relating to the international application. PCT Rule 11.6(f) indicates that the file reference may be included in the top margin of the sheets of the international application. As provided in Administrative Instructions Section 109, the file reference may be composed either of letters of the Latin alphabet or Arabic numerals, or both. It may not exceed 25 characters including spaces. If the file reference exceeds 25 characters, the receiving Office may ex officio truncate the reference number to 25 characters and notify the applicant. The receiving Office, the International Bureau, the International Searching Authority and the International Preliminary Examining Authority (International Authorities) will use the file reference in correspondence with the applicant.
IV. TITLE OF INVENTION
The Request must contain the title of the invention; the title must be short (preferably 2 to 7 words) and precise (PCT Rule 4.3 ). The title in Box No. I of the Request is considered to be the title of the application. The title appearing on the first page of the description (PCT Rule 5.1(a) ) and on the page containing the abstract should be consistent with the title indicated in Box No. I of the Request form.
A title should not be changed by the examiner merely because it contains words which are not considered descriptive of the invention. Words, for example, such as "improved" or "improvement of" are acceptable. If the title is otherwise not descriptive of the invention, a change to a more descriptive title should be made and the applicant informed thereof in the search report.
Where the title is missing or is inconsistent with the title in the description, the receiving Office invites the applicant to correct the missing or inconsistent title.
See MPEP § 1806 regarding who can be an applicant.
The name of a natural person 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.
The name of a legal entity must be indicated by its full official designation (preferably in capital letters).
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.
VIII. DESIGNATION OF STATES
PCT Rule 4
The Request (Contents)
4.9 Designation of States; Kinds of Protection; National and Regional Patents
- (a) The filing of a request shall constitute:
- (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:
- (b) Notwithstanding paragraph (a)(i), if, on October 5, 2005, the national law of a Contracting State provides that the filing of an international application which contains the designation of that State and claims the priority of an earlier national application having effect in that State shall have the result that the earlier national application ceases to have effect with the same consequences as the withdrawal of the earlier national application, any request in which the priority of an earlier national application filed in that State is claimed may contain an indication that the designation of that State is not made, provided that the designated Office notifies the International Bureau by January 5, 2006, that this paragraph shall apply in respect of designations of that State and that the notification is still in force on the international filing date. The information received shall be promptly published by the International Bureau in the Gazette.
37 C.F.R. 1.432 Designation of States by filing an international application.
The filing of an international application request shall constitute:
- (a) The designation of all Contracting States that are bound by the Treaty on the international filing date;
- (b) An indication that the international application is, in respect of each designated State to which PCT 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
- (c) An indication that the international application is, in respect of each designated State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) applies, a national patent.
The filing of an international application request constitutes: (A) the designation of all Contracting States that are bound by the Treaty on the international filing date; (B) an indication that the international application is, in respect of each designated State to which PCT 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 (C) an indication that the international application is, in respect of each designated State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) applies, a national patent. See 37 CFR 1.432 and PCT Rule 4.9.
Pursuant to PCT Rule 4.9(b), certain States may be excepted from the all-inclusive designation system under limited circumstances. Specifically, where the international application contains a priority claim to an earlier national application having effect in a State whose national law provides that the designation of such State has the result that the earlier national application ceases to have effect in such State, then the request may contain an indication that such State is not designated. Applicability of PCT Rule 4.9(b) is contingent upon timely notice by the affected Office to the International Bureau. The Request may exclude the following designations: Germany (DE), Japan (JP), and Republic of Korea (KR). See Reservations, Declarations, Notifications and Incompatibilities at www.wipo.int/ pct/en/texts/reservations/res_incomp.html.