MPEP 1821

1821 The Request[edit | edit source]

A general overview of certain aspects of the request follows.

37 CFR 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 form to be filled in with the required indications or be presented as a computer printout complying with the Administrative Instructions. Any prospective applicant may obtain copies of the printed request form, 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. Forms may also be obtained from the World Intellectual Property Organization (WIPO) web site (www.wipo.int/pct/en/forms/ index.htm). Details of the requirements for the request if presented as a computer printout are set out in Administrative Instructions Section 102bis.

As provided in Administrative Instructions Section 102bis(c), reduced fees are payable in respect of an international application containing the request in PCT-EASY format filed, together with a PCT-EASY physical medium, with a receiving Office which, under paragraph (a), accepts the filing of such international applications. The United States Receiving Office currently accepts the following PCT-EASY physical media: 3.5 inch diskette, CD-R, and DVD-R. The PCT Applicant’s Guide, available online at http:// www.wipo.int/pct/guide/en/, provides up-to-date information regarding physical media accepted by the receiving Offices. To prepare a request in PCT- EASY format and the PCT-EASY physical medium, applicants must use PCT-SAFE software, which is available for downloading at WIPO’s web site (www.wipo.int/pct-safe). For technical support and assistance with the software, the web site also provides contact information for the PCT-SAFE Help Desk.

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. For international applications having an international filing date on or after January 1, 2004, the filing of an international application request constitutes the designation of all Contracting States that are bound by the PCT on the international filing date. See MPEP § 1817.01. The request must contain an indication of any wish of the applicants to obtain a European patent rather than, or in addition to, a national patent in respect of a designated 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.

DATES

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.

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.”

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 12

characters including spaces. If the file reference exceeds 12 characters, the receiving Office may ex officio truncate the reference number to 12 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.

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.

APPLICANT

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 PCT Contracting State.

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. Also, possession of a real and effective industrial or commercial establishment in a Contracting State may be 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.

The applicant must be identified by the indication of his/her 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 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. The applicant’s nationality and residence must also be indicated.

NAMES

The names 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

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.