Go to MPEP - Table of Contents
1893.03(e) Papers Received from the International Bureau and Placed in a U.S. National Stage Application File [R-2] - 1800 Patent Cooperation Treaty
1893.03(e) Papers Received from the International Bureau and Placed in a U.S. National Stage Application File [R-2]
The national stage application includes papers forwarded by the International Bureau and papers from applicant. Some of the papers from the International Bureau are identified in this section with a brief note as to their importance to the national stage application. The examiner should review each such paper and the important aspect indicated.
THE PAMPHLET
The Pamphlet includes
(A) a cover page with the applicant/inventor data, the application data (*>application< number, filing date, etc.) and the Abstract (and, if appropriate, a figure of drawing),
(B) the description, claims and drawing parts of the international application, and
(C) the search report (Form PCT/ISA/210).
The cover page is important as a source of the correct application data, most importantly the filing date and priority date accorded to the international application. If the pamphlet is published in English, **>the< Office will use the description, claims, abstract and drawings as published in the pamphlet for the U.S. national stage *>application< under 35 U.S.C. 371. The description, claims and drawing parts of the international application reflect the application subject matter on the international filing date and are important for comparison with any amendments to check for new matter. The search report reflects the International Searching Authority's opinion regarding the prior art.
When the international application is published as the pamphlet, the abstract is reproduced on the cover page of the publication, even though it appears on a separate sheet of the international application in accordance with PCT Rule 11.4(a). Thus the requirement of 37 CFR 1.52(b) that the abstract "commence on a separate >physical< sheet >or electronic page<" does not apply to the copy of the application (pamphlet) communicated to the designated Offices by the International Bureau under PCT Article 20. Accordingly, it is improper for the examiner of the U.S. national stage application to require the applicant to provide an abstract commencing on a separate sheet if the abstract does not appear on a separate sheet in the pamphlet. Unless the abstract is properly amended under the U.S. rules during national stage processing, the abstract that appears on the cover page of the pamphlet will be the abstract published by the USPTO under 35 U.S.C. 122(b) and in any U.S. patent issuing from the application.
>In addition, the Office will normally use the title of the invention indicated on the cover page of the publication as the title of the national stage application that will appear on the filing receipt. The cover page will include an English translation of the title if the international application was published in a foreign language. See PCT Rule 48.3(c). Applicants desiring to have the filing receipt reflect a title that is different than the English language title appearing on the cover page must submit either a preliminary amendment amending the title or an application data sheet (37 CFR 1.76) with the desired title. Filing receipts are mailed shortly after the mailing of the NOTIFICATION OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495 (Form PCT/DO/EO/903).<
THE INTERNATIONAL PRELIMINARY EXAMINATION REPORT **>AND THE INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY (CHAPTER I AND II)
When an international preliminary examination is performed by an International Preliminary Examining Authority (IPEA), an international preliminary examination report (IPER) is prepared on Form PCT/IPEA/409 by the IPEA and sent to the elected Offices. This report reflects the IPEA's non-binding opinion regarding novelty, inventive step and industrial applicability. For international applications filed on or after January 1, 2004, the IPER bears the title "International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty)".
If the applicant did not timely file a demand for international preliminary examination with the IPEA, and the international application has a filing date on or after January 1, 2004, then an "International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty)" reflecting the International Searching Authority's (ISA's) non-binding opinion regarding novelty, inventive step and industrial applicability is sent to the designated Offices.
The examiner may adopt any portion or all of the report on patentability of the IPEA or ISA upon consideration in the national stage so long as it is consistent with U.S. practice. The first Office action on the merits should indicate the report on patentability of the IPEA or ISA has been considered by the examiner. The indication may be a mere acknowledgement.
The IPER may include annexes, i.e., amendments to the international application that were made during the international phase. See MPEP § 1893.01(a)(3). These annexes will be placed in the U.S. national stage application file. Consequently, if the international application has been extensively amended during the international stage, there may be a number of different copies of the description, claims and drawings present in the national stage application file. The IPER may be consulted in Box No. I "Basis of the report" to determine what pages the report was based upon. Using the IPER as a roadmap of what happened during Chapter II examination will help determine which version should be examined.
Original sheets, substitute sheets, and rectified sheets included as part of the application examined under Chapter II are listed in the IPER as pages "originally filed/furnished." Replacement sheets showing amendments made under PCT Article 19 or 34 and considered during Chapter II are also listed. See MPEP § 1879. If the IPER was established in a language other than English, the International Bureau will translate the IPER into English. However, the International Bureau will not translate the annexes to the IPER into English. Unless proper and timely translations are furnished by the applicant, foreign language annexes will be considered canceled. See MPEP § 1893.01(a)(3). All replacement sheets in the international application are marked with the international application number and the date of receipt in the upper right-hand corner. Replacement sheets that contain changes in format only and are accepted by the receiving Office are marked as "SUBSTITUTE SHEET" at the bottom of the page. Replacement sheets that contain a rectification of an obvious error and are accepted by either the ISA or the IPEA are marked as "RECTIFIED SHEET" at the bottom of the page. Additionally, replacement sheets to the claims submitted to the International Bureau as Article 19 Amendments will be marked as "AMENDED SHEET (Article 19)" at the bottom of the page. Furthermore, replacement sheets to the description, claims and drawings submitted to the IPEA as Article 34 Amendments will be marked as "AMENDED SHEET" at the bottom of the page. The IPER will indicate in "Box No. I Basis of the Report" that replacements sheets submitted under either PCT Article 19 or 34 have been considered and will indicate the date they were received and the replacement sheets will be annexed to the IPER. The NOTIFICATION OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495 (Form PCT/DO/EO/903) should also be consulted, as it will indicate if the annexes or their translation have not been entered. A sample copy of the form has been reproduced at the end of MPEP § 1893.03(a). Additionally, if the annexes have been entered, the National Stage Processing Division of the Office of PCT Operations will write in pencil on any original sheet(s) or translations thereof that were replaced, "Replaced by Article 34 Amendment" and on the amended sheet(s) or translations thereof," Article 34."<
THE PRIORITY DOCUMENT
See the discussion in MPEP § 1893.03(c).
NOTIFICATION OF WITHDRAWAL
If the national stage application papers include an indication that the international application or US designation has been withdrawn, then the application should be brought to the attention of the Office of PCT Legal Administration to determine whether the withdrawal occurred prior to completion of the requirements under 35 U.S.C. 371(c). If the withdrawal occurred prior to completion of the requirements under 35 U.S.C. 371(c), then entry into the U.S. national stage is prohibited. See 35 U.S.C. 366. The indication of withdrawal may appear on a Notification of Withdrawal (PCT/IB/307 or PCT/RO/136), a Notification that International Application Considered to Be Withdrawn (Form PCT/RO/117), or other notification.
Go to MPEP - Table of Contents