MPEP 1817

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← MPEP 1812 ↑ MPEP 1800 MPEP 1819 →

1817 PCT Member States[edit | edit source]

An updated list of PCT Contracting States is available from WIPO’s web site http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf

1817.01 Designation of States in International Applications Having an International Filing Date On or After January 1, 2004[edit | edit source]

[Note: The regulations under the PCT were changed effective January 1, 2004. A corresponding change was made to Title 37 of the Code of Federal Regulations. See January 2004 Revision of Patent Cooperation Treaty Application Procedure, 68 FR 59881 (Oct. 20, 2003), 1276 O.G. 6 (Nov. 11, 2003). All international applications having an international filing date before January 1, 2004, will continue to be processed under the procedures in effect on the international filing date. For the designation of states in international applications having an international filing date before January 1, 2004, see MPEP § 1817.01(a) for the information that previously appeared in this section].

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:

(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.

(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.

(c)[Deleted]


37 CFR 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 44applies, 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.


For international applications having an international filing date on or after January 1, 2004, 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. This automatic indication of all designations and all types of protection possible overcomes a pitfall in the designation system in effect for applications having an international filing prior to January 1, 2004, where applicants inadvertently omitted a designation or type of protection and failed to timely satisfy the requirements under former PCT Rule 4.9(b) to perfect a precautionary designation.

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. As of April 1, 2006, the request may exclude the following designations: Germany (DE), Japan (JP), Republic of Korea (KR), and Russian Federation (RU). See “Reservations and Incompatibilities” at http://www.wipo.int/pct/en/ applicants.html for further information.

APPLICANT FOR PURPOSES OF EACH DESIGNATION

Where there is but a single applicant, the right to file an international application and to designate Contracting States or regions exists if the applicant is a resident or national of a PCT Contracting State. The applicant can be an individual, corporate entity or other concern. In the case where there are several applicants who are different for different designated states, the right to file an international application and to designate Contracting States or regions exists if at least one of them is a resident or national of a Contracting State. If entry into the U.S. national phase is desired, inventors must be indicated as applicants at least for purposes of the United States.

1817.01(a) Designation of States and Precautionary Designations in International Applications Having an International Filing Date Before January 1, 2004[edit | edit source]

[Note: For the designation of States in applications having an international filing date on or after January 1, 2004, see MPEP § 1817.01.]

Former 37 CFR 1.432. Designation of States and payment of designation and confirmation fees.

(a) The designation of States including an indication that applicant wishes to obtain a regional patent, where applicable, shall appear in the Request upon filing and must be indicated as set forth in PCT Rule 4.9 and section 115 of the Administrative Instructions. Applicant must specify at least one national or regional designation on filing of the international application for a filing date to be granted.

(b) If the fees necessary to cover all the national and regional designations specified in the Request are not paid by the applicant within one year from the priority date or within one month from the date of receipt of the international application if that month expires after the expiration of one year from the priority date, applicant will be notified and given one month within which to pay the deficient designation fees plus a late payment fee. The late payment fee shall be equal to the greater of fifty percent of the amount of the deficient fees up to a maximum amount equal to the basic fee, or an amount equal to the transmittal fee (PCT Rule 16bis). The one-month time limit set in the notification of deficient designation fees may not be extended. Failure to timely pay at least one designation fee will result in the withdrawal of the international application.

(1) The one designation fee must be paid:

(i) Within one year from the priority date;

(ii) Within one month from the date of receipt of the international application if that month expires after the expiration of one year from the priority date; or

(iii) With the late payment fee defined in this paragraph within the time set in the notification of the deficient designation fees or in accordance with PCT Rule 16bis.1(e).

(2) If after a notification of deficient designation fees the applicant makes timely payment, but the amount paid is not sufficient to cover the late payment fee and all designation fees, the Receiving Office will, after allocating payment for the basic, search, transmittal and late payment fees, allocate the amount paid in accordance with PCT Rule 16bis.1(c) and withdraw the unpaid designations. The notification of deficient designation fees pursuant to this paragraph may be made simultaneously with any notification pursuant to § 1.431(c).

(c) The amount payable for the designation fee set forth in paragraph (b) is:

(1) The designation fee in effect on the filing date of the international application, if such fee is paid in full within one month from the date of receipt of the international application;

(2) The designation fee in effect on the date such fee is paid in full, if such fee is paid in full later than one month from the date of receipt of the international application but within one year from the priority date;

(3) The designation fee in effect on the date one year from the priority date, if the fee was due one year from the priority date, and such fee is paid in full later than one month from the date of receipt of the international application and later than one year from the priority date; or

(4) The designation fee in effect on the international filing date, if the fee was due one month from the international filing date and after one year from the priority date, and such fee is paid in full later than one month from the date of receipt of the international application and later than one year from the priority date.

(d) On filing the international application, in addition to specifying at least one national or regional designation under PCT Rule 4.9(a), applicant may also indicate under PCT Rule 4.9(b) that all other designations permitted under the Treaty are made.

(1) Indication of other designations permitted by the Treaty under PCT Rule 4.9(b) must be made in a statement on the Request that any designation made under this paragraph is subject to confirmation (PCT Rule 4.9(c)) not later than the expiration of 15 months from the priority date by:

(i) Filing a written notice with the United States Receiving Office specifying the national and/or regional designations being confirmed;

(ii) Paying the designation fee for each designation being confirmed; and

(iii) Paying the confirmation fee specified in § 1.445(a)(4).

(2) Unconfirmed designations will be considered withdrawn. If the amount submitted is not sufficient to cover the designation fee and the confirmation fee for each designation being confirmed, the Receiving Office will allocate the amount paid in accordance with any priority of designations specified by applicant. If applicant does not specify any priority of designations, the allocation of the amount paid will be made in accordance with PCT Rule 16bis.1(c).

The designation of States is the indication, in Box No. V of the request (except in the last sub-box of that Box), of the specific regional patents, national patents, and/or other kinds of protection the applicant is seeking. Specific designations for the purpose of obtaining national and regional patents are effected by indicating each Contracting State or region concerned. On the printed form, this is accomplished by marking the appropriate check-boxes next to the names of the States or regions.

All designations must be made in the international application on filing; none may be added later. However, there is a safety net designed to protect applicants who make mistakes or omissions among the specific designations, by way of making a precautionary designation of all other States which have not been specifically designated in the Request whose designation would be permitted under the Treaty.

In addition to specific designations described above, the applicant may, under PCT Rule 4.9(b), indicate in the request that all designations which would be permitted under the PCT are also made, provided that at least one specific designation is made and that the request also contains a statement relating to the confirmation of any precautionary designations so made. That statement must declare that any such designation is subject to confirmation (as provided in Rule 4.9(c)), and that any such designation which is not so confirmed before the expiration of 15 months from the priority date is to be regarded as withdrawn by the applicant at the expiration of that time limit.

Precautionary designations are effected in practice by including the necessary statement in the last sub- box of Box No. V of the request (the statement is set out in the printed request form). Since the precautionary designations are designed particularly to enable applicants to correct omissions and mistakes in the original list of specific designations, it is strongly recommended that applicants make the precautionary designations indication (by leaving the pre-printed statement in the printed form, if that form is used) unless there is a particular reason for doing otherwise. The request form makes provision for the applicant to omit designations if that is desired. It should be noted that no fees are payable in respect of precautionary designations except where the applicant later decides to confirm them.

Precautionary designations will be regarded as withdrawn by the applicant unless they are confirmed, but the applicant is not obliged to confirm them. The precautionary designation procedure enables the applicant to make, in the request, all designations permitted by the PCT in addition to those made specifically. For this purpose, the request must also contain a statement that any precautionary designations so made are subject to confirmation as provided in Rule 4.9(c) and that any designation which is not so confirmed before the expiration of 15 months from the priority date is to be regarded as withdrawn by the applicant at the expiration of that time limit. Noting that the confirmation of designations is entirely at the applicant’s discretion, no notification is sent to the applicant reminding him or her that the time limit for confirming precautionary designations is about to expire. Applicants are cautioned that in order for the confirmation of a designation of the U.S. to be valid, the inventor must have been named in the application papers as filed, 37 CFR 1.421(b).

APPLICANT FOR PURPOSES OF EACH DESIGNATION

Where there is but a single applicant, the right to file an international application and to designate contracting states or regions exists if the applicant is a resident or national of a contracting state. The applicant can be an individual, corporate entity or other concern. If the United States is to be designated, it is particularly important to note that the applicant must also be the inventor.

In the case where there are several applicants who are different for different designated states, the right to file an international application and to designate contracting states or regions exists if at least one of them is a resident or national of a contracting state. If the United States is to be designated, it is important to note that the applicant must also be the inventor. If the inventor is not also the applicant, the designation of the United States is invalid.

1817.02 Continuation or Continuation-in-Part Indication in the Request[edit | edit source]

PCT Rule 4.

The Request (Contents)

4.11.Reference to Earlier Search, Continuation or Continuation- in-Part, or Parent Application or Grant

(a) If:
.          .          .

(iv)the applicant intends to make an indication under Rule 49bis.1(d) of the wish that the international application be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application;

the request shall so indicate and shall, as the case may be, identify the application in respect of which the earlier search was made or otherwise identify the search, or indicate the relevant parent application or parent patent or other parent grant.

The Supplemental Box of the request form should be used where the applicant has an earlier pending United States nonprovisional application or international application designating the U.S. and wishes the later filed international application to be treated as a continuation or continuation-in-part of such earlier application. To properly identify the parent application, the specific reference must identify the parent application by application number and indicate the relationship to the parent application (i.e., “continuation” or “continuation-in-part”). The specific reference must also indicate the filing date of the parent application if the parent application is an international application. See 37 CFR 1.78(a).

Identification of the parent application in the request does not relieve applicants from having to perfect the benefit claim upon entry into the U.S. national stage by including a proper claim in an application data sheet or in the first sentence(s) of the specification (see 37 CFR 1.78(a)(2)). However, inclusion of a proper reference to the parent application in the international phase does provide certain benefits to applicants, e.g., where applicant chooses to file a continuing application claiming benefit under 35 U.S.C. 365(c) to the international application (i.e., a bypass application) rather than entering the U.S. national phase under 35 U.S.C. 371.

← MPEP 1812 ↑ MPEP 1800 MPEP 1819 →